Ex Parte PlewsDownload PDFPatent Trial and Appeal BoardFeb 18, 201411514405 (P.T.A.B. Feb. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DENNIS J. PLEWS ____________ Appeal 2011-012521 Application 11/514,405 Technology Center 3600 ____________ Before MICHAEL W. KIM, GAY ANN SPAHN, and NINA L. MEDLOCK, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-16 under 35 U.S.C. § 101 “because the disclosed invention is inoperative and therefore lacks utility.” Ans. 4. An oral hearing in accordance with 37 C.F.R. § 41.47 was held on Jan. 9, 2014. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION. Appeal 2011-012521 Application 11/514,405 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to a “device [which] exploits the inertial mass and rotational energy of . . . radially freely movable masses and generates linear motion of the . . . device and any object to which the device is affixed.” Spec. 6, para. [00010], ll. 5-8. Claim 1, reproduced below, is illustrative of the appealed subject matter. 1. A propulsion device for creating linear motion by applying a fixed mechanical interference into the path of counter-rotating inertia thrust masses that translates energy to an impulse drive plate by absorbing a portion of the kinetic energy as the momentum of the rotating thrust masses is diverted by the fixed mechanical interference, within a closed system, which comprises; a plurality of capture plates having a plurality of capture slots equidistantly spaced about the periphery of the capture plates; a plurality of capture plate gears; an impulse drive plate having an first side and a second side, with the plurality of capture plates being mounted on the first side of the impulse drive plate and the plurality of capture plate gears being mounted to the second side of the impulse drive plate, the plurality of capture plates in rotational communication with the plurality of capture plate gears by way of a pair of capture plate shafts; a plurality of inertial thrust masses positioned within corresponding capture slots of the plurality of capture plates; an impulse body being mounted to the first side of the impulse drive plate and spaced from the plurality of capture plates, the impulse body having a plurality of impulse ramps sized for placement between the plurality of capture plates for engagement of the plurality of inertia thrust masses positioned within the capture slots of the capture plates; and wherein a rotating of the plurality of capture plate gears will in turn rotate the plurality of capture plate shafts to cause rotation of the capture plates for clockwise and counter- clockwise rotation of the plurality of inertial thrust masses Appeal 2011-012521 Application 11/514,405 3 within the capture slots with the rotating plurality of inertial thrust masses making contact with the impulse ramps. ANALYSIS There does not appear to be any dispute that Appellant’s Specification asserts a specific and substantial utility (i.e., converting rotational energy into linear motion for propulsion) for the claimed invention. Rather, the basis of the Examiner’s rejection under 35 U.S.C. § 101 is that the disclosed invention is wholly inoperative and therefore, lacks credible utility. As a matter of Patent Office practice, a specification which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of 35 U.S.C. § 101 for the entire claimed subject matter, unless there is reason for one skilled in the art to question the objective truth of the statement of utility or its scope. Assuming that sufficient reason to question the statement of utility and its scope does exist, a rejection for lack of utility under 35 U.S.C. § 101 will be proper on that basis; such a rejection can be overcome by suitable proofs indicating that the statement of utility and its scope as found in the specification are true. In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974). Thus, “the PTO has the initial burden of challenging a presumptively correct assertion of utility in the disclosure.” In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995). Further, “the PTO must do more than merely question operability[;] it must set forth factual reasons which would lead one skilled in the art to question the objective truth of the statement of operability.” In re Gaubert, 524 F.2d 1222, 1224-25 (CCPA 1975). Appeal 2011-012521 Application 11/514,405 4 Independent claim 1 is directed to “[a] propulsion device” which is capable of creating linear motion by applying a fixed mechanical interference into the path of counter-rotating inertia thrust masses that translates energy to an impulse drive plate by absorbing a portion of the kinetic energy as the momentum of the rotating thrust masses is diverted by the fixed mechanical interference. App. Br., Clms. App’x. Independent claim 10 is directed to “[a] propulsion system” which is capable of “converting inertial and rotational energy into linear motion.” Id. Our threshold inquiry is to determine if the Examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility. See Brana, 51 F.3d at 1566; see also In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) (the court found that “the PTO provided substantial evidence that those skilled in the art would ‘reasonably doubt’ the asserted utility and operability of cold fusion.”). The Examiner finds that “[t]he device is inoperative since it claims a propulsive force without an equal and opposite force” in violation of Newton’s law of conservation of momentum, because “[t]he movement of the weights will not result in a unidirectional force since momentum will be conserved.” Ans. 4. Appellant argues that the Examiner has failed to meet the burden of establishing inoperability. App. Br. 18. Appellant points out that “[i]n order to meet this initial burden, the Examiner must present evidence necessary to establish a reason for one of ordinary skill in the art to question the objective truth of the statement of utility.” Id. (citing Ex parte Ping-Wha Lin, 2009 WL 3614582, *5 (BPAI 2009)). Appellant also argues that the present Appeal 2011-012521 Application 11/514,405 5 invention does not violate the law of conservation of momentum. App. Br. 15. More particularly, Appellant notes that “[t]he law of conservation of momentum provides that the total momentum within a close[d] system remains unchanged by action within the system,” and “[i]n the present case, momentum is created in the system comprised of the thrust masses by spinning them.” App. Br. 14-15. Further, Appellant notes that “[t]he energy needed to create the momentum in the claimed device (and in the device shown in the test videos) is obtained from the battery attached to the electric motor,” wherein “[t]he motor, in turn, spins the capture discs in which the thrust masses are contained.” App. Br. 15. In the Response to Argument section of the Answer, the Examiner notes that Appellant has provided “evidence in the form of dynamic analysis, affidavits [or declarations], and video.” Ans. 10. The Examiner responds to Appellant’s dynamic analysis in the Declaration of Dennis J. Plews (hereinafter “Declaration”) by stating that Appellant’s Propulsion System’ does not have utility, is inoperable and incapable of providing propulsion, and therefore lacks patentable utility, because the device described by Appellant will merely vibrate since a force interaction between thrust masses 2, 3 and the impulse ramps 17, 30 cannot function in the way described by Appellant. Ans. 7. The Examiner relies on the faulty premise that “[t]he analysis of the dynamic system described by [A]ppellant is flawed in that it treats forces which are internal to a dynamic system as if they were external to the dynamic system,” and “there are no external forces capable of providing propulsion.” Id. We are persuaded by Appellant’s arguments. The Examiner’s rejection is based on a flawed assumption that there are no external forces Appeal 2011-012521 Application 11/514,405 6 acting in Appellant’s system. The law of conservation of momentum is often stated as follows: “[f]or a collision occurring between object 1 and object 2 in an isolated system . . . , the total momentum of the two objects before the collision is equal to the total momentum of the two objects after the collision.” See the Physics Classroom(/) >>Physics Tutorial(/class) >> Momentum and Its Conservation(/class/momentum) >> Isolated Systems, available at http://www.physicsclassroom.com/Class/momentum/ U4L2c.cfm (last visited: Feb. 9, 2014). In other words, “[t]otal system momentum is conserved for collisions occurring in isolated systems.” Id. However, the present invention does not represent an isolated system. Indeed, an isolated system is defined as “a system that[] is free from the influence of a net external force that alters the momentum of the system,” and “[t]here are two criteria for the presence of a net external force,” namely, “it must be . . . a force that originates from a source other than the two objects of the system[;] . . . a force that is not balanced by other forces.” Id. Thus, as argued by Appellant, the motor 22 of Appellant’s system provides an external force on the system because (1) it produces a force that originates from a source other than the two objects of the system and (2) it produces a force that is not balanced by other forces. Based upon the Examiner’s original rejection (Ans. 4 (determining the “device is inoperable”)) and Response to Argument (Ans. 7 (determining that “there are no external forces capable of providing propulsion”); see also Ans. 8, 10-12, and 15-17), we conclude that the Examiner has not provided sufficient evidence to establish a reason for one of ordinary skill in the art to reasonably doubt the asserted utility of the claimed process. See Brana, 51 F.3d at 1566. Thus, the Examiner has not set forth a prima facie Appeal 2011-012521 Application 11/514,405 7 case that the claimed propulsion device lacks utility because the propulsion device is inoperable, and the evidentiary burden was never shifted to the Appellant to submit “evidence of operability that would be sufficient to overcome reasonable doubt.” See Swartz, 232 F.3d at 862. NEW GROUNDS OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.450(b), we enter a new ground of rejection against claims 1-9 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to distinctly claim and particularly point out the subject matter which Appellant regards as the invention. Independent claim 1 recites “[a] propulsion device” which is capable of “creating linear motion . . . , within a closed system.” App. Br., Clms. App’x. Emphasis added. The recitation of “within a closed system” is indefinite. On Jun. 30, 2009, Appellant filed a response to the Examiner’s Final Office Action mailed on March 6, 2009 (hereinafter “Response”), and in that Response, Appellant stated that “contrary to the Examiner’s interpretation, the invention is not a closed system.” Response 3, ll. 2-4. For the reasons discussed supra, we agree that the present invention is not within a closed system, because the motor 22 produces an external force to the system and therefore, Appellant’s recitation of “within a closed system” in lines 6-7 of claim 1 as quoted supra is indefinite. Appeal 2011-012521 Application 11/514,405 8 DECISION We REVERSE the Examiner’s decision to reject claims 1-16. Pursuant to our authority under 37 C.F.R. § 41.50(b), we ENTER A NEW GROUND OF REJECTION against claims 1-9 under 35 U.S.C. § 112, second paragraph, as being indefinite. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Appeal 2011-012521 Application 11/514,405 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). REVERSED; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation