Ex Parte Pribytkov

Board of Patent Appeals and Interferences

Mar 25, 2009

10266134 (B.P.A.I. Mar. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LEV PRIBYTKOV
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Appeal 2009-2013
Application 10/266,134
Technology Center 3600
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Decided:1 March 25, 2009
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Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2013
Application 10/266,134

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STATEMENT OF THE CASE
Lev Pribytkov (Appellant) seeks our review under 35 U.S.C. § 134
from a final rejection of claims 31 through 46. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention appears to pertain to a method of
increasing the effectiveness of the conversion of kinetic energy in an engine.
(Spec. 1.) Claim 31, reproduced below, is representative of the subject
matter on appeal.
31. A Method Increasing Efficiency Conversion Kinetic
Energy In Force, comprising the steps of:
a selection a working substance said working
substance selected from a group comprising rolling elements,
liquid, ionized gas;
b causing movement said working substance by a
force means selected from a group force means comprising
running electromagnetic field, pressure liquid, burning fuel;
c said force means move the working substance
along a curvilinear surface in a channel predetermined
dimensions said curvilinear surface in said channel is formed by
means consisting a rigid outer wall, rigid inner wall, side walls
whereby enabling creating and transfer a centrifugal force said
centrifugal force is creating by moving a whole mass, said
whole mass of the moving working substance to said outer
curvilinear surface and therefore to attached to it vehicle or
engine.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Thornson US 4,631,971 Dec. 30, 1986
The following rejections are before us for review:
1. Claims 31-46 are rejected under 35 U.S.C. § 112, second
paragraph, for failing to define the invention as required by that provision;
and
2. Claims 31-46 are rejected under 35 U.S.C. § 102(b) as
anticipated by Thornson.

Appellant also appears to assert an entitlement to “Constructive
Assistance” from the Examiner. (See Adjusted Appeal Brief, filed April 23,
2007 (App. Br.) 6, 9; Response to Examiner’s Answer to Appeal Brief, filed
June 5, 2006 (Reply Br.) 7.) This assertion does not raise an appealable
issue within the jurisdiction of the Board. Appellant may wish to contact the
United States Patent and Trademark Office’s Inventors Assistance Center
(IAC) at 800-PTO-9199 (800-786-9199) or 571-272-1000. The address for
IAC’s website is http://www.uspto.gov/web/offices/pac/dapp/pacmain.html.

ISSUES
The issues before us include whether Appellant has shown that the
Examiner erred in rejecting claims 31-46 under 35 U.S.C. § 112, second
paragraph.
The issues before us also include whether the rejection of claims
31-46 as anticipated by Thornson has been shown to be erroneous.
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PRINCIPLES OF LAW
The second paragraph of 35 U.S.C. § 112 states:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
The primary purpose of this provision is to provide notice to the public of
the metes and bounds of the claimed invention. In re Hammack, 427 F.2d
1378, 1382 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112,
second paragraph, is “whether those skilled in the art would understand
what is claimed when the claim is read in light of the specification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (citations omitted).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987) (citations omitted).

ANALYSIS
The Rejection of Claims 31-46 Under the Second Paragraph of Section 112
The Examiner concluded that Appellant’s claims are “replete with
indefinite … language.” (Answer, mailed April 4, 2006, 3.) Appellant
appears to argue that one of ordinary skill in the pertinent art would be
familiar with the basic laws of physics, and therefore would understand the
metes and bounds of the claimed invention. (App. Br. 8.) Appellant also
appears to contend that the claims are allowable due to the use of wording
that is “generally accepted” in patent prosecution. (Id.)
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We conclude that claim 31 contains numerous ambiguities that render
the claim indefinite. For example, the meaning of the phrase “said whole
mass of the moving working substance to said outer curvilinear surface and
therefore to attached to it vehicle or engine” is unclear. Also, claim 31
recites improper Markush groups (Ex parte Markush, 1925 C.D. 126
(Comm’r Pat. 1925)) for a working substance and for a force means. “A
Markush group must be definite and complete as to its membership[.]”
Ex parte Morrell, 100 USPQ 317, 319 (Bd. App. 1953). However,
Appellant utilizes the open-ended term “comprising,” rather than “consisting
of,” and lists group members that are not sufficiently related so as to
unambiguously define the group. Appellant does not direct us to any
particular part of the Specification that removes the ambiguities. (Cf. App.
Br. 8 (citing to Specification pages 6 through 17, which is the entire
“Description of the Preferred Embodiments.”).)
Accordingly, we sustain the rejection of claim 31 because the claim
language is not sufficiently definite such that those skilled in the art would
understand what is being claimed when the claim is read in light of the
Specification. Claims 32 through 46 fail to rectify the shortcomings of claim
31, and thus are indefinite by virtue of their dependency from claim 31.

The Anticipation Rejection
Because claims 31-46 are indefinite, the anticipation rejection must
fall, pro forma, because that rejection necessarily is based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962). It should be understood, however, that our decision
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in this regard is based on the indefiniteness of the claimed subject matter and
does not reflect on the adequacy of the prior art evidence applied in support
of the rejection.

CONCLUSIONS
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 31-46 under 35 U.S.C. § 112, second paragraph.
We reverse pro forma the Examiner’s rejection of claims 31-46 under
35 U.S.C. § 102(b) as anticipated by Thornson.

DECISION
The decision of the Examiner to reject claims 31-46 is affirmed.
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) (2007).

AFFIRMED

hh

Lev Pribytkov
400 Oukwood Av. 10E
Orange, NJ 07050-3275