Ex parte Puthoff

Board of Patent Appeals and Interferences

Dec 16, 1997

08109983 (B.P.A.I. Dec. 16, 1997)

Application for patent filed August 23, 1993. According1
to applicant, the application is a continuation of Application
07/708,331, filed May 31, 1991.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HAROLD E. PUTHOFF
_____________
Appeal No. 95-3753
Application 08/109,9831
______________
HEARD: December 8, 1997
_______________
Before HAIRSTON, JERRY SMITH, and CARMICHAEL, Administrative
Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-3753
Application No. 08/109,983

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This is an appeal from the final rejection of claims 1
through 59. In an Amendment After Final (paper number 17), claim
53 was amended.
The disclosed invention relates to a method and apparatus
for transmitting a signal that varies as a function of time. The
transmitted signal has scalar and vector potentials, but without
an electromagnetic field.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A method of communicating information that changes as a
function of time from a first site to a second site comprising
transmitting a signal that varies as a function of time in
accordance with the information from the first site to the second
site, the signal having scalar and vector potentials without
including an electromagnetic field, receiving the transmitted
signal at the second site, and detecting the information from the
signal as received at the second site.
No references were relied on by the examiner.
Claims 1 through 59 stand rejected under 35 U.S.C. § 101
because allegedly the invention as disclosed is inoperative and
therefore lacks utility.
Claims 1 through 59 stand rejected under the first paragraph
of 35 U.S.C. § 112 because allegedly the specification fails to
provide an enabling disclosure and, therefore, fails to
adequately teach one skilled in the art how to make and/or use
the invention without resort to undue experimentation.
Appeal No. 95-3753
Application No. 08/109,983

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Reference is made to the briefs and the answer for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse all of the rejections.
The grounds for rejecting claims 1 through 59 under
35 U.S.C. § 101 are as follows (Answer, page 3):
Independent claims 1, 14, and 25 all include a
recitation of transmitting a “time varying signal
comprising vector and scaler [sic, scalar] potentials
without including an electromagnetic field”. It is
unclear how this is done given the disclosed structure
of figure 2. Regarding independent claims 34 and 43,
it is unclear how the “means for deriving a curl free
vector potential” operates or how it is realized in
physically operable device. Regarding claim 57, it is
unclear how the recited receiver structure for “a
scaler [sic, scalar] and vector potential signal” and
the “shield for electromagnetic waves” would operate.
It appears claims 1-59 recite a theoretical device
in which a physically realizable device is not operable
from what has been disclosed.
In the grounds for finding lack of enablement for claims 1
through 59, the examiner refers (Answer, page 4 through 6) once
more to claims 1, 14, 25, 34, 43 and 57, and contends that it is
“unclear” how the disclosed circuitry and structure accomplish
the objectives of the disclosed and claimed invention. The
examiner asks (Answer, page 5), “[w]hat conclusive evidence is
there that such a structure as disclosed in figures 4 and 5
Appeal No. 95-3753
Application No. 08/109,983

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accomplishes the objectives claimed by appellant,” and “how is
the A field measured.” With respect to the shield 23, the
examiner asks (Answer, pages 5 and 6) “[h]ow is it ‘permeable to
the scalar and vector potential signal’ while resisting the
electromagnetic field?”
In response to the rejection under 35 U.S.C. § 101,
appellant argues (Reply Brief, pages 1 and 2) that:
In a proper rejection based on inoperativeness, it
is incumbent upon the Examiner to establish a prima
facie case that the device will not work. In re
Langer, [503 F.2d 1380] 183 USPQ 288 (CCPA, 1974). In
other words, the Examiner must introduce evidence to
show that the claims define an aspect of technology
that is contrary to accepted theory; for example, that
the claims are directed to a perpetual motion machine.
The Examiner’s Answer completely fails in this regard.
An inspection of the application as filed, in fact,
provides a scientific basis to show the invention does,
in fact, operate using standard scientific theories
based on Maxwell’s Equations; see e.g. the paragraph
bridging pages 6 and 7 and the only full paragraph on
page 7 of the application as filed.
In response to the lack of enablement rejection under the first
paragraph of 35 U.S.C. § 112, appellant argues (Brief, pages 19
and 20) that:
[T]he Examiner has the initial burden of proving that
the requirements of 35 USC 112, paragraph 1, are not
met. In re Marzocchi and Horton, [439 F.2d 220]
169 USPQ 367 ([CCPA] 1971), p. 369. In the present
case, no evidence has been presented by the Examiner to
Appeal No. 95-3753
Application No. 08/109,983

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show that the specification does not enable one of
ordinary skill in the art to make and use the
invention. Appellant respectfully contends that the
disclosed embodiments are clearly shown and one of
ordinary skill would be able to make and use the
invention from the disclosure.
In summary, appellant argues (Brief, pages 24 and 25) that:
In essence, these rejections question whether the
disclosed structure will work to produce the desired
result. Basically, the Examiner questions whether it
is possible to produce vector and scalar potentials
without producing an electromagnetic field. The
Examiner has produced no evidence to show such a result
cannot be produced. Appellant has shown that the prior
art Gelinas patents disclose the generation of a curl-
free signal including vector and scalar potentials with
a electric field. Appellant has modified the Gelinas
structure by eliminating the electric field associated
therewith. The electric field is eliminated by very
conventional structures, such as plates in close
proximity to a coil formed as a solenoid or toroid, and
by proper excitation of the plates and coil. In the
disclosed embodiments, the voltage applied to the
plates and the current applied to the coil are adjusted
to eliminate the electric field which was produced in
the prior art Gelinas structure. Hence, the present
invention works on recognized principles of science and
there is no evidence to the contrary . . . Appellant
has clearly shown there is an adequate disclosure in
the specification and drawings to enable one of
ordinary skill to make and use the invention. The
Examiner has failed to meet the burden of proof
required for rejections under 35 USC 101 or 35 USC 112,
paragraph 1.
Appeal No. 95-3753
Application No. 08/109,983

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The examiner has the initial burden of making a prima facie
evidentiary showing that the claims are unpatentable because of
lack of enablement or inoperativeness. See In re Marzocchi,
439 F.2d 220, 223-224, 169 USPQ 367, 369-370 (CCPA 1971); and
Fregeau v. Mossinghoff, 776 F.2d 1034, 1038, 227 USPQ 848, 852
(Fed. Cir. 1985). After considering the positions of both the
examiner and the appellant, we agree with the appellant that the
examiner’s rationale for rejecting the claims under the first
paragraph of 35 U.S.C. § 112 and 35 U.S.C. § 101 lacks the
required evidence to establish a prima facie case of lack of
enablement, inoperativeness, and lack of utility. In the absence
of such a prima facie case, the burden never shifted to appellant
to present rebuttal evidence. See In re Brana, 51 F.3d 1560,
1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995). Thus, we see no
need to comment on the declaration submitted by appellant. The
rejections of claims 1 through 59 are reversed.
Appeal No. 95-3753
Application No. 08/109,983

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DECISION
The decision of the examiner rejecting claims 1 through 59
under the first paragraph of 35 U.S.C. § 112 and 35 U.S.C. § 101
is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )

Appeal No. 95-3753
Application No. 08/109,983

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