Ex Parte Rosen

Patent Trial and Appeal Board

Feb 28, 2017

13323999 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/323,999 12/13/2011 Alfred Rosen 046354-000002U S P2 4516
70001 7590 03/02/21
NIXON PEABODY LLP
70 West Madison Street, Suite 3500
CHICAGO, IL 60602
EXAMINER
DRODGE, JOSEPH W
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
03/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketingchicago @ nixonpeabody.com
ipairlink @ nixonpeabody. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALFRED ROSEN
Appeal 2015-007647
Application 13/323,999
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
AVELYN M. ROSS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007647
Application 13/323,999
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 3—7 and 9-12. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE and enter a new ground of rejection.
Claims 3,5, and 11 are illustrative of the subject matter on appeal and
are reproduced below. The limitations at issue are italicized.
3. A method of suppressing the wind-induced heat exchange of
a tropical cyclone that is moving in a path over an ocean during
a time interval measured in days and has an eye moving in said
path, said method comprising the steps of providing a
navigable platform on the surface of said ocean and operating
said platform to move on said surface so as to occupy a
location on said surface that is substantially fixed with respect
to said eye for the duration of said time interval, and while so
moving substantially continually generating on said platform a
supply of a coolant and directing said coolant away from said
platform onto or above said ocean surface substantially without
interruption during substantially said entire time interval.
5. A method of reducing the intensity of a tropical cyclone
having an eye moving in a path over an ocean, said method
comprising providing multiple navigable vessels each of which
is equipped with artificial snow-making devices capable of
producing streams of artificial snow, positioning each of said
vessels in a unique location on said ocean directly beneath said
eye and moving in said path therewith, operating said vessels
so that each one maintains its unique location relative to said
eye while moving with said eye in said path, and while
maintaining said vessels in said respective unique locations
continually producing said streams of artificial snow and
directing said streams onto or above the ocean water directly
beneath said eye.
11. A method of suppressing the wind-induced heat exchange
of a tropical cyclone that is moving in a discernible path over an
ocean region, from which region moisture is rising, said method
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Application 13/323,999
comprising providing at least one floating navigable vessel
operable for moving over said ocean, and arming said vessel
with multiple coolant making devices, said method further
comprising controlling said devices to operate in concert and
orienting said devices to project said coolant away from said
vessel onto or above the surface of said ocean, and operating
said vessel to move on said surface in said path while
simultaneously controlling said devices to produce a
substantially uninterrupted stream of said coolant.
The Examiner maintains the following rejections from the Final
Office Action1:
I. Rejection of claims 3—7 and 9—12 under 35U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
II. Rejection of claims 3—7 and 9-12 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
III. Rejection of claims 3—7 and 9-12 under 35 U.S.C. § 103(a) over
the combination of, and O’Keefe (US 2007/0114298 Al, published
May 24, 2007), Ross (US 4,356,094, issued Oct. 26, 1982)
Uram (US 2005/0133612 Al, published June 23, 2005), Haynes et
al., (US 5,753,108, issued May 19, 1998) (“Haynes”), Barber
(US 2007/0084768 Al, published Apr. 19, 2007) and/or Blum et al
(US 2009/0272817 Al, published Nov. 5, 2009) (“Blum”).
1 The Examiner withdrew the rejection under 35 U.S.C. § 101. (Ans. 11).
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Application 13/323,999
Discussion
Rejections under 35 U.S.C. § 112, first paragraph
(enablement and written description)
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Factors to
be considered in determining whether a disclosure would require undue
experimentation “include (1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention, (5) the state of
the prior art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims.” In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph, is whether the disclosure of
the application as originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter. In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The Examiner bears the
initial burden of establishing that the original application disclosure as a
whole would not have reasonably conveyed to those skilled in the art that the
inventors had possession of the claimed subject matter at the time the instant
application was filed. AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc); In re Alton, 76 F.3d 1168, 1172, 1175-76
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Application 13/323,999
(Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262—64 (CCPA
1976)); In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989).
The Examiner in support of both rejections asserts the Specification is
silent as to number or sizes of vessels employed especially relative to the
meteorological events or other environmental conditions to be modified.
The Examiner specifically stated
[T]he Specification, although discussing general theories in
paragraphs [0004 and 0020] lacks correlation between
instantaneous or cumulative flow volumes of directed coolant
and quantifiable, measurable degree of suppression on the
tropical cyclone treated regarding measured parameters
including wind speeds, barometric pressure, cloud top heights,
and changes in atmospheric temperature.
The claims also fail the enablement requirement since
there has been no demonstration that a vessel could be
navigated continuously immediately within or immediately
adjacent the eye of a tropical cyclone as it travels over any
substantial distance.2
(Final Act. 4).
The Examiner sets forth myriad assertions that the Appellant’s
Specification provides insufficient quantifiable, measurable degree of
suppression of the measurable parameters of a tropical cyclone. In the Final
Action, the Examiner provides no evidence in support of these assertions.
The Examiner for the first time in the Answer in support of the § 112
rejections, asserts that Appellant’s Specification 130 and the Uram
reference, cited in the prior art rejection, points to the lack of success of
controlling the power of hurricanes. (Ans. 4—5). However, the Examiner
2 The Examiner repeats this position when discussing the written
description requirement. (Final Act. 5—6).
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Application 13/323,999
has failed to explain how the newly cited disclosures support the stated
rejections. For example the Examiner has failed to explain how the cited
portions of the Specification—describing varying the number of coolant
supply devices to achieve Appellant’s objective—support the stated
rejections. The Examiner’s unsupported assertions are not evidence or proof
of nonenablement or lack of adequate written description.
Accordingly, we reverse the rejections under 35U.S.C. § 112, first
paragraph, for the reasons presented by Appellant and given above.
Prior Art Rejection
Claims 5—7, 9, and 103
We have reviewed each of Appellant’s arguments for patentability.
We will reverse the Examiner’s rejection for essentially those reasons
expressed by Appellant. We add the following:
The dispositive issue for the rejected subject matter is:
Did the Examiner err in determining that O’Keefe describes operating
the vessel so that it maintains its unique location relative to the eye while
moving with the eye in the path, and while maintaining the vessel in the
respective unique locations continually producing streams of artificial snow
and directing the streams onto or above the ocean water directly beneath said
eye as required by the claimed invention? We answer this question in the
affirmative.
The Examiner found O’Keefe discloses methods for reducing the
intensity of tropical cyclones comprising providing devices/vessels in or
near the hurricane eye to remove heat from the water vapor that rises from
3 We limit our discussion to independent claims 5, 6 and 9.
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the ocean. The Examiner found O’Keefe control unit (# 20,24) suggests
operation of the device substantially without interruption for the predicted
time period. (Final Act 8). The Examiner found O’Keefe differs from the
claimed invention by failing to describe continually treating tropical cyclone
while moving at the same speed and direction of the cyclone. {Id. at 9). The
Examiner found O’Keefe teaches the application of coolant or other
materials in the vicinity of the eye of a hurricane. {Id.) The Examiner
concluded
it would have been obvious to the skilled artisan in the arts of
weather modification, to have continuously operated the
mechanisms or devices of O’Keefe during movement of the
vessels or platforms along the path of the hurricanes or
cyclones, as taught by one or more of Uram, Haynes, Barber,
and/or Blum, and in view of Ross to effect a much larger total,
cumulative volume of coolant to the eye wall vicinity of the
storms, and thus achieve a greater effect to diminish the power
of the storms.
{Id. at 10) (citations omitted).
Appellant argues the modification of O’Keefe by any of Uram,
Haynes, Barber, Blum or Ross to continually treating tropical cyclone while
moving at the same speed and direction of the cyclone as required by claims
5, 6, and 9 would change the principle of operation of O’Keefe. (App. Br.
11—19). Appellant argues O’Keefe requires whatever type of vessel
employed to drop the load of coolant at a specific drop point in the
hurricane. {Id. at 11—12). Appellant argues O’Keefe’s operating state,
requiring the specified ‘“drop point,”’ would not be used if the moving
platforms were required to apply uninterrupted stream(s) of coolant
continually as the moving platforms are moved. (Id. at 13). We agree with
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Appellant that O’Keefe does not describe operating the devices to provide a
continual supply of coolant substantially without interruption while the
vessel is following cyclones as required by the claimed invention. The
Examiner has relied upon Uram, Haynes, Barber, Blum, and Ross for
describing the movement of the cooling devices. The Examiner also relies
on Uram, Haynes, Barber, and Blum as describing operation of navigable
vessel relative to the movement of hurricanes or other tropical storms for
extended time periods. These references do not address modifying O’Keefe
to continuously deliver coolant while moving with a tropical cyclone as
required by the claimed invention. For the foregoing reasons, we cannot
sustain the Examiner’s rejection.
Claims 11 and 124
The Examiner has failed to address the specific limitations of the
claimed invention. The method of claim 11 requires providing at least one
floating navigable vessel comprising multiple cooling devices thereon that
are operated in concert to direct cooling away from the vessel. The
Examiner has not identified a reference that describes a vessel that
comprises multiple cooling devices that are operated in concert to direct
coolant away from the vessel.
Thus, the Examiner has not established that the relied-upon
disclosures of O’Keefe in view of Uram, Haynes, Barber, Blum, and Ross
are sufficient to support obviousness of independent claim 11. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
4 We limit our discussion to independent claims 11.
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103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art”).
Accordingly, we reverse the rejection of claims 11 and 12.
Claims 3 and 4
For the reasons set forth below, we are unable to ascertain the metes
and bounds of the claimed subject matter, we procedurally reverse the
rejection of claims 3 and 4 under 35 U.S.C. § 103(a), and enter a new ground
of rejection of this claim under 35 U.S.C. § 112, second paragraph.5
REJECTION UNDER § 112, second paragraph
Independent claim 3 and dependent claim 4 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor or a joint
inventor regards as the invention.
The evaluation of a claim with respect to prior art begins with
understanding the “meaning” of the claim. Our reviewing court has
instructed that “[i]t is the applicants’ burden to precisely define the
invention, not the PTO’s. See 35 U.S.C. § 112 12 ... . [Tjhis section puts
the burden of precise claim drafting squarely on the applicant.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
During prosecution, a claim is examined for compliance with
35 U.S.C. § 112, second paragraph by determining whether the claim meets
threshold requirements of clarity and precision. After applying the broadest
5 We limit our discussion to independent claim 3.
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reasonable interpretation to the claim, if the metes and bounds of the claimed
invention are not clear, the claim is indefinite and should be rejected. In re
Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (“[W]hen the USPTO has
initially issued a well-grounded rejection that identifies ways in which
language in a claim is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention, and thereafter the
applicant fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of 35 U.S.C.
§ 112(b).”)
Independent claim 3 is directed to a method of suppressing the wind-
induced heat exchange of a tropical cyclone comprising providing a
navigable platform on the surface of said ocean and operating said platform
to move on said surface so as to occupy a location on said surface that is
substantially fixed with respect to said eye for the duration of said time
interval.
The portion of claim 3 reproduced above illustrates that the navigable
platform is required to move on the surface of the ocean and also be
substantially fixed with respect to the eye of a hurricane for a time interval.
The phrase “substantially fixed with respect to said eye” recited in
independent claim 3 includes “words of degree” that are imprecise unless a
definition or guideline has been set forth in the Specification, or the terms
are otherwise well-known in the art.
Definiteness problems often arise when words of degree are used
in a claim. That some claim language may not be precise,
however, does not automatically render a claim invalid. When a
word of degree is used the district court must determine whether
the patent’s specification provides some standard for measuring
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that degree. The trial court must decide, that is, whether one of
ordinary skill in the art would understand [sic: would have
understood] what is claimed when the claim is read in light of the
specification.
Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed.
Cir. 1984).
Specification 121—the portion of the Specification identified by
Appellant as descriptive of the claimed subject matter—does not provide
adequate guidance to determine what is encompassed by the claimed subject
matter. (App. Br. 3). Accordingly, we find that the metes and bounds of the
phrase “substantially fixed with respect to said eye” cannot be ascertained
from Appellant’s original disclosure.
For the foregoing reasons, the scope of the claimed invention cannot
be determined.
Accordingly, on this record, claims 3 and 4 are indefinite for the
reasons given above.
REJECTION UNDER § 103(a)
Having determined that the subject matter of independent claim 3 is
indefinite, we are unable to determine the propriety of the prior art rejection
of claims 3 and 4. The review of the rejection of claims 3 and 4 under
35 U.S.C. § 103(a) would require considerable speculation as to the scope of
the claims. Such speculation would not be appropriate. In re Steele, 305
F.2d 859, 862 (CCPA 1962). We, therefore, procedurally reverse the
rejection of claims 3 and 4 under 35 U.S.C. § 103(a). We emphasize that
this is a technical reversal of the rejection under 35 U.S.C. § 103(a), and not
a reversal based upon the merits of the rejections.
ORDER
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The rejections of the claims under 35 U.S.C. § 112, first paragraph
(enablement and written description) are reversed.
The prior art rejection of claim 5—7 and 9—12 is reversed.
The prior art rejection of claims 3 and 4 is procedurally reversed.
Pursuant to 37 C.F.R. § 41.50(b), we enter the following NEW
GROUNDS OF REJECTION:
Claims 3 and 4 are rejected under 35 U.S.C. § 112, second paragraph
as indefinite.
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.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
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of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED
NEW GROUND OF REJECTION (37 C.F.R, $ 41.50(b))
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