Ex Parte Schmidt

Board of Patent Appeals and Interferences

Aug 17, 2009

10942266 (B.P.A.I. Aug. 17, 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 ERIC T. SCHMIDT
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Appeal 2008-004264
Application 10/942,266
Technology Center 2800
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Decided: August 17, 2009
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Before KENNETH W. HAIRSTON, MARC S. HOFF, and ELENI
MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention relates to an apparatus used for generating static
electricity. According to Appellant, the counter rotation of two closely-
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Application 10/942,266

spaced toroids, one inside the other, produces a positive charging of their
surfaces. These surfaces will then attract electrons from air molecules
nearby. These bound surface electrons, along with the motion of the
surfaces, cause electrons between the two surfaces to be repelled and move
away from the surfaces. See Spec. 1-2.
Claim 1 is exemplary of the claims on appeal:
1. An apparatus for inducing an electrostatic charge,
the apparatus comprising: a first rotatable toroid; a second rotatable toroid
inside said first toroid wherein an outer surface of said second toroid is
proximate an inner surface of said first toroid; and wherein said first and
second toroids are rotatable at different angular velocities relative to one
another.

The Examiner does not rely upon prior art in rejecting the claims on
appeal.
Claims 1-7 stand rejected under 35 U.S.C. § 101 because the
invention lacks utility and is inoperative.
Claims 1-7 stand rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in the Specification in
such a way as to enable one skilled in the art to which it pertains, or with
which it is most nearly connected, to make and/or use the invention; and as
containing subject matter which was not described in the Specification in
such a way as to reasonably convey to one skilled in the relevant art that the
inventor, at the time the application was filed, had possession of the claimed
invention.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed September 20, 2007), the Reply Brief (“Reply Br.,” filed
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March 3, 2008), and the Examiner’s Answer (“Ans.,” mailed January 2,
2008) for their respective details.
ISSUES
Appellant argues that the claimed invention does not lack utility, and
is enabled by the Specification, because the claimed invention should be
read without giving weight to the claim recitation “for inducing an
electrostatic charge” (App. Br. 7-9). Appellant argues that “inducing an
electrostatic charge” amounts to a mere statement of intended use, and/or a
preamble statement not necessary to give meaning to the claim, and that the
invention should be considered as a “simple mechanical device” as defined
in the body of claim 1 (App. Br. 7-8). In response, the Examiner states that
“inducing an electrostatic charge” must be considered like any other
functional limitation, and is not a mere intended use of a claimed device, but
a specific result in combination with specific structure (Ans. 7-8).
The contentions of Appellant and the Examiner thus present us with
the following two issues:
1. Has Appellant shown that the Examiner erred in finding that
Appellant’s claimed invention is inoperative and therefore lacks utility?
2. Has Appellant shown that the Examiner erred in finding that
Appellant did not provide an enabling disclosure, or failed to describe the
invention in such a way as to reasonably convey to one skilled in the
relevant art that the inventor had possession of the claimed invention?
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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns an apparatus
used for generating static electricity. The counter rotation of two closely-
spaced toroids, one inside the other, is said to produce a positive charging of
their surfaces. These surfaces will then attract electrons from air molecules
nearby. These bound surface electrons, along with the motion of the
surfaces, cause electrons between the two surfaces to be repelled and move
away from the surfaces (Spec. 1-2).

PRINCIPLES OF LAW
The standard for determining whether the Specification meets the
enablement requirement is whether a person skilled in the art can make and
use the claimed invention without undue experimentation. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). If the examiner's basis for questioning the
sufficiency of the disclosure is reasonable the burden shifts to Appellants to
come forward with evidence to rebut this challenge. In re Doyle, 482 F.2d
1385, 1392 (CCPA 1973).
An invention that is “inoperative” (i.e., it does not operate to produce
the results claimed by the patent applicant) is not a “useful” invention in the
meaning of the patent law. See, e.g., Newman v. Quigg, 877 F.2d 1575,
1581 (Fed. Cir. 1989). A disclosure of a utility satisfies the utility
requirement of section 101 unless there are reasons for the artisan to
question the truth of such disclosure. In re Gaubert, 524 F.2d 1222, 1224
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(CCPA 1975); In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974).
When a patent applicant presents an application describing an
invention that contradicts known scientific principles, the burden is on
the Examiner simply to point out this fact to Appellant …. [T]he
burden shifts to appellant to demonstrate either that his invention, as
claimed, does not violate basic scientific principles or that those basic
scientific principles are incorrect.

Newman v. Quigg, 681 F. Supp. 16, 18 (D.D.C. 1988).
ANALYSIS
ENABLEMENT AND UTILITY
We will address the rejections of the claims under 35 U.S.C. § 112,
first paragraph, and 35 U.S.C. § 101 together. The lack of utility because of
inoperativeness (a question of fact), and the absence of enablement (a
question of law), are closely related grounds of unpatentability. Ex parte
Dash, 27 USPQ2d 1481, 1484 (Bd. Pat. App. & Int. 1992).
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that the claim phrase “for inducing an electrostatic
charge” is a mere statement of the intended use of the “simple mechanical
device” recited in the claims, and as a statement of intended use, should not
be read as limiting Appellant’s claimed invention (App. Br. 7). Appellant
further argues that the body of claim 1 completely sets forth the invention,
and that since the use statement in the preamble (“for inducing an
electrostatic charge”) does not have any impact on the structure of the device
at all (App. Br. 8), the issue is “whether the Examiner can find the claimed
mechanics in the prior art” (App. Br. 8).
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In response, the Examiner reasserts his finding that Appellant’s device
is inoperable because the first and second toroid of the claims and
Specification do not produce the disclosed and claimed electrostatic charge
or any useful result (Ans. 7). The Examiner further finds that Appellant has
not provided a model or evidence of operability, as previously required by
the Examiner during prosecution (Ans. 7). The Examiner finds that because
“inducing an electrostatic charge” is a physical and electrical result allegedly
produced by the rotation of the toroids, and is the only reason disclosed for
constructing a toroid rotating within another toroid, it is necessary to give
life and meaning to the claims, and must be given weight (Ans. 8). Finally,
the Examiner rejects the argument that “inducing an electrostatic charge” is
merely an intended use, because the “induced charge” is a specific result
claimed in combination with the specific structure of the toroids (Ans. 8,
10).
We agree with the Examiner that Appellant has not rebutted the
Examiner’s finding that Appellant’s invention contradicts known scientific
principles. Once an Examiner has done so, the burden shifts to Appellant to
demonstrate either that his invention, as claimed, does not violate basic
scientific principles or that those basic scientific principles are incorrect.
Newman, 681 F. Supp. at 18. Appellant’s Brief (as is the record as a whole)
is devoid of evidence from Appellant tending to refute the Examiner’s
finding.
We are similarly unpersuaded that Appellant’s recitation of “inducing
an electrostatic charge” should be given no patentable weight as a mere
statement of intended use. We agree with the Examiner’s finding, noted
supra, that the induced charge is a specific result claimed in combination
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with the specific structure of the counter-rotating toroids. Further,
Appellant’s Specification makes abundantly clear that generating static
charge is the raison d’etre of the invention. In other words, “[t]he present
invention pertains to an apparatus for generating static electricity” (Spec. 1).
“The present invention produces static charges by the counter rotation of two
closely-spaced toroids – one inside the other” (Spec. 2). To disregard the
claimed induction of electrostatic charge would be to disregard Appellant’s
stated reason for counter-rotating two toroids in the first place.
Lastly, we reject Appellant’s argument that “inducing an electrostatic
charge” should be disregarded because it is a statement in the preamble
without any impact on the structure of the device (App. Br. 9). First, as
noted supra, reading the claim in light of the Specification, it is clear that
inducing electrostatic charge is the entire purpose of the invention. Second,
“inducing an electrostatic charge” is essential to point out the invention
defined. It is only by that phrase that it can be known that the subject matter
defined by the claims comprises a device for inducing an electrostatic
charge. See Kropa v. Robie and Mahlman, 187 F.2d 150, 157-58 (CCPA
1951). Because the preamble phrase “inducing an electrostatic charge” is
essential to point out the invention defined, we find that it breathes life and
meaning into the claim, and thus we find that it must be given weight.
Appellant has not satisfied his burden of proving that one of ordinary
skill can make and use the claimed invention without undue
experimentation, or that his invention is not inoperable. Further, Appellant
has not persuaded us that we should not give weight to the claim recitation
“for inducing an electrostatic charge.” As a result, we do not find error in
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the Examiner’s rejections of claim 1, or of claims 2-7 not separately argued,
under 35 U.S.C. §§ 101 and 112.
CONCLUSIONS OF LAW
1. Appellant has not shown that the Examiner erred in finding that
Appellant’s claimed invention is inoperative and therefore lacks utility.
2. Appellant has not shown that the Examiner erred in finding that
Appellant did not provide an enabling disclosure, or failed to describe the
invention in such a way as to reasonably convey to one skilled in the
relevant art that the inventor had possession of the claimed invention.
ORDER
The Examiner’s rejection of claims 1-7 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

ELD

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