Ex Parte Siriphant

Patent Trial and Appeal Board

Jan 24, 2018

13918493 (P.T.A.B. Jan. 24, 2018)

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.
13/918,493 06/14/2013 Aroon Johannus Siriphant 37566-81308CON 1998
30567 7590 01/26/2018
Levenfeld Pearlstein, LLC
Intellectual Property Department
2 North LaSalle
Suite 1300
Chicago, IL 60602
EXAMINER
BOES, TERENCE
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
IPDOCKET@LPLEGAL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AROON JOHANNUS SIRIPHANT
Appeal 2016-003663
Application 13/918,493
Technology Center 3600
Before JEAN R. HOMERE, JASON V. MORGAN, and
AARON W. MOORE, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-
Final Rejection of claims 1—25. App. Br. 9. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Invention
The Application discloses the use of first and second masses, each
rotated around an axis of rotation, moving in opposite directions with respect
to each other through deceleration and acceleration phases. Abstract.
Appeal 2016-003663
Application 13/918,493
Representative Claim (key limitations emphasized)
1. A method for generating a force vector, comprising the steps
of:
providing a drive motor;
providing a first arm rotatable on a first axis of rotation, the first
arm operably connected to the drive motor;
providing a second arm rotatable on a second axis of rotation,
the second arm operably connected to the drive motor;
providing a first mass slidably mounted on the first arm so as to
be movable toward and away from the first axis of rotation;
providing a second mass slidably mounted on the second arm
so as to be movable toward and away from the second axis of
rotation;
driving the first arm to rotate, with the drive motor, to cause the
first mass to rotate around the first axis of rotation;
changing the distance between the first mass and the first axis
of rotation between two extreme positions while rotating the
first mass;
driving the second arm to rotate, with the drive motor, to cause
the second mass to rotate around the second axis of rotation;
changing the distance between the second mass and the second
axis of rotation between extreme positions while rotating the
second mass;
moving the first mass and the second mass in opposite
directions with respect to each other; and subjecting the first
mass and the second mass to a deceleration phase and a
subsequent acceleration phase while changing the direction of
movement of the first mass and the second mass between the
extreme positions;
making the acceleration phase of the first mass and the second
mass directly adjoin a subsequent decelerating phase,
wherein the distance between the first mass and the first axis of
rotation is changed using a first crank/drive shaft mechanism,
and wherein the distance between the second mass and the
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Appeal 2016-003663
Application 13/918,493
second axis of rotation is changed using a second crank/drive
shaft mechanism;
providing a main frame supporting and connected to the first
and second masses and the first and second crank/drive
mechanisms, wherein the main frame is configured to
frictionally contact an external adjacent medium.
Rejections
The Examiner rejects claims 1—25 under 35 U.S.C. § 112, first
paragraph as failing to comply with both the written description and
enablement requirements. Non-Final Act. 2—3.
The Examiner rejects claims 1—25 under 35 U.S.C. § 101 as lacking
utility. Non-Final Act. 3^4.
ANALYSIS
We agree with, and adopt as our own, the Examiner’s findings of
facts, the conclusions as set forth in the Answer, and in the Action from
which this appeal was taken. We have considered Appellant’s1 arguments,
but do not find them persuasive of error. We provide the following
explanation for emphasis.
35 U.S.C. § 112, first paragraph
In rejecting claim 1 under 35 U.S.C. § 112, first paragraph, the
Examiner finds the claimed method for generating a force vector is not
described in the Specification in a manner that would have reasonably
conveyed to an artisan of ordinary skill that the inventor had possession of
the invention as claimed. Non-Final Act. 2. Specifically, the Examiner
1 Appellant identifies the Real Party in Interest as KEI INTERNATIONAL
N.V. App. Br. 3.
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Appeal 2016-003663
Application 13/918,493
finds the Specification, at the time of filing, did not provide written
description support for the limitation “wherein the main frame is configured
to ffictionally contact an external adjacent medium.” Id. at 3; see also Ans.
7—8. The Examiner further finds that the “disclosed device is incapable of
functioning as described” in the Specification. Non-Final Act. 2; see also
Ans. 13—15. Therefore, the Examiner finds the invention, as claimed, lacks
sufficient written description and enablement support in the Specification.
Non-Final Act. 2—3.
Appellant contends the Examiner erred because “[i]t would have been
well within the knowledge of those having skill in the art, and clear from the
figures and originally filed disclosure that a physical structure, such as the
disclosed main frame, may be positioned in contact with an external adjacent
medium and ffictionally contact that medium.” Br. 10. Specifically,
Appellant argues “[t]he main frame . . . can be configured for such frictional
contact by having a generally flat or planar bottom surface.” Id. (citing
Spec. Fig. 1,11 18-32,44, 52).
We do not agree with Appellant. The Specification does not define
“frictional contact.” However, the plain meaning of the disputed recitation
requires contact between a main frame and a sliding surface such that the
static friction between the main frame and sliding surface prevents the main
frame from moving until a sufficient force allows the main frame to move
relative to the sliding surface. While not dispositive as to the meaning of the
disputed recitations, this reasonably broad interpretation of “frictional
contact” accords with both Appellant’s arguments (Br. 10) and with
Professor Zentgraf s submitted Declaration (Decl. H 14—15 (Nov. 10, 2014)
(“Zentgraf Deck”)).
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Appeal 2016-003663
Application 13/918,493
We reproduce the Specification’s Figure 1 below.
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The Specification’s Figure 1 illustrates main frame structure 3—
consisting of horizontal frame members 4, main columns 5, and auxiliary
columns 6—supported on base plate 2. Spec 144.
Contrary to Appellant’s arguments, the Specification does not disclose
main frame structure 3 “having a generally flat or planar bottom surface” so
as to have frictional contact with an external adjacent medium. In particular,
base plate 2 is explicitly disclosed as supporting main frame structure 3, but
is not part of main frame structure 3. See Spec. 144, Fig. 1. Thus, even if it
is disclosed and enabled for base plate 2 to have frictional contact with an
external adjacent medium, this disclosure falls short of the claimed
invention, which is directed to a main frame being configured to have the
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Appeal 2016-003663
Application 13/918,493
claimed frictional contact with an external adjacent medium. Moreover, the
Specification does not disclose main frame structure 3 as being cable of
sliding with respect to base plate 2. Therefore, base plate 2 does not disclose
an external adjacent medium in frictional contact with the claimed main
frame.
We note that in the paper attached to Professor Zentgraf s Declaration
(Peter Zentgraf and Michael Wagner, Theoretical Analysis of the Linear
Force Generator, Decl. Exhibit B (Aug. 24, 2010 Zentgraf Deel.) (“Zentgraf
Paper”)), an image of what appears to be the claimed device is reproduced
on the cover. In this image, the device rests on what appears to be cloth or
felt, but is no longer supported by a base plate. Appellant does not show
where in the Specification omission of base plate 2 is disclosed or enabled.
Furthermore, for the apparatus described in the claim to work to
generate a force vector, the frictional contact between the main frame and
the external adjacent medium must be calibrated with sufficient precision so
that
[ojver a period of one cycle of the device, there is a period
where a generated force is sufficient to overcome inertia/static
friction and allow the device to move in a first direction, and
another period where force is not sufficient to overcome the
static friction, such that the device remains in a set position.
Zentgraf Decl. 115.
If the static friction between the main frame and the external adjacent
medium is too high, then the forces generated by operating the claimed
device would be insufficient to overcome the static friction, rendering the
device immobile, such that the device would not generate a force vector
(emphasis added). Furthermore, if the static friction between the main frame
and the external adjacent medium is too low, then the device would fail to
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Appeal 2016-003663
Application 13/918,493
enter a period in which the generated forces are insufficient to overcome the
static friction. In this case, the device would behave in the same manner as
the “no friction” test case in which “the total system cannot be moved”—i.e.,
where mass M merely oscillates without generating a net effect or force
vector. Zentgraf Paper 10.
Nothing in the Specification to which Appellant directs our attention
discloses how to calibrate the frictional contact between the main frame and
the external adjacent medium precisely enough to enable a force vector to be
generated. This shortcoming further shows that an artisan of ordinary skill
would only be able to make and use the claimed invention with the benefit
of knowledge obtained through undue experimentation.
For these reasons, we agree with the Examiner that the Specification
provides insufficient written description and enablement support with
respect to the disputed recitations of claim 1. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 112, first paragraph, rejection of claim 1, and claims
2—25, which contain similar recitations and which Appellant does not argue
separately. Br. 9, 18.
35 U.S.C. § 101
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner finds the
claimed “generation of a force vector is at best a general non-specific
utility.’ '’ Non-Final Act. 5. That is, the Examiner finds the claimed
invention lacks the “specific and substantial utility [needed] to satisfy
§ 101.” In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). The Examiner
notes that the Specification provides specific utilities (driving a ship without
a propeller, driving a car without using a drive train between the engine and
the wheels, and propelling aircraft or spacecraft). Non-Final Act. 4 (citing
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Appeal 2016-003663
Application 13/918,493
Spec. 1 52). However, the Examiner finds “these asserted specific utilities
are not credible utilities since these functions do not conform to known
physics.” Non-Final Act. 4; see also Ans. 29—32. That is, the Examiner
finds that these utilities, while specific, are irrelevant to the Section 101
question because the claimed invention does not provide a mechanism for
implementing them.
Appellant contends the Examiner erred because the claimed
invention’s main frame “is configured to frictionally contact an external
adjacent medium,” and that “[i]t is well understood to those having ordinary
skill in the art that a car propels itself by way of frictional contact with an
adjacent surface.” Br. 22 (citing Spec. 1 52). Appellant notes that a “car is
propelled in response to an external reaction force from the surface which it
frictionally contacts,” and argues that, “[sjimilarly, the frictional contact
between the claimed main frame and the adjacent surface may provide a
reaction force to propel the device.” Br. 22.
Appellant’s arguments are unpersuasive because a car’s use of static
friction (i.e., the friction between the wheels and the road) to generate a
force vector fundamentally differs from the claimed use of frictional contact.
As discussed above, the claimed frictional contact is directed to contact
between a main frame and an external adjacent medium. This frictional
contact can generate a force vector if the frictional contact allows for the
device, over one period, to overcome static friction and move in a first
direction, and in another period fails to overcome static friction such that the
device remains set. Zentgraf Decl. 115. In contrast, a car generates a force
vector, not by overcoming static friction between the wheels and the road,
but by allowing the wheels to rotate around axles. The wheels roll without
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Appeal 2016-003663
Application 13/918,493
overcoming static friction, which generates a force vector. In situations
where static friction is overcome (e.g., when a vehicle slips on ice or gets
stuck in mud), a car is unable to generate a force vector. Thus, the example
in the Specification of “driving a car without using a drive train between the
engine and the wheels” (Spec. 1 52) is not relevant to the claimed invention,
and, therefore, does not show that claim 1 is patentable under 35 U.S.C.
§101.
Appellant does not show that any of the other examples in the
Specification are relevant to the claimed invention. Therefore, we sustain
the Examiner’s 35 U.S.C. § 101 rejection of claim 1, and claims 2—25, which
Appellant does not argue separately. Br. 24.
DECISION
We affirm the Examiner’s decision rejecting claims 1—25.
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.
§ 41.50(f).
AFFIRMED
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