Ex Parte Swartz

Patent Trial and Appeal Board

May 25, 2017

12154712 (P.T.A.B. May. 25, 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.
12/154,712 05/28/2008 Mitchell R. Swartz 9642
7590 05/25/2017
Mitchell R. Swartz, ScD, EE, MD
16 Pembroke Road
Weston, MA 02493
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
05/25/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITCHELL R. SWARTZ
Appeal 2014-006093
Application 12/154,7121
Technology Center 3600
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
NINA L. MEDLOCK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
Mitchell R. Swartz (Appellant)2 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—13 and 21—27.3 Appeal
Br. 8. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION.
1 The present application is a continuation-in-part of U.S. Application Serial
No. 07/339,976, filed September 17, 1991.
2 Mitchell R. Swartz is named as the real party in interest. Appeal Br. 7
(filed Sept. 18, 2013).
3 Claims 14—20 have been cancelled. Appeal Br. 214 (Claims App.).
Appeal 2014-006093
Application 12/154,712
CLAIMED SUBJECT MATTER
The disclosed invention “relates to energy production, and more
particularly to a machine for producing flow of isotopic fuel, such as
hydrogen or deuterons, through a material, such as palladium which is
loaded with that isotopic fuel.” Spec. 12.
Claims 1, 7, and 21 are independent, and claims 2—6, 8—13, and 22—27
depend therefrom. Appeal Br. 212—215 (Claims App. A). Claim 1 is
illustrative, and reads:
1. In a system which loads a material with hydrogen by an
electric potential, a machine for producing increased flow of said
loaded hydrogen within and through said loaded material
comprising:
a cathode containing said material in a shape which is a
member of the group consisting of circles, spirals, helices, and
portions of circles, spirals, helices;
an anode where the ratio of the greatest width or diameter
of said cathode in said curved shape to said anode is in the range
of 4 to 1000;
a separation distance between said anode and said cathode
set to create a two [dimensional] angle in the range of 45 to 130
degrees as defined by said anode [between] the width spanned by
the two sides of said cathode closest to said anode;
a solution containing said hydrogen in which are
immersed said anode and said cathode;
thereby producing said increased flow of said loaded
hydrogen within and through said material.
Id. at 212 (Claims App. A).4
4 The claims listed in Appendix A of the Appeal Brief were rejected in the
Final Office Action. Appellant filed a response after final rejection
presenting proposed amendments to claims 1, 7, and 21. Response Under
37 C.F.R. § 116 (filed May 13, 2013). The proposed amendments are
incorporated in the corresponding claims listed in Appendix B. Appeal
Br. 216—17 (Claims App. B). The proposed amendments were not entered.
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Application 12/154,712
REJECTIONS* * 5
Claims 1—13 and 21—27 are rejected under 35 U.S.C. § 101 as lacking
utility.
Claims 1—13 and 21—27 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
Claims 1, 7, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pons (WO 90/10935, published Sept. 20, 1990).
ANALYSIS
New Ground of Rejection of Claims 1—13 and 21—27
Under 35 U.S.C. § 112, Second Paragraph
We determine that claims 1—13 and 21—27 are indefinite.
Claim 1 recites, inter alia, “a separation distance between said anode
and said cathode set to create a two [dimensional] angle in the range of 45 to
130 degrees as defined by said anode [between] the width spanned by the
two sides of said cathode closest to said anode.” Appeal Br. 212 (Claims
App. A) (emphasis added) (hereinafter “separation distance limitation”). It
is unclear how the separation distance between the anode and cathode is “set
to create ” the two-dimensional angle of the claimed range. We note that
Adv. Act. 2 (dated May 29, 2013). The claims listed in Appendix A are
addressed in the Examiner’s Answer, and are before us on appeal.
5 The Examiner also objected to the Specification under 35 U.S.C. § 112,
first paragraph, “as failing to provide an adequate written description of the
invention and further for failing to provide an enabling disclosure.” Final
Act. 6. Because the bases of the objections and rejections (1) and (2) are
substantially the same, our decision with respect to these rejections is
dispositive of the corresponding objections.
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Application 12/154,712
Appellant’s Specification describes, for example, “maintaining a distance
between the electrodes, adjusted to create direct loading, and over each
portion of the helical cathode, closest to the anode, over a two dimensional
angle of 45 to 130 degrees.” Spec. 25 (emphasis added); see also Spec. 11,
18, 23, and 28. This description appears to indicate that a distance between
the electrodes is maintained to create direct loading of the helical cathode
over an angle of the claimed range. As such, it appears that the angular
range relates to where in the helical cathode the “direct loading” takes place.
To the extent this description is pertinent to the separation distance
limitation, claim 1 does not recite that “direct loading,” or anything else,
occurs in the cathode corresponding to the claimed angular range as a result
of the separation distance being set, as recited. “It is [Appellant’s] burden to
precisely define the invention, not the PTO’s[,]” in accordance with 35
U.S.C. § 112, second paragraph. See In re Morris, 111 F.3d 1048, 1056
(Fed. Cir. 1997).
Furthermore, the meaning of “a two [dimensional] angle in the range
of 45 to 130 degrees as defined by said anode [between] the width spanned
by the two sides of said cathode closest to said anode” is also unclear. It is
unclear how the claimed two dimensional angle is “defined” by the anode.
We note that Figure 2 shows an angle 100. See Spec. 22. However, the
brief description provided in the Specification with regard to angle 100 does
not further clarify the meaning of this claim language. Id.
It is also unclear how the claimed two dimensional angle is
“[between] the width spanned by the two sides of said cathode closest to said
anode.” In this regard, “the two sides of said cathode closest to said anode”
lacks antecedent basis. “Claims are not necessarily invalid for a lack of
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Application 12/154,712
antecedent basis.” Microprocessor Enhancement Corp. v. Texas Instruments
Inc., 520 F.3d 1367, 1376 (Fed. Cir. 2008). If the scope of a claim would be
reasonably ascertainable by those skilled in the art, then the claim is not
indefinite. Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366,
1370-71 (Fed. Cir. 2006) (citation omitted). Here, however, it is unclear if
the cathode has other sides in addition to “the two sides” and, if so, how
many other sides. It also unclear how “the two sides” are “closest to said
anode.” It is further unclear if (and, if so, how) “the two sides” are related to
the “separation distance between said anode and said cathode.”
Claim 1 also recites “a cathode ... in a shape which is a member of
the group consisting of circles, spirals, helices, and portions of circles,
spirals, helices.” It is unclear what “the two sides of said cathode closest to
said anode” means with respect to each of these shapes of the cathode. It is
further unclear what this language means with respect to each shape in the
context of the separation distance limitation. It is still further unclear if the
“curved shape” of the entire cathode can be, for example, “portions” of
circles, “portions” of spirals, or “portions” of helices.
The preamble of claim 1 recites, “[i]n a system which loads a material
with hydrogen by an electric potential, a machine for producing increased
flow of said loaded hydrogen within and through said loaded material.”
Appeal Br. 212 (Claims App. A) (emphasis added). Claim 1 further recites
the final limitation “thereby producing said increased flow of said loaded
hydrogen within and through said material.” Id. (hereinafter “thereby
clause”). It is unclear what the “flow of said loaded hydrogen within and
through said material” recited in the thereby clause is “increased” relative to.
Claim 1 does not recite any limitation that provides a basis for this
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Application 12/154,712
comparison. If, for example, the “flow of said loaded hydrogen within and
through said material” produced by the machine is “increased” relative to
another machine, no other machine is recited in claim 1 to provide a basis
for this comparison. Or, if the flow of the loaded hydrogen is “increased”
relative to another cathode structure, anode structure, and/or solution, no
additional cathode structure, anode structure or solution is recited in claim 1
to provide a basis for this comparison. Or, if the flow of the loaded
hydrogen is “increased” relative to the cathode and anode recited in claim 1,
but, for example, having a different “separation distance,” such basis for
comparison also is not recited in claim 1. Absent any claimed basis for
comparison, the meaning of the thereby clause is unclear. Again, it is
Appellant’s burden to precisely define the invention. See In re Morris, 111
F.3d at 1056.
We determine that claim 7 is also unclear for reasons similar to claim
1. Claim 7 recites, “[i]n a system ... a [machine] for producing increased
flow of said loaded hydrogen within and through said loaded material” and
the same “thereby” clause limitation as claim 1. Appeal Br. 213 (Claims
App. A) (emphasis added). The meaning of the “thereby” clause in claim 7
is unclear for the same reasons discussed for claim 1.
Similarly to claim 1, claim 7 recites the limitations of “a separation
distance between said anode and said curved cathode such that the angle
defined by said anode and the greatest width spanned by the two sides of
said curved cathode is in the range of 45 to 130 degrees,” and “a curved
cathode . . . where said curve is a member of the group consisting of circles,
spirals, helices, and portions of circles, spirals, helices.” Id. These
limitations make the meaning of claim 7 further unclear for reasons similar
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to those discussed for claim 1. For example, the meaning of “the angle
defined by said anode and the greatest width spanned by the two sides of
said curved cathode” is unclear. There is no antecedent basis for “the angle”
or “the two sides of said curved cathode,” and it is unclear how this angle is
“defined” by the anode and the greatest width spanned by the two sides of
the curved cathode. It is further unclear what “the greatest width spanned by
the two sides of said curved cathode” means for each claimed “curve” of the
curved cathode, which can be can be, for example, “portions” of circles,
“portions” of spirals, or “portions” of helices.
Further, we determine that claim 21 is unclear for reasons similar to
claims 1 and 7. Claim 21 recites “a separation distance between said anode
and said curved cathode such that the two dimensional angle defined by said
anode and the two sides of the greatest width spanned by said curved
cathode is in the range of 45 to 130 degrees,” and “a cathode . . . with a
curved shape which is a member of the group consisting of circles, spirals,
helices, and portions of circles, spirals, helices.” Id. at 214—215. These
limitations make the meaning of claim 21 unclear for reasons similar to
those discussed above for claims 1 and 7. For example, it is unclear what is
meant by “the two dimensional angle defined by said anode and the two
sides of the greatest width spanned by said curved cathode.” There is no
antecedent basis for “the two dimensional angle,” and it is unclear how this
angle is “defined” by the anode and the two sides of the greatest width
spanned by the curved cathode, for which there is also no antecedent basis.
Further, it is unclear what “the two sides of the greatest width spanned by
said curved cathode” means for each of the claimed curved shapes of the
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Application 12/154,712
cathode, which can be can be, for example, “portions” of circles, “portions”
of spirals, or “portions” of helices.
Thus, claims 1, 7, and 21, and claims 2—6, 8—13, and 22—27 depending
therefrom, fail to comply with the requirements of 35 U.S.C. § 112, second
paragraph. Therefore, we enter a new ground of rejection of claims 1—13
and 21—27 under 35 U.S.C. § 112, second paragraph.
New Ground of Rejection of Claims 2—6, 8—13, and 22—27
Under 35 U.S.C. § 112, Fourth Paragraph6
Independent claim 1 is directed to a “system” in which there is a
“machine.” Claim 1 does not recite any limitation that precludes the
“system” having additional, unrecited elements. Indeed, it appears that the
“system” would necessarily include an electrical power source to produce
“an electric potential.” See, e.g., Spec. 11, 18. However, each of claims 2—6
depends from claim 1, but is directed to a machine, not the system the
machine is in. Consequently, claims 2—6 do not incorporate by reference all
the limitations of claim 1 to which they refer.
Likewise, independent claims 7 and 21 are both directed to a “system”
in which there is a “machine,” whereas claims 8—13, which depend from
claim 7, and claims 22—27, which depend from claim 21, are directed to a
machine, not the system the machine is in. Consequently, claims 8—13 and
6 35 U.S.C. § 112, fourth paragraph, states: “Subject to the following
paragraph, a claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the subject matter
claimed. A claim in dependent form shall be construed to incorporate by
reference all the limitations of the claim to which it refers.'1'’ (Emphasis
added.)
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22—27 do not incorporate by reference all the limitations of claims 7 and 21
to which they respectively refer.
Thus, dependent claims 2—6, 8—13, and 22—27 fail to comply with the
requirements of 35 U.S.C. § 112, fourth paragraph. Therefore, we enter a
new ground of rejection of these claims under 35 U.S.C. § 112, fourth
paragraph.
Rejection of Claims 1—13 and 21—27— Utility (Operability)
Rejection of claims 1—13 and 13—27 — Enablement
The Examiner determines that claims 1—13 and 21—27 lack patentable
utility because they “are directed to an electrochemical cold fusion device
which has been repeatedly discredited on experimental and theoretical
grounds in the aforementioned references.” Final Act. 15.7 8The Examiner
also determines that claims 1—13 and 21—27 are non-enabled for this same
reason. Idf
Having determined above that claims 1—13 and 21—27 are indefinite,
we cannot sustain the rejection of these claims under the utility requirement
of 35 U.S.C. § 101, or under the enablement requirement of 35 U.S.C. § 112,
first paragraph, because to sustain either of these rejections would require
7 35 U.S.C. § 101 includes a “utility requirement,” requiring that an
invention sought to be patented be “useful.” Particularly, 35 U.S.C. § 101
states: “Whoever invents or discovers any new and useful process ... or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.” (Emphasis added).
8 According to 35 U.S.C. § 112, first paragraph, the specification of an
application for patent must describe “the manner and process of making and
using [the claimed invention], in such full, clear, concise, and exact terms as
to enable any person skilled in the art to which it pertains ... to make and
use the same.” (Emphasis added).
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speculation as to the scope of the claims. See In re Moore, 439 F.2d 1232,
1235 (CCPA 1971) (One is not in a position to determine whether a claim is
enabled under the first paragraph of 35 U.S.C. § 112 until the metes and
bounds of that claim are determined under the second paragraph of this
section of the statute.). It should be understood, however, that our decision
is based solely on the indefiniteness of the claimed subject matter, and does
not reflect on the adequacy of the rejection under 35 U.S.C. § 101, or the
rejection under 35 U.S.C. § 112, first paragraph.
Rejection of Claims 1, 7, and 21 as Unpatentable over Pons
Having determined above that claims 1, 7, and 21 are indefinite, we
cannot sustain the rejection of these claims under 35 U.S.C. § 103(a) as
unpatentable over Pons, because to do so would require speculation as to the
scope of the claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962)
(holding that the Board erred in affirming a rejection of indefinite claims
under 35 U.S.C. § 103(a), because the rejection was based on speculative
assumptions as to the meaning of the claims); In reAoyama, 656 F.3d 1293,
1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an
anticipation rejection of indefinite claims). It should be understood,
however, that our decision is based solely on the indefmiteness of the
claimed subject matter, and does not reflect on the adequacy of Pons applied
in support of the rejection.
DECISION
We reverse the rejection of claims 1—13 and 21—27 under 35 U.S.C.
§ 101 as lacking utility.
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We reverse the rejection of claims 1—13 and 21—27 under 35 U.S.C.
§112, first paragraph, as failing to comply with the enablement requirement.
We reverse the rejection of claims 1,7, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Pons.
We enter a new ground of rejection of claims 1—13 and 21—27 under
35 U.S.C. § 112, second paragraph, as being indefinite.
We enter a new ground of rejection of claims 2—6, 8—13, and 22—27
under 35 U.S.C. § 112, fourth paragraph.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[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
grounds 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
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
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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 MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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