Ex Parte Swartz

Patent Trial and Appeal Board

Feb 27, 2017

09750765 (P.T.A.B. Feb. 27, 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.
09/750,765 12/28/2000 Mitchell R. Swartz 8044
7590 02/28/2017
Mitchell R. Swartz, ScD, EE, MD
16 Pembroke Road
Weston, MA 02493
EXAMINER
KEITH, JACK W
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
02/28/2017 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 2012-011287
Application 09/750,765
Technology Center 3600
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
NINA L. MEDLOCK, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Pro se Appellant filed a Request for Rehearing (“Req. Reh’g.”) dated
November 4, 2016, under 37 C.F.R. § 41.52, of the Decision on Appeal
mailed September 14, 2016 (“Decision”). This Decision concerned the
rejection of claims 1—10, 12—19, 21, and 22 under 35 U.S.C. §§ 101, 112,
first paragraph, 112, second paragraph, and 102(b) as anticipated by Westfall
(US 5,215,631; iss. June 1, 1993). Claims 1—8 and 13—16 were also rejected
by the Examiner under 35 U.S.C. § 102(b) as anticipated by Patterson’675
(US 5,318,675; iss. June 7, 1994) or by Patterson’688 (US 5,372,688; iss.
December 13, 1994). Claims 1, 2, 4, 5, 7, 10, 13, 15, 16, and 21 were
further rejected by the Examiner under 35 U.S.C. § 102(b) as anticipated by
Appeal 2014-002833
Application 12/855,936
Kinsella (US 3,682,806; iss. August 8, 1972). The Decision affirmed the
Examiner’s rejections under §§ 101, 112, first paragraph, and 112, second
paragraph. Decision 17. The Board did not reach the anticipation rejections
in light of the above affirmances. Decision 17. It is understood that
Appellant seeks a rehearing of only the rejections affirmed. See Req. Reh’g.
2-7.
We do not modify our opinion.
THE REQUEST FOR REHEARING
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal Board, hereinafter “Board”].” See 37 C.F.R. § 41.52(a)(1). This
section also states that arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs “are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) through
(a)(4) of this section.” In addition, a request for rehearing is not an
opportunity to express disagreement with a decision without setting forth
points believed to have been misapprehended or overlooked by the Board in
rendering its Decision. The proper course for an Appellant dissatisfied with
a Board decision is to seek judicial review, not to file a request for rehearing
to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
In the present matter, Appellant provides numbered paragraphs (i.e.,
16—54), which Appellant desires the Board to address. We reproduce each
paragraph, in full, below, followed by our response thereto.
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ANALYSIS
16. The Decision by the Patent Trial and Appeal Board does not
correctly describe the submitted invention. Req. Reh’g. 7.
Response: The Board reproduced independent claim 4 in the body of
the Decision. Decision 4—5. Appellant does not indicate how, or in what
manner, the Board failed to correctly describe the invention.
17. None of the relevant figures in the invention’s original
specification are discussed. Req. Reh’g. 7.
Response: In rendering the Decision, the Board addressed 35 U.S.C.
§101 and 35 U.S.C. § 112, first and second paragraphs. Decision 3—16.
Appellant does not identify, with particularity, any point of fact or law
misapprehended or overlooked by the Board as a consequence of the Board
not explicitly discussing the unspecified “relevant figures” when addressing
the issues of utility, enablement, and indefmiteness of the claimed subject
matter. Furthermore, Appellant does not indicate how a discussion in the
Decision of any of the figures would have altered this analysis. In short, the
Board is left to guess as to what Appellant believes has been
misapprehended or overlooked by not discussing the “relevant figures.”
18. The actual invention described in the original specification is only
discussed in passing by presenting one claim, rather than the first claim
discussed in detail by the Appellant in the Reply Brief, and despite what the
invention explicitly is:
a two-stage method to make heat; it involves a first stage of
electrode loading, and then, a second stage of sudden rapid
(‘catastrophic’) flow of hydrogen within the metal. The
apparatus includes means to extract heat and other
products.
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Req. Reh’g. 7.
Response: The focus of our analysis in the Decision is, ultimately, the
claim language of the appealed subject matter. The Decision contains a
section entitled “Claim Selection” discussing the selection and review of
independent claim 4, which was undertaken in accordance with 37 C.F.R.
§ 41.37(c)(l)(iv). Decision 4. Appellant does not explain how our claim
selection was in error, or how our selection thereof is appropriate subject
matter for a rehearing. Appellant also fails to indicate any points that might
have been misapprehended or overlooked because of the selection of
independent claim 4 for analysis.
19. The actual function, operation, and output, of the invention is to
make HEAT. This means that the invention remains ignored by the Office.
Req. Reh’g. 7.
Response: See above, and particularly Paragraph 16. Additionally,
selected claim 4 does not recite the term “heat.” Nor do any of the other
claims on anneal recite this term. Although we note this term is found in
claim 11, that claim was cancelled and, hence, was not before the Board for
review. Decision 1. Further, Appellant does not explain how this statement
is appropriate subject matter to now bring before the Board in this rehearing.
20. In the Decision, the authors of the Decision ignore the actual
invention, to mutate and alter the output from “heat” to “nuclear fusion.”
Req. Reh’g. 7.
Response: See above, and particularly Paragraphs 16 and 19.
Appellant does not identity where the Decision mutated or altered any terms
as alleged. The Board did identity where, in an earlier proceeding when an
appeal taken from the parent of this continuation application was before the
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Court of Appeals for the Federal Circuit (see In re Mitchell R. Swartz, 232
F.3d 862 (Fed. Cir. 2000)), that reviewing court stated, “Mr. Swartz
continually represented his invention as relating to cold fusion.” Decision 7;
Swatrz, 232 F.3d at 864. Thus, Appellant does not persuade us that any
usage by the Office of this same descriptor is in error. Nor does Appellant
explain adequately how this is an appropriate point to bring before the Board
in a rehearing.
21. In the Decision, the authors of the Decision ignore the invention,
change the Applicant’s invention, to begin a biased attack on “cold fusion”
using the Office’s opinion absent Evidence submitted and received BEFORE
FINAL, and with the Appeal Brief, and with the Reply Brief. Req. Reh’g. 8.
Response: See above, and particularly Paragraph 20. The Board
addressed the record as presented for review, including all statements made
in Appellant’s Appeal Brief and Reply Brief. Regarding Appellant’s
assertion regarding “absent Evidence,” this is a procedural matter reviewable
by petition under 37 C.F.R. § 1.181 (a) and is not a matter that can be
addressed by the Board.
22. None of the relevant substantive text from the Appeal Brief and
Reply Brief demonstrating how the invention works, how the claims are
obviously definite, and how the Examiner is wrong, is discussed. Req.
Reh’g. 8.
Response: See above, and particularly Paragraph 21. The Decision
discussed the rejections based on lack of utility and enablement and on
indefmiteness in view of the record. In one instance, the Decision discussed
that which “the Examiner identifies [] is lacking in Appellant’s
Specification” (Decision 7—8) and we recognized that “Appellant seeks to
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rely on external documentation (i.e., extrinsic evidence) for such support.”
Decision 9. Upon consideration, the Board held that “the extrinsic evidence
does not overcome the deficiencies of Appellant’s Specification identified
by the Examiner.” Decision 10. Hence, Appellant’s present contention that
the Board misapprehended or overlooked “relevant substantive text” is not
persuasive that any points were misapprehended or overlooked.
23. The Decision ignores the submitted Evidence and the graphs
proving operability, which were submitted with the original specification.
Req. Reh’g. 8.
Response: See above, and particularly Paragraphs 21 and 22. Our
response to Paragraph 21 identifies that which was reviewed and our
response to Paragraph 22 discusses that which the Examiner found lacking.
Furthermore, our reviewing court previously held that the original
specification was also lacking with respect to an earlier claim (that is very
similar to independent claim 4 addressed in the Decision). Decision 4—7, 9;
see also Swartz, 232 F.3d at 864 and Decision 9-10 (discussing the extrinsic
evidence relied upon by Appellant). Understanding that the claim language
recited in claim 4 and the very similar language recited in the claim
addressed by our reviewing court differ, the Decision addressed the extent of
these differences, and how the two claims are actually quite similar in scope.
See Decision 4—7.
24. The submitted and received Evidence from the DIA and DTRA,[1]
explicitly mentioning Applicant’s working technologies in this field, is not
discussed. Req. Reh’g. 8.
1 DIA refers to the Defense Intelligence Agency. DTRA refers to the
Defense Threat Reduction Agency.
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Response: See above. Appellant does not explain how not
specifically identifying in the Decision this Evidence, or any other part of
the voluminous record material submitted in this matter, warrants a holding
that the Board misapprehended or overlooked the same.
25. The Decision is untruthful because the DIA and DTRA Evidence,
among other things, are ignored. Req. Reh’g. 8.
Response: See above. See a Iso Decision 9-10 discussing the
extrinsic evidence relied upon by Appellant.
26. The most important peer-reviewed publication which was
submitted, and received many times, is mentioned once by title but not
discussed as to its content. Req. Reh’g. 8.
Response: See above.
27. None of the figures in the peer-reviewed publications constituting
Evidence submitted is discussed in the Decision. Req. Reh’g. 9.
Response: See above.
28. The Decision by the Patent Trial and Appeal Board, does not
discuss the submitted, multiply received, Evidence in any substantive way.
Req. Reh’g. 9.
Response: See above.
29. The Decision is untruthful by misquoting, misrepresenting, and
substituting opinion for fact. Req. Reh’g. 9.
Response: See above. Furthermore, Appellant does not indicate
specifically where the Decision is untruthful as a result of misquoting,
misrepresenting, and substituting opinion for fact.
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30. Most egregious of the Office’s omissions are those are that
involve Evidentiary materials previously removed from the Docket. Req.
Reh’g. 9.
Response: See above. See, in particular, the response to paragraph 21
supra.
31. The systematic removal of Evidence, which was submitted before
FESTAL and not logged and discussed anywhere, is not addressed in the
flawed Decision. In this matter, too, the Appellant’s, then Applicant’s,
criticisms have all been ignored. Req. Reh’g. 9.
Response: See above. See, in particular, the response to paragraph 21
supra.
32. After ignoring the Evidence, the Decision cruelly and with blatant
discrimination, the Decision falsely proclaims the Appellant has been “ex
parte.” Req. Reh’g. 9.
Response: Employing the designation “ex parte” is not, in any way,
an act of discrimination. “Ex parte,” as used by the Board, merely “signifies
that the name following [this term] is that of the party upon whose
application the case is heard.” Black’s Law Dictionary, 5th ed. Copyright
1979 by West Publishing Co., p. 517.
33. The Decision fails to list or discuss and with precise substantive
detail all of Appellant’s Arguments which were presented. Req. Reh’g. 9.
Response: See above. In addition, Appellant does not indicate which
particular arguments were purportedly not addressed such that those
arguments can be shown to have been misapprehended or overlooked by the
Board.
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34. So egregious is absence that on Page 15, the Decision falsely
claims Appellant’s briefs did not address the Examiner. A grand jury or
federal judge may soon prove that whoever writes these Decisions clearly
has a reason for purporting that the Appellant is “ex parte”, and that reason
has impropriety. Req. Reh’g. 9.
Response: See above. See, in particular, the response to paragraph 32
supra. See also Decision 15 and particularly footnote 21.
35. The Appellant’s discussions and substantive arguments regarding
the Exhibits and the undiscussed Evidence are not discussed. Not at all.
Req. Reh’g. 10.
Response: See above. See, in particular, the response to paragraph 33
supra.
36. The Decision by the Patent Trial and Appeal Board fails to
mention, address, or refute the meticulous responses made by the Appellant,
and as Applicant before that, including explicit criticism of process. Only in
the light of systematic ignoring the Arguments, the Decision cruelly, and
with blatant discrimination and by patent fraud, falsely proclaims the
Appellant has been “ex parte.” Req. Reh’g. 10.
Response: See above. See, in particular, the response to paragraphs
32 and 33 supra.
37. Appellant has not been “ex parte” as the Decision falsely
purports. This is great impropriety in the light of the serial removal of
Evidence from DTRA, DIA, NASA, DARPA, the US Navy, and the
American Nuclear Society. Req. Reh’g. 10.
Response: See above. See, in particular, the response to paragraphs
21 and 32 supra.
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38. On information and belief, it is believed that Examiner had an ex
parte communication with the Board which was withheld from the
Appellant. Hence the “ex parte” falsehood. The Applicant (also Appellant)
has always responded. Req. Reh’g. 10.
Response: See above. See, in particular, the response to paragraph 32
supra. Additionally, Appellant proffers no evidence that might support the
unsubstantiated assertion that the “Examiner had an ex parte communication
with the Board” or that anything “was withheld from the Appellant.”
39. On information and belief, the Appellant again has had
documents withheld from him in the above-entitled action, as in others
actions. The Applicant (also Appellant) has always responded. Req. Reh’g.
10.
Response: See above. See, in particular, the response to paragraph 38
supra. Additionally, unsubstantiated statements based “[o]n information and
belief’ are insufficient to warrant a change in this Decision.
40. On information and belief, the Office has either withheld
Evidence and Briefs from the Patent Trial and Appeal Board or has
conspired with the author of Decision. Req. Reh’g. 10.
Response: See above. See, in particular, the response to paragraph 38
supra.
41. The Decision by the Patent Trial and Appeal Board does not
discuss fully and completely, and with appropriate issue, the submitted
Declarations in the relevance of which they were given. Req. Reh’g. 11.
Response: The submitted Declarations were addressed at pages 9—11,
14, and 15 of the Decision. Appellant does not explain how those
Declarations were misapprehended or overlooked by the Board.
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42. The Declarants are ridiculed, marginalized, and their content
presented in the Declarations is never fully described. This is done wrongly
and with impropriety presented to lead away from the important issues.
Req. Reh’g. 11.
Response: See above. Additionally, Appellant’s statements are
unsubstantiated and are not otherwise self-evident from the record.
43. The previous Remands from the Board [e.g. Exhibit-058-5],
which the examiner failed to address, were still not discussed. The Orders
have been swept under the proverbial rug revealing an obvious deep
appearance of impropriety.2 [Exhibit 058-5]. Req. Reh’g. 11.
Response: See above. Additionally, Appellant does not explain in
what manner an Order from another appeal results in a matter being
misapprehended or overlooked by the Board in the present appeal.
44. Note that the Remand notes the inventions are SPECIAL. To the
author of the Decision that is interpreted to mean it must be destroyed
through fraud and misstatements. In fact, that makes the present Decision
which relies upon previous deliberate mischaracterization, and continues it
knowingly, a patent affront to justice, Law and US Constitution and possibly
Treason. Req. Reh’g. 14.
Response: See above. Additionally, Appellant’s apparent
understanding of the meaning of an application being made “SPECIAL” by
2 At this juncture in Appellant’s Request for Rehearing, Appellant replicates
an “Order Remanding to Examiner.” Req. Reh’g. 12—14. This Order was
issued during the prosecution of a different Appeal (Appeal No. 94-2920)
pertaining to the parent application (07/760,970) of the present application
on appeal. See also Decision 6.
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the Office is incorrect. Further, Appellant does not indicate where the
Decision purportedly engaged in “deliberate mischaracterization.”
45. On page six, the Decision complains the Appellant used
“material” instead of “lattice.” This is not only not logical but with
impropriety because it PROVES there was definiteness AND shows, yet
again, the Decision is disingenuous. Req. Reh’g. 15.
Response: Presumably, Appellant is referring to footnotes 7 and 8 on
page 6 of the Decision. Footnote 7 quotes a statement Appellant made to the
effect that “standard theory does not even mention the lattice” and we note
that neither claim 25 (of the parent application) nor claim 4 (of the present
application) includes any recitation of “lattice.” Footnote 8 indicates that
claim 25 (of the parent application) and claim 4 (of the present application)
both pertain to supplying fuel to a “material.” However, the two different
footnotes were employed for two different purposes with the gist of page 6
of the Decision being to identify the similarities and the differences between
these two claims. Appellant’s assertion does not inform us how the Board’s
discussion on page 6 of the Decision is indicative that the Board
misapprehended or overlooked any evidence before it.
46. With impropriety, the Decision by the Patent Trial and Appeal
Board does not discuss the previous removal of Evidence, and failure to
docket that Evidence, even though it was discussed and detailed in the
Appeal Brief and Reply Brief. Req. Reh’g. 15.
Response: See above. See, in particular, the response to paragraph 21
supra.
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47. At no place in the Decision is the fact that the previous Decision
(cited and relied upon in the present Decision) falsely, cruelly, and wrongly,
misdescribed the invention and failed to docket Evidence. Req. Reh’g. 15.
Response: The Decision addressed the record before the Board. The
Board indicated that the “previous Decision” (i.e., Appeal No. 94-2920) was
itself “appealed to the U.S. Court of Appeals for the Federal Circuit.”
Decision 6. This resulted in the court’s issuance of Swartz. Decision 7. The
Decision addressed Swartz (see Decision 7, 9), but not the “previous
Decision” whose appeal led to the holding in Swartz, because it is Swartz
that is precedential to the Board, not the “previous Decision.” Regarding the
failure to “docket Evidence,” see also the response to paragraph 21 supra.
48. The Decision refers to previous Decisions which had falsehoods
by the Office as demonstrated in the federal appellate court. As such, the
Decision with impropriety fails to discuss the implication of the previously
removed Evidence, and the previous flawed description of the invention.
This is serious, making the author of the Decision a possible conspirator in
RICO of using rubberstamping of palpable corruption, if not treason. Req.
Reh’g. 15.
Response: See above.
49. There is no fairness. The Decision by the Patent Trial and Appeal
Board fails to mention, address, or refute the fact that the Office has given
out “cold fusion” patents to many others, proving discrimination. Req.
Reh’g. 15.
Response: Appellant does not explain clearly how the issuance of
patents to others by the Patent and Trademark Office is indicative of
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discrimination, or that the Board misapprehended or overlooked evidence, in
the present matter.
50. On information and belief, the Office has either withheld Evidence
and Briefs from the Patent Trial and Appeal Board or has conspired with the
author of the Decision to have it removed from the federal record. Req.
Reh’g. 16.
Response: See above. See, in particular, the response to
paragraphs 21 and 38 supra.
51. This is an attempt by false statements in a Decision to lead away
future investigators from the initial cover-up including misdescribing the
invention, and ignoring removal of Evidence. Req. Reh’g. 16.
Responses: See above.
52. The Examiner has been shown to be wrong in his rejection of the
specification and claims 1—10, 12—19, 21 and 22 under 35 U.S.C. 112, first
paragraph, as failing to comply with the enablement requirement. Req.
Reh’g. 16.
Response: The Examiner’s rejection was affirmed by the Board. The
Board was not persuaded that such rejection was “shown to be wrong.”
53. The Examiner has been shown to be wrong in his rejection that the
“Specification is objected to under 35 U.S.C. 112, first paragraph, for failing
to provide a written description of the invention and for failing to adequately
teach how to make and/or use the invention, i.e., for failing to provide an
enabling disclosure.” Req. Reh’g. 16.
Response: See above.
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54. The Examiner has been shown to be wrong in his rejection of
claims 1—10, 12—19, 21 and 22 under 35 U.S.C. [§] 102(b) as being
anticipated by Westfall (US 5,215,631), claims 1, 2, 4, 5, 7, 10, 13, 15, 16
and 21 under 35 U.S.C. [§] 102(b) as being anticipated by Kinsella et al. (US
3,682,806), and Claims 1—8 and 13—16 under 35 U.S.C. [§] 102(b) as being
anticipated by Patterson (US 5,318,675) or Patterson (US 5,372,688). Req.
Reh’g. 16.
Response: The Decision did not reach the Examiner’s anticipation
rejections under 35 U.S.C. § 102(b). Decision 16.
DECISION
Appellant’s Request for Rehearing has been granted to the extent that
we have reconsidered our Decision in light of the statements made in
Appellant’s Request for Rehearing, but is denied with respect to our making
any modification to the Decision.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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