Ex Parte Swartz

Patent Trial and Appeal Board

Sep 13, 2016

09750765 (P.T.A.B. Sep. 13, 2016)

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 09/14/2016
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
09/14/2016 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 APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1‒10, 12–19, 21, and 22. App. Br. 3. Claims 11 and 20
have been withdrawn. Final Act. 1 (Office Action Summary); App. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates “to control[ing] loaded isotopic
fuel within a material [using] a two-stage method which involves a first
stage of electrode loading, and then, a second stage of sudden rapid
Appeal 2012-011287
Application 09/750,765

2

(‘catastrophic’) flow of hydrogen within the metal.” Spec. 2.1 Claims 1, 4,
and 13 are independent claims. Claim 4, which is illustrative of the claims
on appeal, is reproduced in the body of this Decision.
REFERENCES RELIED ON BY THE EXAMINER
Kinsella US 3,682,806 Aug. 8, 1972
Westfall US 5,215,631 June 1, 1993
Patterson ’675 US 5,318,675 June 7, 1994
Patterson ’688 US 5,372,688 Dec. 13, 1994

THE REJECTIONS ON APPEAL2
Claims 1–10, 12–19, 21, and 22 are rejected under 35 U.S.C. § 101 on
the ground that the claimed invention as disclosed is inoperative and
therefore lacks utility. Final Act. 26.
Claims 1–10, 12–19, 21, and 22 are rejected under 35 U.S.C. § 112,
first paragraph, enablement requirement. Final Act. 26.
Claims 1–10, 12–19, 21, and 22 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 Appellant regards as the invention.
Final Act. 27.
Claims 1–10, 12–19, 21, and 22 are rejected under 35 U.S.C. § 102(b)
as anticipated by Westfall. Final Act. 29.

1 Appellant’s Specification does not provide line or paragraph numbering
and, accordingly, reference to the Specification will only be made via the
page number.
2 In addition to the claim rejections listed, “[t]he Specification is objected to
under 35 U.S.C. § 112, first paragraph, as failing to provide an adequate
written description of the invention and as failing to adequately teach how to
make and/or use the invention, i.e., failing to provide an enabling
disclosure.” Final Act. 11.
Appeal 2012-011287
Application 09/750,765

3

Claims 1–8 and 13–16 are rejected under 35 U.S.C. § 102(b) as
anticipated by Patterson ’675 or Patterson ’688. Final Act. 31.
Claims 1, 2, 4, 5, 7, 10, 13, 15, 16, and 21 are rejected under
35 U.S.C. § 102(b) as anticipated by Kinsella. Final Act. 32.
The rejections of claims 1–10, 12–19, 21, and 22
under §§ 101 and 112, first paragraph
Overview
The questions of whether a specification provides an enabling
disclosure under § 112, first paragraph, and whether an application satisfies
the utility requirement of § 101 are closely related. See Process Control
Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 (Fed. Cir. 1999). We are
provided guidance that if claims in an application fail to meet the utility
requirement under § 101 because the invention is inoperative, such claims
also fail to meet the enablement requirement under § 112, first paragraph,
because a person skilled in the art cannot practice the invention.3 See
Process Control, 190 F.3d at 1358.
As indicated, the two stated rejections under §§ 101 and 112, first
paragraph, are inter-related, with the Examiner’s rationales for these two
rejections being comingled.4 In seeking to ascertain whether the Examiner

3 See also In re Ziegler, 992 F.2d 1197, 1200–01 (Fed. Cir. 1993) (“If the
application fails as a matter of fact to satisfy 35 U.S.C. § 101, then the
application also fails as a matter of law to enable one of ordinary skill in the
art to use the invention under 35 U.S.C. § 112.” Conversely, “[t]he how to
use prong of section 112 incorporates as a matter of law the requirement of
35 U.S.C. § 101 that the specification disclose as a matter of fact a practical
utility for the invention.”).
4 The Examiner’s rationale regarding the § 101 rejection is stated as being
“the same as the reasons set forth in section 11 above.” Final Act. 26. This
Appeal 2012-011287
Application 09/750,765

4

erred in rendering one or both of these rejections, we address both rejections
together due to their reliance on similar findings.
Claim Selection
With respect to both rejections (i.e., under § 101 and under § 112, first
paragraph), Appellant argues all claims 1–10, 12–19, 21, and 22 as a group.
App. Br. 21– 91, 131–142. Accordingly, with respect to each rejection, we
select independent claim 4 for review, with claims 1–3, 5–10, 12–19, 21, and
22 standing or falling with claim 4. See 37 C.F.R. § 41.37(c)(1)(iv).
Background
The present application is stated as being “a continuation of
[U.S]. Serial no. 07/760,970 Filed: 09/17/1991” (hereinafter the ’970
application).5 Spec. 2. Independent claim 4 of the presently pending
application is reproduced below.
4. In a process using an isotopic fuel loaded into a material, a
two-stage method for controlling the loading which includes in
combination:
loading said isotopic fuel into said material,
then providing means for producing a change in the
quantity of said isotopic fuel within said material,

referenced “section 11 above” addresses § 112, first paragraph. Final
Act. 11.
5 The Examiner initially provided reasons why “the current application does
not qualify as a continuation of S/N 09/760,970 because of differences in
subject matter covered.” Final Act. 2. Appellant responded that no new
matter has been introduced via amendment (App. Br. 96–99; Reply Br. 122–
123) and that this application is indeed a continuation of the ’970 application
(see, e.g., App. Br. 1, 83, 84, 96, 97, 102, 120, and 121). The Examiner does
not pursue this line of reasoning further, but instead reaches a subsequent
conclusion regarding the present application stating, “since it is a
continuation of the parent case.” Ans. 26. For purposes of this appeal, we
address the present application as a continuation of the ’970 application.
Appeal 2012-011287
Application 09/750,765

5

creating thereby a catastrophic diffusion flux of said isotopic
fuel within said material.
For comparison, independent claim 25 of the parent ’970 application
reads as follows:
25. In a process for producing a nuclear fusion product from
an isotopic fuel using a material, a two-stage method for
controlling said reaction which includes in combination:
supplying an isotopic fuel to said material,
loading said isotopic fuel into said material to saturate
said material,
then creating a change in the active quantity of said fuel
within said material by desaturation,
creating thereby a catastrophic diffusion flux of said
isotopic fuel within said material.
There is a variation in the respective preambles of claims 4 and 25,
but both recite “an isotopic fuel” that is “loaded into”/“using” “a material”
and involve “a two-stage method for controlling” the “loading”/“reaction.”6
The respective bodies of these “child” and “parent” claims are nearly
identical with the main difference being that claim 25 of the parent
application specifically recites that the isotopic fuel is loaded into the
material “to saturate said material” and that a change in the quantity of
isotopic fuel in the material is produced “by desaturation.” Present claim 4

6 Appellant explains, “the invention at issue in this case, ’765, is claimed by
Claims 1–10, 12–19, 21, and 22, and is generally speaking a two-stage
process involving loading of hydrogen into a metal electrode, such as
palladium including a first stage of electrode loading, followed by, a second
stage of sudden rapid (‘catastrophic’) flow of the loaded hydrogen with the
metal.” App. Br. 91, 132; see also App. Br. 73, 107, 140 and Reply Br. 9.
Appellant also states, “[t]he present invention is designed to enable the
generation of a catastrophic desaturation” (App. Br. 72) but that limitation
(i.e., “desaturation”) is missing from claim 4 while included in claim 25.
Appeal 2012-011287
Application 09/750,765

6

is silent regarding any loading or changing involving
saturation/desaturation.7 Hence, the principal difference between present
claim 4 and that of claim 25 of the parent application are the additional
recitations in claim 25 directed to saturation and desaturation of the fuel
within the material.8 Consequently, except for the additional
saturation/desaturation limitations recited in claim 25 of the parent
application, the two claims are nearly identical.
The similarity of these two claims is important because the parent
’970 application was the subject of an appeal to the Board of Patent Appeals
and Interferences under Appeal No. 94-2920, which resulted in a Decision
mailed June 22, 1999 affirming the Examiner’s rejections. This Board
Decision was thereafter appealed to the U.S. Court of Appeals for the
Federal Circuit, which issued Decision 00-1108 on November 8, 2000. See

7 Interestingly, Appellant states, “Furthermore, those who are skilled-in-the-
art have agreed that said catastrophic desaturation is a critical issue for the
successful performance of the system [Swartz (94B), Swartz (97B)].” App.
Br. 73; Reply Br. 33. This statement suggests that Appellant acknowledges
that claim 4 lacks a critical element (“desaturation”), unlike claim 25.
Additionally, Appellant states, “standard theory does not even mention the
lattice, which the Applicant and others have now proven to be significantly
important.” Reply Br. 29. Neither claim 25 nor claim 4 includes a recitation
of any “lattice” which has been proven by Appellant and others as being
“significantly important.”
8 Claim 25 also includes the limitation of “supplying an isotopic fuel to said
material” as well as its “loading” thereinto. Present claim 4 only recites
“loading said isotopic fuel into said material.” However, as understood, in
order to load isotropic fuel, it must first be supplied to the material.
Accordingly, the lack of a corresponding “supplying” limitation in present
claim 4 is reasonably believed to be included in the recited “loading”
limitation of claim 4.
Appeal 2012-011287
Application 09/750,765

7

In re Mitchell R. Swartz, 232 F.3d 862 (Fed. Cir. 2000). The court
addressed “the examiner’s final rejection of claims 25–48 of application
Serial No. 07/760,970 for lack of operability or utility under 35 U.S.C. § 101
and lack of enablement under 35 U.S.C. § 112, ¶ 1.” Swartz, 232 F.3d
at 863. The court concluded that “[f]or the reasons discussed above, the
Board did not err in concluding that the utility of Mr. Swartz’s claimed
process had not been established and that his application did not satisfy the
enablement requirement.”9 Swartz, 232 F.3d at 864.
Analysis
In Swartz, the court stated that, with respect to the parent case, “Mr.
Swartz continually represented his invention as relating to cold fusion” and
that, “the PTO provided substantial evidence that those skilled in the art
would ‘reasonably doubt’ the asserted utility and operability of cold fusion.”
Swartz, 232 F.3d at 864.
In the present case, the Examiner provides detailed reasons for the
rejection of claim 4 that are consistent with the reasons expressed by the
court supra when it addressed nearly identical claim 25 of the parent
application. See Final Act. 11–27; Ans. 5–18, 24–30, 36. In view of these
reasons, the Examiner concludes, “[t]his disclosure is thus insufficient and
non-enabling” (Ans. 9) and that the invention “is inoperative” (Final
Act. 26). For example, the Examiner identifies what is lacking in

9 It should be noted that during the review of the present application, the
Examiner referenced this earlier decision stating, “[t]he Court of Appeals for
the Federal Circuit, in its 00-[1]108 judgment, confirmed the lack of
operability and lack of enablement of S/N 07/760,970. Therefore, this
application also lacks operability and lacks enablement since it is a
continuation of the parent case.” Ans. 26.
Appeal 2012-011287
Application 09/750,765

8

Appellant’s Specification, and why undue experimentation would be
warranted to make and use the claimed subject matter.10 See, e.g., Final
Act. 24–26; Ans. 13–16. The Examiner states, “the disclosure is
insufficient in failing to disclose said additional critical features(s),
components(s), etc. necessary to cause appellant’s invention to operatively
function in a different manner to produce a result different from that of said
references.”11 Ans. 13; see also Final Act. 24. In other words, the Examiner
is seeking to ascertain what is described and claimed that causes Appellant’s
disclosure “to produce a result different from that of said references.”12
Ans. 13; see also Final Act. 24. The Examiner also cautions, “[t]he statute
requires the appellant itself to inform, not to direct others to find out for
themselves.” Ans. 16 (citation omitted). In other words, “the disclosure
must enable a person skilled in the art to practice the invention without
having to design structure not shown to be readily available in the art.”
Ans. 16 (citation omitted).

10 The test for compliance with the enablement requirement is whether the
disclosure, as filed, is sufficiently complete to enable one of ordinary skill in
the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
11 The Examiner also states, “[t]here is no evidence to indicate that the
appellant has so succeeded where others have failed, in arriving at an
operative cold fusion system, i.e., that he has progressed his system beyond
the point of an unproven theory or concept which still requires an undue
amount of experimentation to enable the artisan to make and use the
inventive system for its intended purpose.” Ans. 15; see also Final Act. 25.
12 To reiterate, the Examiner states, “[i]t is not seen wherein the specification
discloses any particular structure, etc. which is unique to the appellant’s
system and which would make the appellant’s cold fusion system operative.”
Ans. 14; see also Final Act. 24.
Appeal 2012-011287
Application 09/750,765

9

Appellant argues extensively that the pending claims satisfy the utility
and enablement requirements. See App. Br. 131–142, 21–91 and Reply
Br. 124–125, 25–89. Appellant contends that the “original specification”
“sets forth the best mode contemplated by the inventor of carrying out his
invention.”13 App. Br. 22; Reply Br. 27. As indicated supra, the court
deemed Appellant’s “original specification” (to which no new matter has
been added, see, App. Br. 96–99, Reply Br. 122–123) to be lacking at least
in regard to original claim 25.14 Swartz, 232 F.3d at 864. Because our
reviewing court held that original claim 25 lacked utility and was non-
enabling (see Swartz, 232 F.3d at 864; Ans. 26), this is believed to have
prompted the Examiner to seek to ascertain what is now recited in claim 4,
or where support can be found in Appellant’s Specification, that would show
enablement or utility of claim 4. See supra. Appellant contends, “[t]he
present invention’s enablement is borne out by de jure [] peer-reviewed
publications” as well as “by the de facto Declarations affirming to said
operability and utility (which together manifest enablement).” App. Br. 22;
Reply Br. 27. In effect, Appellant seeks to rely on external documentation
(i.e., extrinsic evidence) for such support. Extrinsic evidence can be relied
on to rebut a charge of non-enablement. See, e.g., In re Strahilevitz, 668

13 At one point, Appellant contends, “Critical Features Were Specified
And Claimed And Discussed Previously,” and further, “[t]hese were
described in the original specification through the use of an applied electric
field intensity.” App. Br. 74; see also Reply Br. 34, 37.
14 It is noted that Appellant does not explain how claim 4’s lack of any
express saturation or desaturation limitation somehow satisfies the utility
and enablement requirements when parent claim 25 (specifically reciting
such limitations) has been determined to lack such utility and enablement
(see Swartz generally).
Appeal 2012-011287
Application 09/750,765

10

F.2d 1229, 1232 (Fed. Cir. 1982) (finding that appellant properly relied on
literature citations to establish both the level of ordinary skill in the art and
the fact that the techniques necessary to practice his invention were known
in the art.); In re Wands, 858 F.2d at 737 (holding that declaratory evidence
showing experimentation was not undue effectively rebutted the examiner’s
enablement challenge). However, the extrinsic evidence relied on by
Appellant does not show that techniques necessary to practice the claimed
method were known in the art. Nor does the extrinsic evidence show that
undue experimentation would not be needed to practice the claimed method.
Accordingly, the extrinsic evidence does not overcome the deficiencies of
Appellant’s Specification identified by the Examiner.
Appellant also responds to the Examiner’s remarks stating “the
Examiner’s references do not apply to the present invention” “or involve
experiments which were not done using the techniques taught in the original
specification and claims of the above-entitled application.” App. Br. 22.
Appellant has identified the crux of the matter at hand, i.e., whether the
“techniques taught in the original specification” are sufficient under § 112,
first paragraph, and hence whether claim 4 satisfies the utility requirement of
§ 101. Appellant contends, “the Examiner has ignored the pro se
Applicant’s arguments, Declarations and peer-reviewed articles which were
submitted before FINAL” (Reply Br. 25); however, the focus is whether
Appellant’s original disclosure is adequate without requiring undue
experimentation.15

15 An example of the disconnect between what the patent laws require and
Appellant’s argument is Appellant’s contention that “peer-reviewed
publications show that growing numbers of the scientific community
Appeal 2012-011287
Application 09/750,765

11

Further, Appellant’s statements addressing criticism of the invention
(as well as those documents in support thereof, see App. Br. 21–91), do not
go to the heart of whether Appellant’s Specification is sufficient under
§ 112, first paragraph, in identifying the features “not found in any of said
references which is necessary to enable appellant’s invention to function
differently” “so as to be able to produce a different result.”16, 17 Ans. 13. In
other words, Appellant’s response to the need to identify that which sets
Appellant’s disclosure apart is lacking.18 Instead of identifying that portion

consider the positive results of Appellant’s work as being operative and of
utility.” Reply Br. 28; see also Reply Br. 29 (where Appellant contends the
Examiner has reached the stated conclusion “by ignoring the original
specification and claims, by ignoring the timely-submitted unrebutted
Declarations, by ignoring scores of Exhibits and references.”). In short,
Appellant fails to explain how the claimed invention, as described in the
original specification, provides the same detail and proves operability, as
supposedly is accomplished by “Appellant’s work” which has been
addressed in these Declarations and peer-reviewed publications. See, e.g.,
Ans. 9.
16 Appellant references multiple Declarations as “evidence supporting the
Applicant’s position.” App. Br. 27; see also App. Br. 91. However, the
Examiner deems these Declarations “irrelevant” because they have
previously been considered in the parent case, they pertain to a different
application, or they are from an interested party (i.e., Appellant). Ans. 30;
see also Reply Br. 4–5.
17 Appellant further states that the invention “HAS BEEN PUBLICLY
DEMONSTRATED” (App. Br. 28; see also id at 134) but Appellant fails to
establish a nexus between the recited claim language/original Specification,
and the demonstration. In short, the Examiner is seeking what causes
Appellant’s device to be successful where others failed, and where such
disclosure can be found in the claim language/original Specification.
Ans. 13–14.
18 For example, Appellant addresses “[t]he role of loading in the operability
of this invention” and also where “[l]oading is discussed” in Appellant’s
Appeal 2012-011287
Application 09/750,765

12

of the Specification that enables the presently claimed invention, Appellant
instead criticizes the Examiner’s position as well as those documents critical
to the ability to achieve cold fusion. App. Br. 22–28, 48–59. Appellant also
contends, “[t]he parameters which the Examiner is having trouble
understanding are well known in the field.”19 App. Br. 75; Reply Br. 39.
Assuming arguendo Appellant is correct that the parameters are understood,
the Examiner still finds, “[o]ne cannot rely on the skill in the art for the
selection of the proper quantitative values to present an operative cold fusion
system, since those in the art do not know what would be these values.”
Final Act. 25; Ans. 16 (reference omitted). The Examiner’s statement is
consistent with the Examiner’s finding regarding Appellant’s “failure to set
forth a full example of the specific parameters of an operative embodiment.”
Final Act. 25; Ans. 15–16. As the Examiner states, “an undue amount of
experimentation [is required] to enable the artisan to make and use the
inventive system for its indicated purpose.” Final Act. 25; see also Ans. 15.
We are not persuaded the Examiner’s findings and conclusions are in error.

Specification. App. Br. 70 (referencing multiple pages of Appellant’s
Specification); see also Reply Br. 36–37, 41. However, the same “loading”
limitation is also recited in original claim 25 and, as indicated supra, the
Federal Circuit concluded (in view of “voluminous record material”) that
this “loading” limitation of claim 25 in the parent application was not
enabled. Swartz, 232 F.3d at 864. Appellant does not now persuade us that
this deficiency in the earlier application has now been cured in the present
continuation application (having the same disclosure). In short, we are not
persuaded that the same “loading” limitation presently recited in claim 4 is
somehow now enabled.
19 Appellant states that the terms involved are “well known to those skilled
in the art, and in addition, the applicant gave the Examiner references.”
App. Br. 78.
Appeal 2012-011287
Application 09/750,765

13

As indicated supra and as instructed by our reviewing court, the test
for compliance with the enablement requirement is whether the disclosure,
as filed, is sufficiently complete to enable one of ordinary skill in the art to
make and use the claimed invention without undue experimentation. Wands,
858 F.2d at 737. This enablement requirement is intertwined with the
“utility” requirement of § 101 because, to satisfy the “utility” requirement,
“an application must show that an invention is useful to the public as
disclosed in its current form, not that it may prove useful at some future date
after further research.” In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005)
(emphasis added). Appellant’s discussion regarding satisfaction of the
utility requirement focuses on the usefulness of this invention to society, not
that the claimed invention is disclosed in Appellant’s Specification, in its
current form, with sufficient detail as to actually be operative.20 App. Br.
131–142. For example, Appellant submits evidence of the invention being
publicly demonstrated and that there was a “field trip” to view it (App. Br.
134–135; Reply Br. 58–65), but what is missing in the record is evidence of
a nexus between that which was publically demonstrated and the claimed
invention, i.e., that the demonstration was of the claimed invention. The
Examiner is not saying that a new source of power is not useful, but instead
that Appellant’s disclosure is insufficient to meet the utility requirement of
§ 101. Appellant contends that “utility should be judged either by those

20 The Examiner states that there is no evidence “to indicate the invention
has been reduced to the point of providing in current available form, an
operative cold fusion system” and that instead, Appellant “has set forth what
may be considered a concept or an object of scientific research.” Ans. 17
(emphasis added); see also Final Act. 25 (“While applicant may have set
forth theoretical concepts, it is well known in the cold fusion field that
theory and reality have a habit of not coinciding.”).
Appeal 2012-011287
Application 09/750,765

14

using the invention or those skilled in the art” and also that “validation
occurs when scientists actually skilled, and working, in the state-of-the-art
state it to be so.” App. Br. 136. Appellant’s contentions do not adequately
address the point the Examiner is making, i.e., that the focus is to be on the
invention as described in Appellant’s Specification and whether the
knowledge this Specification provides to one skilled in the art can result in
an operable device, without more. The Examiner explains that the
Specification lacks:
how and in what manner, [A]ppellant’s invention is able to
produce low temperature electrolytic nuclear reactions and
excess heat whereas, the identical systems and methods of
operation in any[] one of Lewis et al., Westfall or Kinsella et
al., or [Patterson-1] or Patterson-2, presumably did not produce
said low temperature electrolytic nuclear reactions and excess
heat.
Ans. 13–14. Appellant’s reliance on various declarations to show usefulness
of the invention have not been ignored as asserted by Appellant (App.
Br. 132–139), but instead, the Examiner states that they “have already been
addressed in section 10.1 above and shown to have no merits.” Ans. 36.
In summary, the underlying facts established by our reviewing court
vis-a-vis the parent case have not changed. As such, we are not persuaded
that the Examiner was mistaken in concluding (in the words of our
reviewing court) “that the utility of Mr. Swartz’s claimed process had not
been established and that his application did not satisfy the enablement
requirement.” Swartz, 232 F.3d at 864. Accordingly, we sustain the
Examiner’s rejection of claim 4 (and also claims 1–3, 5–10, 12–19, 21, and
22) under 35 U.S.C. § 101 as being “inoperative and therefore lack[ing]
utility.” Final Act. 26. We also sustain the Examiner’s rejection of claim 4
Appeal 2012-011287
Application 09/750,765

15

(and also claims 1–3, 5–10, 12–19, 21, and 22) under 35 U.S.C. § 112, first
paragraph, because the claimed subject matter “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.” Final Act. 26.
The rejection of claims 1–10, 12–19, 21, and 22
under 35 U.S.C. § 112, second paragraph, as indefinite
With respect to this rejection, the Examiner again provides multiple
examples of claim language that the Examiner finds to be indefinite. Final
Act. 27–29; see also Ans. 18–20. Appellant disagrees contending that
“[d]efiniteness is proven by way of Applicant’s previously-submitted expert
testimony . . . including Declarations and Amicus Curiae Briefs.” App.
Br. 93. However, nowhere in Appellant’s briefs does Appellant address the
specific examples cited by the Examiner.21 App. Br. 93–95; see also Reply
Br. 118–121. Instead, Appellant contends, “indefiniteness is the opposite of
definiteness” and, because “Applicant claimed with particularity,” the claims
are “definite because the claims are precise, clear, correct, and unambiguous
to a person skilled-in-the-art.”22 App. Br. 93; Reply Br. 118. In short,
Appellant does not apprise us of any error in any of the examples identified
by the Examiner. Further, our review of the record fails to locate any
discussion refuting these examples provided by the Examiner. We thus

21 The Examiner states, “Appellant traversed the rejection of claims for
indefiniteness by essentially repeating his arguments on the rejection for
lack of enablement. These arguments fail to address the issues raised by the
examiner in section 9.4 above.” Ans. 30; see also Final Act. 27–29.
22 Appellant also contends, “[d]efiniteness is proven by way of Applicant’s
previously-submitted expert testimony . . . including Declarations and
Amicus Curiae Briefs.” App. Br. 93; Reply Br. 119 (citations omitted).
Appeal 2012-011287
Application 09/750,765

16

sustain the Examiner’s rejection of claims 1–10, 12–19, 21, and 22 under
35 U.S.C. § 112, second paragraph, as being indefinite.
The rejection of: (a) claims 1–10, 12–19, 21, and 22 as anticipated by
Westfall; (b) claims 1–8 and 13–16 as anticipated by any one of Patterson
’675 or Patterson ’688; and, (c) claims 1, 2, 4, 5, 7, 10, 13, 15, 16, and 21
under 35 U.S.C. § 102(b) as anticipated by Kinsella
We are instructed by the U.S. Supreme Court that “[t]he § 101 patent-
eligibility inquiry is only a threshold test. Even if an invention qualifies as a
process, machine, manufacture, or composition of matter, in order to receive
the Patent Act’s protection the claimed invention must also satisfy ‘the
conditions and requirements of this title.’” Bilski v. Kappos, 561 U.S. 593,
602 (2010). These other conditions and requirements of this title (i.e., 35
U.S.C.) include anticipation. Bilski, 561 U.S. at 602. However, with respect
to the present claims on appeal (i.e., claims 1–10, 12–19, 21, and 22), it has
been determined that the § 101 threshold test has not been satisfied (see
supra), which thus renders moot the need to further analyze the Examiner’s
anticipation rejections of these claims. Final Act. 29–33.
Furthermore, 37 C.F.R. § 41.50 (a)(1) states that “[t]he affirmance of
the rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim.” Here, as indicated
supra, the Examiner’s rejection under both § 101 and § 112, first paragraph,
of all the claims presently on appeal (i.e., 1–10, 12–19, 21, and 22) has been
affirmed. Accordingly, we do not reach the rejections of claims 1–10, 12–
19, 21, and 22 as anticipated by the above cited prior art.
Appeal 2012-011287
Application 09/750,765

17

DECISION
The Examiner’s rejection under 35 U.S.C. § 101 of claims 1–10, 12–
19, 21, and 22 is affirmed.
The Examiner’s rejection under 35 U.S.C. § 112, first paragraph, of
claims 1–10, 12–19, 21, and 22 is affirmed.
The Examiner’s rejection under 35 U.S.C. § 112, second paragraph, of
claims 1–10, 12–19, 21, and 22 is affirmed.
We do not reach the anticipation rejections of claims 1–10, 12–19, 21,
and 22 by Westfall, Patterson ’675, Patterson ’688, or Kinsella.
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).

AFFIRMED