Ex Parte Trigger

Board of Patent Appeals and Interferences

Jul 27, 2007

10217990 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today was
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VERNON A. TRIGGER
____________

Appeal 2007-0003
Application 10/217,990
Technology Center 1700
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Decided: July 27, 2007
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Before CHARLES F. WARREN, and JEFFREY T. SMITH, and
LINDA M. GAUDETTE Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 to 18. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention relate to a transition unit. According to
Appellant, the transition unit has applications for rendering fluids and gases
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environmentally friendly (Specification [0008]). Representative
independent claim 1, as presented in the Brief, appears below:
1. A transition unit comprising:
an outer cylinder that is cylindrically shaped and made of steel;
a foundation for supporting the outer cylinder;
grounding rods connected to the outer cylinder and extending to a
water table;
a lower support structure located within the outer cylinder;
an inner cylinder supported by the lower support structure; and
a canister located within the inner cylinder
wherein the inner cylinder is operable to permit the transmission of
electromagnetic energy to a material contained within the canister.

The Examiner relies on the following references in rejecting the
appealed subject matter:

Vanderklaauw US 5,575,591 Nov. 19, 1996
Botzem US 5,920,602 Jul. 6, 1999
Schutz US 6,156,969 Dec. 5, 2000

The Examiner entered the following grounds of rejection:
I. Claims 1-18 stand rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in such a way as to
enable one skilled in the art to make and/or use the invention.
II. Claims 1-18 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
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III. Claims 1-7 and 11-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Botzem and Schutz.
IV. Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Botzem, Schutz, and Vanderklaauw.
I. Claims 1-18 stand rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in such a way as to
enable one skilled in the art to make and/or use the invention.
The issue presented is: Has the Examiner established that the subject
matter of claims 1-18 does not meet the enablement requirements of
35 U.S.C. § 112, first paragraph? We answer this question in the negative.
The Examiner contends that the Specification does not have an
enabling disclosure for the subject matter of claims 1-18. Specifically, the
Examiner states, “[t]he claims are supported by the specification that
contains subject matter which was not described 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. The specification recites
questionable terms such as ‘alchemic transition unit’, ‘device for
transforming abiogenic substances into biogenic substances’, or ‘absorptive
magnetic resonances emitted from the center of the Earth (or from space)
and impinging upon the lower part of the apparatus’, or rotating and charged
magnetic resonances.” (Answer 4).
Regarding claims 15 and 16, the Examiner asserts the claims “recite
means for manipulation and transforming toxic fluids into non-toxic ones.
The specification does not provide the description on how to achieve such a
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transformation, since magnetic resonances in general, and non-existing
charged magnetic resonances 'coming from the center of the Earth' in
particular cannot change chemical structures.” (Answer 4).
The first paragraph of 35 U.S.C. § 112 requires nothing more than an
objective enablement. In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ
367, 369-70 (CCPA 1971). How such teaching is set forth, either by use of
illustrative examples or by broad terminology, is irrelevant. Id. As those
skilled in the art will appreciate, the Specification provides lists of suitable
materials for forming the transition unit (Specification 5-9). Since
Appellant’s Specification contains a written description of the suitable
materials and their arrangement corresponding with the scope of the claims
on appeal, compliance with the enablement requirement is presumed.
Marzocchi, 439 F.2d at 223-24, 169 USPQ at 369-70.
It is the Examiner’s burden to present adequate basis for doubting the
objective truth of Appellant’s statements in the Specification, i.e., to provide
scientific reasoning and/or evidence as to why one of ordinary skill in the art
would not have been able to make and use the full scope of the subject
matter claimed based on the written description of the invention in the
Specification without undue experimentation. Id. On this record, however,
the Examiner has not carried this burden. The Examiner has not proffered
adequate scientific reasoning and/or evidence to doubt the accuracy of
Appellant’s statements in the Specification. (Answer 3-6). The Examiner
has not adequately considered and explained, inter alia, the state of the prior
art, the nature of the invention, the working examples and the amount of
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guidance presented in the Specification. See, e.g., In re Wands, 858 F.2d
731, 735-37, 8 USPQ2d 1400, 1402-04 (Fed. Cir. 1988).
Accordingly, we are constrained to reverse the Examiner’s 35 U.S.C.
§ 112, first paragraph, rejection of claims 22, 23, 26, 27, and 30-32 as
lacking an enabling disclosure for the subject matter presently claimed.
II. Claims 1-18 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
The first issue presented is: Has the Examiner established that the
subject matter of claims 1-16 does not meet the requirements of 35 U.S.C.
§ 112, second paragraph? We answer this question in the negative.
The Examiner contends that the subject matter of claims 1-16 is
indefinite in scope because “[i]t is not clear from the claims what structural
elements of the claimed device would ensure the proper transmission [of
electromagnetic energy].” (Answer 4).
“The legal standard for definiteness [under the second paragraph of
35 U.S.C. § 112] is whether a claim reasonably apprises those of skill in the
art of its scope” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
1759 (Fed. Cir. 1994). The inquiry is to determine whether the claim sets
out and circumscribes a particular area with a reasonable degree of precision
and particularity. The definiteness of the language employed in a claim
must be analyzed not in a vacuum, but in light of the teachings of the
particular application. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971).
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After consideration of the present record, we determine that a person
of ordinary skill in the art would have realized, just as the Examiner in the
statement of the rejection, that materials transmit electromagnetic energy.
(Answer 4). The Specification includes lists of representative materials
suitable for use in the invention. (Specification 5-7). There is nothing
inherently wrong with defining some part of an invention in functional terms
or based upon specified properties. The identification of properties and
functional language does not, in and of itself, render a claim improper. In re
Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971). Thus, we
determine that the claims reasonably apprise those of ordinary skill in the art
of their scope. Accordingly, we reverse the Examiner’s § 112, second
paragraph, rejection of claims 1-16 as indefinite.
The second issue presented is: Has the Examiner established that the
subject matter of claims 17 and 18 does not meet the requirements of
35 U.S.C. § 112, second paragraph? We answer this question in the
affirmative.
We affirm the rejection of claims 17 and 18 for the reasons set forth in
the answer. The Examiner notes that the Specification only includes the
capital “K” designation in the formula (Specification [0023]). The Appellant
has failed to specifically address the Examiner's criticism of the formula
presented in claims 17 and 18. Accordingly, we affirm the Examiner’s §
112, second paragraph, rejection of claims 17 and 18.
III. Claims 1-7, and 11-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Botzem and Schutz.
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Appellant contends that neither Botzem nor Schutz suggest the
structure as recited in claim 1. Appellant contends that Botzem and Schutz
fail to disclose that the grounding members extended to a water table.
Appellant further contends that Botzem and Schutz are silent with respect to
the unit or device being operable to prevent the transmission of
electromagnetic energy to a material contained within the canister. (Br. 10-
11).
The Examiner contends that Botzem describes a storage facility that
that meets the claimed invention except for the presence of grounding
members. The Examiner contends Schutz discloses a transport and storage
container that comprises grounding members. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art to employ
grounding members in the apparatus of Botzem. (Answer 6-7).
Accordingly, the issues presented on the record in this appeal are as
follows: (1) do Botzem and Schutz disclose, teach, or suggest an apparatus
that meets the claimed transition unit? and (2) has the Examiner presented an
explicit analysis of the reasons for including grounding members in the
apparatus of Botzem?
We determine that the Examiner has established a prima facie case of
obviousness in view of the referenced evidence, which prima facie case has
not been adequately rebutted by Appellant’s arguments. Therefore, we
AFFIRM the § 103 rejection presented in this appeal essentially for the
reasons stated in the Answer, as well as those reasons set forth below.
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
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differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. Graham v.
John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). “[A]nalysis
[of whether the subject matter of a claim is obvious] need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007) quoting In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); see also
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006) (“The motivation
need not be found in the references sought to be combined, but may be
found in any number of sources, including common knowledge, the prior art
as a whole, or the nature of the problem itself.”); In re Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549 (CCPA 1969) (“Having established that this
knowledge was in the art, the examiner could then properly rely, as put forth
by the solicitor, on a conclusion of obviousness ‘from common knowledge
and common sense of the person of ordinary skill in the art without any
specific hint or suggestion in a particular reference.’”); In re Hoeschele, 406
F.2d 1403, 1406-07, 160 USPQ 809, 811-812 (CCPA 1969) (“[I]t is proper
to take into account not only specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom . . . .”). The analysis supporting obviousness, however, should be
made explicit and should “identify a reason that would have prompted a
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person of ordinary skill in the art to combine the elements” in the manner
claimed. KSR, 127 S.Ct. at 1731, 82 USPQ2d at 1389.
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness. This case of prima facie obviousness has
not been adequately rebutted by Appellant’s arguments.
Appellant argues that the structure of Botzem does not contain
grounding members connected to the outer cylinder that extend into a water
table. (Br. 10). Appellant also argues that Schulz fails to disclose grounding
members that extend into a water table. (Br. 11). Appellant has not disputed
that it would have been obvious to include grounding members in the
apparatus of Botzem as suggested by the Examiner. Rather, Appellant’s
arguments are directed to the location of the described apparatus. These
arguments are not persuasive because they do not establish a non-obvious
structural difference from the cited prior art.
Appellant argues that both Botzem and Schulz are silent with respect
to the device as “being operable to permit the transmission of
electromagnetic energy.” (Br. 11). It is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a
previously known composition, even when that property and use are
unobvious from prior art, can not impart patentability to claims to the known
composition."); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA
1962) (statement of intended use in an apparatus claim failed to distinguish
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over the prior art apparatus). Appellant has not argued that the materials
which formed the device disclosed by Botzem and Schulz are not suitable
for transmission of electromagnetic energy. Appellant’s arguments (Br. 11)
regarding the location of the device in proximity to a water table are not
persuasive because the location of the device does not establish a structural
difference.
As to claims 2-6 and 11-16, Appellant repeats his arguments
regarding the device being operable from the transmission of
electromagnetic energy. (Br. 11-16). These arguments are not persuasive
for the reasons set forth above.
IV. Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Botzem, Schutz, and Vanderklaauw.
The Examiner contends that a person of ordinary skill in the art would
have readily recognized that wings, flanges and centerlines are known means
of alignment and support. In support of his position the Examiner cites the
Vanderklaauw reference. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art to employ known means for
alignment and support in the device suggested by Botzem and Schulz
(Answer 8).
Appellant has failed to contest the Examiner’s reasoning for citing the
Vanderklaauw reference. Rather, Appellant repeats his arguments
regarding the device being operable from the transmission of
electromagnetic energy. (Br. 17-18). These arguments are not persuasive
for the reasons set forth above.
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CONCLUSION
The rejection of claims 1-18 under 35 U.S.C. § 112, first paragraph
has been reversed.
The rejection of claims 1-16 under 35 U.S.C. § 112, second paragraph
has been reversed.
The rejection of claims 17and 18 under 35 U.S.C. § 112, second
paragraph has been affirmed.
The rejection of claims 1-7 and 11-16 under 35 U.S.C. § 103(a) as
unpatentable over Botzem and Schutz has been affirmed.
The rejection of claims 8-10 under 35 U.S.C. § 103(a) as unpatentable
over Botzem, Schutz, and Vanderklaauw has been affirmed.
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)( 2006).

AFFIRMED

sld/ls

DOUGLAS P. LALONE, ESQ.
WARN, BURGESS & HOFFMANN, P.C.
P.O. BOX 70098
ROCHESTER HILLS, MI 48307

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