12501445 (P.T.A.B. Apr. 11, 2016)

Ex Parte Trimberger

Patent Trial and Appeal BoardApr 11, 2016

12501445 (P.T.A.B. Apr. 11, 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. 12/501,445 07/12/2009 Stephen Trimberger 4396 7590 04/12/2016 Stephen Trimberger 1261 Chateau Dr San Jose, CA 95120 EXAMINER BERGIN, JAMES S ART UNIT PAPER NUMBER 3641 MAIL DATE DELIVERY MODE 04/12/2016 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 STEPHEN TRIMBERGER ____________________ Appeal 2014-004482 Application 12/501,445 Technology Center 3600 ____________________ Before EDWARD A. BROWN, GEORGE R. HOSKINS, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 2–9, 21 and 25.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Claims 10–12, 14, 15, 18–20, 23 and 24 have been withdrawn from consideration. Final Act. (Office Action Summary). Appeal 2014-004482 Application 12/501,445 2 THE CLAIMED SUBJECT MATTER Claim 2, reproduced below, is the only independent claim on appeal. 2. An apparatus for cooling a planet, comprising: a first explosive located at a site, the explosive configured to generate a dust cloud and configured to generate an updraft for lifting the dust cloud into the atmosphere of the planet, wherein the site is located away from populated areas and valuable property; a decision system coupled to a detonator configured to detonate the first explosive; and a measurement device, coupled to the decision system, the measurement device configured to determine the amount of light energy reaching the surface of the planet, the output of the measurement device coupled to the decision system, and wherein the decision system controls the detonation of the explosive. REJECTION Claims 2–9, 21 and 25 are rejected under 35 U.S.C. §112, first paragraph, for failing to comply with the written description requirement. Final Act. 2. DISCUSSION 35 U.S.C. §112 First Paragraph-Written Description Rejection The first paragraph of 35 U.S.C. §112 requires that the “specification shall contain a written description of the invention.” The written description requirement is separate from the enablement requirement of the first paragraph of 35 U.S.C. §112. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that applicant was in possession of the claimed invention when the Appeal 2014-004482 Application 12/501,445 3 application was filed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). “[T]he written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). Claim 2 recites, inter alia, an apparatus comprising a first explosive, a decision system coupled to a detonator, and a measurement device to measure light energy reaching the surface of the planet and coupled to the decision system to control the detonation of the explosive. The Examiner does not show that these claimed features are not described in the original disclosure. In fact, we note that Appellant’s specification describes an explosive (¶6, 8, 19), a measurement device (¶23) and a decision system (Id.). The specification, thus, contains sufficient written description that would “allow one skilled in the art to visualize or recognize the identity of the subject matter” recited in claim 2. Enzo Biochem, 323 F.3d at 968. Further, the Examiner does not identify any subject matter recited in any one of dependent claims 2–9, 21 and 25 that is not supported by written description in the original disclosure. Consequently, we do not sustain the Examiner’s rejection of claims 2–9, 21 and 25 under 35 U.S.C. §112, first paragraph, for failure to comply with the written description requirement. New Grounds of Rejection-Lack of Enablement and Lack of Utility Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter NEW GROUNDS OF REJECTION against claims 2–9, 21 and 25 (1) under 35 Appeal 2014-004482 Application 12/501,445 4 U.S.C. §112, first paragraph, for lack of enablement, and (2) under 35 U.S.C. §101 for lack of utility. In order for the specification to be enabling, it “must adequately disclose the claimed invention so as to enable a person skilled in the art to practice the invention at the time the application was filed without undue experimentation.” In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000) citing, Enzo-Biochem, Inc. v Calgene, Inc., 188 F.3d 1362, 1371–72 (Fed. Cir. 1999). The purpose of the utility requirement of 35 U.S.C. §101 is to limit patent protection to inventions that possess a certain level of “real world” value. In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). A rejection under 35 U.S.C. §101 for lack of utility is tantamount to a rejection under the how-to-use provision of the enablement clause of the first paragraph of 35 U.S.C. § 112. In re Fouche, 439 F.2d 1237, 1243 (CCPA 1971) (“[I]f such compositions are in fact useless, appellant’s specification cannot have taught how to use them.”). As such, the lack of utility because of inoperativeness (a question of fact), and the absence of enablement (a question of law) are thus closely related grounds of unpatentability. In re Swartz, 232 F.3d at 863; see also Newman v Quigg, 877 F.2d 1575, 1581 (Fed. Cir. 1989). The claimed invention must have “a specific and substantial utility to satisfy § 101.” In re Fisher, 421 F.3d at 1371. The substantial utility requirement means that 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. Simply put, to satisfy the “substantial” utility requirement, an asserted use must show that the claimed invention has a significant and presently available benefit to the public. Id. Appeal 2014-004482 Application 12/501,445 5 We begin with a review of Appellant’s specification. The specification refers generally to explosives (¶¶6, 18, 19), but fails to provide any details of the required configuration of the explosive “to be configured to generate a dust cloud and configured to generate an updraft for lifting the dust cloud into the atmosphere of the planet,” as recited in claim 2. For example, there is no specific guidance concerning how the explosive would need to be “configured” in regard to its explosive power to achieve the claimed effects for any specific “site” on a planet. The specification also refers to a measurement device that “measures solar radiation that penetrates the atmosphere . . . [and] may measure temperature or light intensity or light spectrum.” Spec. ¶0023. However, there are no details in the disclosure of the amount of light energy that, if determined, would cause the decision system recited in claim 2 to detonate the first explosive. Based on this lack of disclosure, we find that the specification does not disclose a “substantial” utility for the apparatus recited in the claims under review. In our view, the invention disclosed in the specification represents an idea or concept and is simply a starting point for further research. Consequently, we find that the claimed invention lacks the utility required by 35 U.S.C. §101. Consistent with this finding, we also conclude that the specification fails to “enable a person skilled in the art to practice the invention at the time the application was filed without undue experimentation.” In re Swartz, 232 F.3d at 863. Appellant submitted several pages of data in support of this appeal. Appeal Br. 11–14. Appellant admits he has not tested or performed computer simulations of the claimed apparatus. Id. at 4. Appellant explains Appeal 2014-004482 Application 12/501,445 6 that the data is not only “from the simulations of Turco et. al., but also from the large volcanic eruptions, which are not part of Turco’s data. Appendix C and D are not simulation data but design data derived, in part from simulation results.” Id. None of this data appears in Appellant’s specification. Further, the record does not contain an affidavit or declaration attesting to this data as required by 37 CFR §1.132. Despite these deficiencies, we have reviewed the data. We note that the underlying work of Turco and the work relating to large volcanic eruptions is not of record and, consequently, Appellant does not establish with evidence that this data was even available at the time Appellant’s application was filed. Further, based on the present record, we are also unable to determine the meaning or significance of the various entries on the charts and tables presented in Appendices C & D, and most importantly how those entries may even relate to the apparatus recited in the claims. This data, thus, does not provide persuasive evidence of utility or enablement of the claimed invention. DECISION The Examiner’s decision rejecting claims 2–9, 21 and 25 is REVERSED. We enter a new ground of rejection of claims 2–9, 21 and 25 under 35 U.S.C. §101 for lack of utility. We also enter a new ground of rejection of claims 2–9, 21 and 25 under 35 U.S.C. §112, first paragraph, for lack of enablement. 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.” Appeal 2014-004482 Application 12/501,445 7 Section 41.50(b) further provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THIS 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 proceeding will be remanded to the Examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)