Ex Parte ZAUDERER

Patent Trial and Appeal Board

Nov 19, 2018

13584574 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/584,574 08/13/2012
25570 7590 11/21/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
Bert ZAUDERER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3923-40006 6738
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
11/21/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lga11augher@rmsc2.com
docketing@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERT ZAUDERER
Appeal2018-008255
Application 13/584,574
Technology Center 3600
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection 1 of claims 1--4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, 2 and designate our affirmance of claims 1 and 2 under
35 U.S.C. § 112, first paragraph (enablement), and claims 1--4 under
1 Appeal is taken from the Final Office Action dated November 24, 2017.
2 See 37 C.F.R. § 41.50(a)(l) ('"The affirmance of the rejection of a claim on
any of the grounds specified constitutes a general affirrnance of the decision
of the examiner on that claim, except as to any ground specifically
reversed.").
Appeal2018-008255
Application 13/584,574
35 U.S.C. § 112, second paragraph (indefiniteness), as NEW GROUNDS
OF REJECTION pursuant to our authority under 37 C.F.R. § 4I.50(b).
STATEMENT OF THE CASE
The present invention relates to
one-month long rocket missions by Astronauts from Earth orbit
to a Mars landing that is powered by a gas-cooled nuclear reactor
followed by beryllium fuel that reacts with oxygen from
dissociated water to form BeO droplets that heat hydrogen from
dissociated water in a cyclone combustor to 6000QK,[ ]followed
by alkali seeding to render the gas electrically conducti[ ve] as it
flows through an MHD generator-accelerator to propel the rocket
to speeds much beyond attainable by gas dynamic thrust.
Spec. 1: 10-16. Claim 1, reproduced below as the sole independent claim on
appeal, is exemplary of the subject matter on appeal.
1. A method of earth orbit to a planetary landing, round trip
mission with astronauts taking off in about 500,000 pound
weight rocket ship that travels a direct about 7 5 million kilometer
path in about 39 days, comprising:
thrusting a rocket from on-board pressurized water first
heated in a 3000QK pebble bed nuclear reactor;
followed by complete dissociation of the water into
oxygen that reacts with beryllium powder thereby forming
beryllium oxide liquid droplets in a slagging combustor;
heating dissociated hydrogen from the water to 6000QK
which expands in a gas dynamic nozzle that is seeded with an
alkali metal from O .1 % to 1 % to render the gas electrically
conducting as it flows through a magnetohydrodynamic (MHD)
generator channel that is co-axially attached to a MHD
accelerator that is co-axially attached to an expanding co-axial
channel; and
exhausting the gas into Space from the expanding co-axial
channel.
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Application 13/584,574
THE REJECTIONS 3
I. Claims 1--4 stand rejected under 35 U.S.C. § 101 as
unsupported by either credible asserted or well-established utility.
II. Claims 2--4 stand rejected under 35 U.S.C. §§ 101 as being
directed to more than one of the four statutory subject matter categories.
III. Claims 1--4 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
IV. Claims 1--4 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
V. Claims 1--4 stand rejected under 35 U.S.C. § 112, second
paragraph, for being indefinite. 4
VI. Claim 1 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Zauderer '722 (US 4,851,722; issued July 25, 1989)
Zauderer '543 (US 8,277,543 B2; Oct. 2, 2012), and "How Long Does It
Take to Get to Mars," by Nola Redd, Space.com, February 13, 2014
(hereinafter "Redd").
ANALYSIS
Rejections I & II
The Examiner determines that
3 The Final Office Action also includes an objection to the Specification.
Final Act. 3. Objections to the Specification are petitionable, not appealable,
matters.
4 This rejection includes a rejection of all of the claims as being unclear, a
rejection of all of the claims as being incomplete for omitting essential steps,
a rejection of claims 2--4 as being directed towards more than one statutory
category, and a rejection of claim 4 as indefinite for the reasons stated in the
Non-Final Office Action dated May 10, 2017 (seep. 23, "Section 35").
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[ claims 1 to 4 and the Specification] appear to present a method
of traveling a 7 5 million kilometer path ( from Earth to Mars) in
a manned spacecraft in a 39 day period and then returning. Such
a trip requires the craft to travel at an average speed of about
80,000 kilometers per hour (kph). As this is a shorter time span
than any previous unmanned trip to Mars and additionally would
require a spacecraft faster than any other previous launched from
Earth, the invention is not supported by a credible or well-
established utility.
Final Act. 4.
The Examiner also determines that the claimed invention "do[ es] not
account for weight of the craft" and that "the claimed craft would require
thrust magnitudes greater than previously accomplished to get to speeds
faster than 80,000 kph," which "would be harmful to the human body and
therefore prevent a manned mission." Id. at 4--5. In support, the Examiner
determines that "[ m Jore than just theoretical calculations are required to
assert that the claimed utility of the fastest to date space travel is credible,"
and that known spacecraft (i.e., "the New Horizons spacecraft") "only
weighed 1000 lbs. as compared to the claimed 500,000 lbs. craft," and thus,
"[t]he thrust required would be magnitudes greater than used before to
establish an over 80,000 kph speed and therefore the utility of space travel at
these speeds is not credible or well-established." Ans. 4. The Examiner
determines that previous exposure to high thrusts forces "was for a period of
0.04 seconds" and that "[t]o reach the speeds required for the trip claimed a
longer period of time exposed to these high forces would be required." Id. at
4--5; see also Final Act. 5 (quoting Bruce Thompson of NASA Quest, and
the article by Andrew Tarantola, "Why the Human Body Can't Handle
Heavy Acceleration," gizmodo.com, 10/1/2014).
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Application 13/584,574
Appellant argues that "this is exactly the point of the invention: to
provide increased speeds which were previously unattainable." Br. 5.
Appellant submits that "the claimed invention uses most of the hydrogen
energy to propel the rocket, which enables velocities far above those
attainable with a nuclear rocket alone," and thus, "the claimed invention
enables speeds may times faster than with a nuclear thermal rocket" and also
that "the MHD propulsion can provide a factor of ten higher thrust, and
thereby drastically shorten the voyage by replacing the elliptic rocket
trajectories with direct radial interplanetary trips." Id. at 5-6 (citing Spec.,
p. 61; Redd).
Appellant submits that the calculations resulting in a 39-day mission
"take into account the weight of the craft," and thus, "the claimed invention
is supported by a credible and well-established utility." Br. 6. In support,
Appellant relies on disclosures from the Specification that "the claimed
invention uses a metal fuel combined with water and part hydrogen to
reduce the rocket ship size by a factor often." Id. (citing Spec., pp. 81, 101,
107); see also id. at 5 ( explaining that "MHD cuts the Mars rocket weight in
half' and that "using water in the rocket ... cuts the rocket weight to 10% of
NERV A"5). Appellant also submits that, as disclosed in the Specification,
"the calculated weight is 25% of the original NERV A takeoff weight" and
that "using initial thrust with an orbit velocity of 17 ,5000 [ sic, 17,500] mph
in the direction of Mars reduces the required additional thrust velocity for
5 The Specification use of the term "NERV A" is disclosed with reference to
"NASA's 1960s NERVA 3000QK nuclear, multi-stage hydrogen rocket
program," which was "terminated in the early 1970s." Spec., p. 2.
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the 39 days Mars transit from 49,790 mph ... to 32,790 mph." Id. at 6
(citing Spec., p. 101).
Appellant further argues that "neither the Tarantola article nor the
Examiner provides a limit to the acceleration that would be harmful to the
human body" and that "the initial thrust is 17,500 mph, which is less than
NASA's Apollo 10 mission." Br. 6. Appellant submits that "[t]he Tarantola
article states that humans have survived acceleration forces up to 8-g in a
spacecraft and 83-g on the Daisy Accelerator," and that "even at the
additional thrust velocity of 32,790 mph, the claimed invention would not
prevent a manned mission due to the greater thrust force required." Id. at 7.
Thus, Appellant argues that the Examiner's determination that the high
thrust renders the invention lacking in utility is conclusory.
An examiner has the initial burden of setting forth a reason to doubt
an appellant's presumptively correct assertion of utility. In re Swartz, 232
F.3d 862, 864 (Fed. Cir. 2000). "The PTO may establish a reason to doubt
an invention's asserted utility when the written description 'suggest[s] an
inherently unbelievable undertaking or involve[ s] implausible scientific
principles."' In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999)
(alterations in original) (quoting In re Brana, 51 F.3d 1560, 1566 (Fed. Cir.
1995)). The examiner must present evidence necessary to establish a reason
for one of ordinary skill in the art to question the objective truth of the
statement of utility. Swartz, 232 F.3d at 864.
On the record before us, the Examiner fails to support, with sufficient
evidence, the Examiner's determination that the claimed subject matter lacks
a credible and well-established utility. Although the Specification's
calculations are theoretical, the Examiner has not explained sufficiently why
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the calculations, as disclosed in the Specification, involve implausible
scientific principles. As detailed above, the Examiner's rejection centers on
the Specification's asserted failure to account for the weight of the ship. As
noted by Appellant, however, the Specification discloses that high specific
impulse6 and high total thrust are indeed implemented by the invented rocket
ship, which purposefully reduces the size of and accounts for the weight of
the ship. See, e.g., Spec. 2:26-28 (disclosing that "[t]he present invention's
added thrust from 6000QK Be combustion and a 10 times smaller rocket by
replacing the huge H2 'thermos bottle' [ofNASA'S 1960s NERVA rocket]
with water will increase the specific impulse to 1600 seconds [to] enable[] a
direct, 75 million kilometer path to Mars in 1 month"). We agree with
Appellant that the Tarantola article fails to establish by a preponderance of
evidence that the claimed method is to such a great extent harmful to the
human body so as to render the utility of the invention not credible; rather,
the Examiner's determination is conclusory.
The Examiner also determines that dependent claims 2--4 "are
directed towards more than one of the four statutory subject matter
categories"; for example, claim 1 is directed to a process, while claims 2--4
do not provide further steps, but rather "describe a machine." Final Act. 5.
However, we do not agree with the Examiner that the inclusion of structural
and functional limitations within the methods recited in claims 2--4 remove
claims 2--4 from the statutory category of a claimed method.
6 The Specification discloses that "[ t ]he common way of stating the use of
rocket propulsion systems has been the 'Specific Impulse' (SI) function,
which is a measure of the thrust of the vehicle, and it is expressed in
'seconds'. The term equals the thrust of a rocket divided by the mass of fuel
ejected to drive the rocket." Spec. 24:7-10.
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Accordingly, we do not sustain the Examiner's rejections of claims 1-
4 under 35 U.S.C. § 101.
Rejection III
Regarding claims 1 to 4, the Examiner finds that "a person skilled in
the art would be required to perform undue experimentation to create an
apparatus that would be capable of performing the claimed earth orbit, 7 5
million kilometer interplanetary trip in 39 days, planetary landing, and then
return to Earth (a 75 million kilometer return trip)." Final Act. 6. The
Examiner explains that although the Specification "gives examples of
calculations for theoretical launches of spacecraft," the Specification "does
not detail how the claimed steps would be performed, or how the [ claimed]
steps ... are commensurate with the invention as set forth in the preamble of
the claims." Id. The Examiner determines that "the state of this art has not
accomplished the claimed speeds and forces required for such a mission [ as
set forth in the preamble of claim 1] and would require a great deal more
direction than that provided by the inventor to make and use the claimed
invention." Id.
The Examiner also determines that "the spacecraft [ as claimed and
disclosed in the Specification] is essentially a black box with no description
of the internals thereof." Final Act. 7. More specifically, the Examiner
determines that the Specification is "insufficient in failing to set forth in an
adequate and sufficient fashion, a description of the internals of the craft
which would enable the device to perform all of the features (i.e., thrusting a
rocket, landing, manned space travel, etc.) that are disclosed and claimed."
Id. ( emphasis added).
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The Examiner further determines that although the Specification states
that "[ t ]his invention discloses methods and processes by which energy is
transferred directly in one step from the outlet of a high temperature metal
fuel or nuclear heat source to its end use for propulsion or electric power
generation," the Specification "provides no evidence ... of any measurable
energy production through this process via the claimed device and method."
Final Act. 7 (quoting Spec., p. 5). The Examiner concludes that "the
generation of electrical power with an MHD generator is akin to 'cold
fusion,"' which represents an unproven technology. Id. at 7-14. In support,
the Examiner states that "[the Specification] contains assumptions and
speculation as to how and in what manner, his invention will operate.
However, [Appellant] has presented no reputable factual evidence to support
his assumptions and speculation regarding a reproducible, sustainable excess
heat (cold fusion) and low temperature reactions." Id. at 11. The Examiner
concludes that "[ m ]uch like the unproven concept of cold fusion[,]
[Appellant] has not set forth any credible evidence to support the enablement
or utility of the claimed MHD generator." Id. at 13. The Examiner relies on
In re Dash, 118 F. App'x 488 (Fed. Cir. 2004). Final Act. 8-10.
Appellant disagrees, arguing that the Specification "provides the
details required for a person skilled in the art to build the claimed invention
without undue amount of experimentation." Br. 7. Appellant provides
support for the enablement of the claims on pages 27-33 of the Appeal Brief
( citations to the Spec. omitted). Appellant argues that "the Examiner has not
even construed the claims to provide an explanation as to why the scope of
protection is not enabled," but rather, "the Examiner has only provided
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Application 13/584,574
conclusory and incorrect statements." Id. at 33. Regarding the Examiner's
reference to cold fusion, Appellant submits that
[unlike] the cold fusion concept[,] which was not confirmed by
laboratory experiments, the claimed invention has substantial
test results which provides sufficient evidence of enablement of
the MHD generator and accelerator such that one of ordinary
skill in the art would be enabled to make and use the claimed
invention of MHD generation without undue experimentation.
Id. at 26 ( emphasis added).
The Examiner responds that the experiments and documents relied on
by Appellant "were not provided to the [E]xaminer" and "therefore the
validity of the[] statements cannot be verified." Ans. 5---6.
Enablement is a legal determination of whether a patent enables one
skilled in the art to make and use the claimed invention. Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). As
determined by our reviewing court,
The enablement requirement ensures that the public knowledge
is enriched by the patent specification to a degree at least
commensurate with the scope of the claims. The scope of the
claims must be less than or equal to the scope of the enablement.
The scope of enablement, in tum, is that which is disclosed in the
specification plus the scope of what would be known to one of
ordinary skill in the art without undue experimentation.
National Recove,y Techs., Inc. v. lviagnetic Separation S:vs., Inc., 166 F.3d
1190, 1195-96 (Fed Cir. 1999). Further, enablement is not precluded by the
necessity for some experimentation, as long as the amount of
experimentation is not undue. See In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988). Factors to be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
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necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Id.
First, as to the scope of the claims, we determine that the preamble of
independent claim 1 is not entitled to patentable weight, 7 and therefore, the
scope of the method recited in claim 1 is limited to the steps recited in the
body of the claim alone. Generally, a preamble is not limiting where an
applicant defines a structurally complete invention in the claim body and
uses the preamble only to state a purpose or intended use for the invention.
See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Here, as we construe
independent claim 1, the body of the claim discloses a method for thrusting a
rocket, comprising the steps of (i) first heating on-board pressurized water in
a 3000QK pebble nuclear reactor; (ii) then, completely dissociating the water
into oxygen that reacts with beryllium powder thereby forming beryllium
oxide liquid droplets, in a slagging combustor; (iii) then, heating hydrogen
dissociated from the water to 6000QK (in the slagging combustor); 8 (iv)
7 Cf Dash, 118 F. App'x at 490-91 (determining that "the Board properly
considered the preamble in its construction of the appealed claims," because
"Dash's use of the concept of 'producing heat energy,' a feature found only
in the preamble of the appealed claims, to distinguish prior art supports
construing the preamble as a limitation, or at least as 'context' for the
interpretation of the claims" ( citations omitted)). Here, Appellant has not
relied on the preamble to distinguish the claims from the prior art, nor is the
preamble necessary to define the method of thrusting a rocket, as claimed,
as further discussed in our Decision.
8 The Specification discloses that water and steam exit the nuclear reactor,
such that the hydrogen is both dissociated from the water ( and steam) and
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expanding the dissociated hydrogen in a gas dynamic nozzle that is seeded
with an alkali metal from O .1 % to 1 % to render the gas electrically
conducting as it flows through an MHD generator channel that is coaxially
attached to an MHD accelerator that is co-axially attached to an expanding
co-axial channel; and ( v) then, exhausting the gas into Space from the
expanding co-axial channel. We determine that the preamble of claim 1,
which recites, in relevant part, as set forth supra, "[a] method of earth orbit
to a planetary landing, round trip mission with astronauts taking off in about
500,000 pound weight rocket ship that travels a direct about 75 million
kilometer path in about 39 days," is a statement of the intended use of the
claimed method of thrusting a rocket, and is not required to provide a limit
to the scope of the steps of the claimed method. Notably, the recited claim
term "a rocket" does not rely on antecedent basis in the preamble of the
claim and is distinct from the claim term "rocket ship," which is recited in
the preamble of claim 1.
Thus, the Examiner's determination that a person skilled in the art
would be required to perform undue experimentation "to create an apparatus
that would be capable of performing the claimed earth orbit, 75 million
kilometer interplanetary trip in 39 days, planetary landing, and then return to
Earth (a 75 million kilometer return trip)," as set forth supra, does not
address the correct scope of the invention requiring enablement.
heated in the slagging combustor. See, e.g., Spec. 2:9--13 (describing that
water is "loaded in the rocket and compressed and heated in the nuclear
reactor ... followed by further heating of the steam by beryllium particles
reactions to release the 0 2 and H2 by non-equilibrium dissociation of the
water in a pre-combustion chamber").
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Regarding the Examiner's determination that "the spacecraft is
essentially a black box with no description of the internals thereof," as set
forth supra, the Examiner does not sufficiently support this conclusory
statement. To the contrary, the Specification discloses details for (i) heating
an on-board pressurized water in a 3000QK pebble nuclear reactor (see, e.g.,
Spec. 10: 15-17, Fig. 2 ( depicting "a space based pebble bed nuclear reactor
in a rocket into which water and on-board liquid hydrogen are injected to be
heated up to 3000QK")); 9 (ii) completely dissociating the water into oxygen
that reacts with beryllium powder thereby forming beryllium oxide liquid
droplets in a slagging combustor (see, e.g., id. at 2:9-16 (disclosing "further
heating of the steam by beryllium particles reactions to release the 0 2 and H2
by non-equilibrium dissociation of the water in a pre-combustion chamber");
23:3--4 (incorporating U.S. Patent No. 4,851,722 by reference into the
Specification for disclosing "[ m ]etal particle combustion as a MHD
generator heat source"); Fig. 1 ); (iii) heating hydrogen dissociated from the
water to 6000QK (see, e.g., Spec. 27:4--8 (disclosing that "[o]ne reason for
using metals is to overcome the limitations in a solid nuclear reactor to
transfer heat to a gas," and also that "with metals, such as beryllium, comes
the ability to achieve stagnation gas temperatures up to 6000QK"); 38:3-18
( disclosing calculations relating to "the incremental heat into H2 from
3000QK to 6000QK"); Fig. 1); (iv) expanding the dissociated hydrogen in a
gas dynamic nozzle that is seeded with an alkali metal from 0.1 % to 1 % to
9 Cf Zauderer '543, 13:45--48 (disclosing that Figure 3 depicts "the falling
pebble bed heat exchangers, which are to be used in the fossil fuel heat
MHD power plant," wherein "[a] nuclear heat source will use a stationary
pebble bed inside the nuclear reactor"); Fig. 3 ( depicting a similar "Pebble
Bed Nuclear Reactor" as depicted in Figure 2 of Appellant's Specification).
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render the gas electrically conducting as it flows through an MHD generator
channel that is coaxially attached to an MHD accelerator that is co-axially
attached to an expanding co-axial channel (see, e.g., id. at 6:23-7:2
( disclosing that advantages of the claimed invention are to seed the working
gas (i.e., H2) with a low ionization alkali metal (i.e., cesium) and expand the
gas through a subsonic MHD generator); 7: 14--20 ( disclosing that "the
hydrogen for outer space use is seeded with an alkali metal powder,
preferably cesium, to temperatures of at least 2000QK ... in order to
thermally ionize the cesium as well as to additionally ionize the cesium by
non-equilibrium electron heating by the induced electric field by Faraday's
Law inside [an MHD] generator and MHD accelerator, which results in an
electric conductivity that is high enough when combined with the applied
magnetic field to power outer space transport systems")); and (v) exhausting
the gas into Space from the expanding co-axial channel (see, e.g., id. at Fig.
1 (depicting the hydrogen (i.e., "(4)") being exhausted into Space)). The
Examiner has not explained how such detailed descriptions of the method
steps of thrusting a rocket, as recited in claim 1, are the equivalent of a black
box.
Regarding the Examiner's determination that the Specification
"provides no evidence ... of any measurable energy production through this
process via the claimed device and method," as set forth supra, we
determine that although the Specification discloses theoretical assumptions
and calculations, the Examiner has not provided sufficient evidence as to
why such theoretical assumptions and calculations are based on implausible
scientific principles. Rather, the Specification admits assumptions are made
and provides theoretical support for them. For example, in the section titled,
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"The Critical Role of Electron-Molecule Collisions in MHD Power," the
Specification discloses that "[i]t never occurred to anyone that maybe the
electron-molecule inelastic collision cross-sections were much smaller and
therefore operating the MHD generator at higher gas temperature, non-
equilibrium ionization would be feasible, especially in some bi-atomic
molecules, [ such as] H2." Id. at 17: 18-21. The Specification also discloses
that "the objective of this Invention is to teach how to benefit from MHD for
propulsion in general terms by showing its huge potential," and that "[t]he
details can be computed by those knowledgeable in the subject matter."
Spec. 42:28-30. The Examiner has not identified any of the experimentation
necessary, as admitted by the Specification infra, to practice the invention,
as being undue.
Notwithstanding, "[a] claim which omits matter disclosed to be
essential to the invention as described in the specification or in other
statements of record may be rejected under 35 U.S.C. 112(a) or pre-AIA
35 U.S.C. 112, first paragraph, as not enabling." MPEP § 2172.01 (citing In
re Mayhew, 527 F.2d 1229 (CCPA 1976)); see also MPEP § 2164.08(c) ("In
determining whether an unclaimed feature is critical, the entire disclosure
must be considered."); In re Goffe, 542 F.2d 564, 567 (CCP A 1976)
("[F]eatures that are merely preferred are not critical."). Such essential
matter may include missing elements, steps, or necessary structural
cooperative relationships of elements described by the applicant( s) as
necessary to practice the invention. MPEP § 2172.01.
Appellant's Specification discloses that adding supplemental
hydrogen is an essential step to the embodiment recited in claim 1, which
requires the dissociation of hydrogen and oxygen from an on-board source
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Application 13/584,574
of water, and we find that the essential step of adding supplemental
hydrogen is omitted from claim 1. In particular, the Specification discloses
that "in the 3rd case, water replaces the 02 and some of the H2, and the rest of
liquid H2 is heated in the nuclear reactor and metal fuel combustor to
6000QK and seeded with Cs and flows through the MHD generator and
accelerator." Spec. 83 :22-24 ( emphasis added). The Specification further
instructs that, with respect to Case 3A:
Please note that Figure 1 shows the liquid hydrogen, as opposed
to the H2 from the water, is injected into both the 1st and the 2nd
combustion chamber only where it enters at 3000QK from the
nuclear reactor. This additional H2 is needed because the H2
from the water is inadequate to provide the needed thrust for
power the rocket.
Spec. 106:10-14 (emphasis added). Figure 1 of the Specification is
reproduced below.
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FIG. l
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Figure 1 depicts "(4) HYDROGEN" being added, separately from the
dissociated hydrogen from "(1) WATER FROM NUCLEAR REACTOR,"
into "(A) 1 ST COMBUSTOR STAGE" and "(B) 2ND COMBUSTOR
STAGE." See also Spec. 10: 1-12 (disclosing that "more on board H2 is
injected tangentially in the 2nd chamber to counter the swirl from the 1st
stage swirl, followed by all the hydrogen flowing into a sub-sonic nozzle ...
before exhausting into space").
Additionally, claim 1 omits the essential step of the partial
dissociation of water heated by the nuclear reaction, wherein partially
dissociated water and steam, after heating by the nuclear reactor, flow into a
pre-combustion chamber (for example, water dissociation chamber (F)
depicted in Figure 1). See, e.g., Spec. 2:9-13 (disclosing that when on-board
water is used, "water ... loaded in the rocket and compressed and heated in
the nuclear reactor to 3000QK followed by further heating of the steam by
beryllium particles [sic] reactions to release the 0 2 and H2 by non-
equilibrium dissociation of the water in a pre-combustion chamber, as per
LeChatelier's principles, with further reaction with Be to form BeO"); 10: 1-
15 ( disclosing with reference to Figure 1 that "water is injected into a pre-
combustion cylindrical chamber in which the water is dissociated into
hydrogen and oxygen by LeChatelier's principle in this water dissociation
chamber" and with reference to Figure 2 that "water and on-board liquid
hydrogen are injected [into a space based pebble bed nuclear reactor] and
partially dissociated into H2 and 0 2 before said water and gas flows into the
pre-combustor in figure 1 "); 27: 15-17 ("[ t ]he hot steam-beryllium reactions
will dissociate the water"); 76:27-31 (disclosing that "[t]he first calculations
with equilibrium dissociation of water (i.e., steam) did not result in complete
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dissociation at the 6000QK with 100 atm conditions ... [wherein] [ t ]he
analysis then turned to non-equilibrium dissociation, which combined with
injected beryllium removes the 02 from the water to form BeO thereby
leaving only H/'); Fig. 1 ( depicting "WATER DISSOCIATION" in "(F)
WATER DISSOCIATION CHAMBER," prior to entering "(A) 1 sT
COMBUSTOR STAGE" of the "COMBUSTOR").
Accordingly, we sustain the Examiner's rejection of claims 1 and 2 as
lacking enablement because claims 1 and 2 do not recite the essential step of
adding supplemental hydrogen (cf Br. 61 (Claims App'x) (wherein claim 3
requires "new tangentially injected hydrogen," and claim 4 depends on
claim 3)), and separately, we sustain the Examiner's rejection of claim 1 for
omitting the essential step of at least generating steam and partially
dissociated water (H2 and 02), which has been heated by the nuclear reactor
(cf Br. 61 (Claims App'x) (wherein claim 2 recites the formation of steam
and partial dissociation into H2 and 0 2, and further, wherein claim 3 recites
that partially dissociated water flows into a pre-combustion chamber, and
claim 4 depends from claim 3). We designate our affirmance of the
Examiner's rejection of claims 1 and 2 as a NEW GROUND OF
REJECTION to allow Appellant an opportunity to respond. For the reasons
set forth supra, we do not sustain the Examiner's rejection of claims 3 and 4.
Rejection IV
Regarding claims 1 to 4, the Examiner finds the Specification
"describes theoretical calculations and configurations of a spacecraft" and
that "[ n Jo portion of the [S Jpecification leads the [E]xaminer to believe that
[Appellant] was in possession of the invention as now claimed." Final Act.
14. The Examiner determines that the Specification "does not describe
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actual reduction to practice, does not contain drawings that show the
invention was complete ( only black box drawings ... ) and does not
describe distinguishing identifying characteristics sufficient to show that the
[Appellant] was in possession of the claimed invention." Id. See Br. 34--43
(Appellant identifying written descriptive support in Specification). The
Examiner relies on "Chen, Francis F. ('Introduction to plasma physics',
chapter 6, pages 199-224, published 1974), when speaking ofMHD energy
conversion research," quoting, "It remains to be seen whether a B = 1 plasma
of this type can ever be achieved." Ans. 6.
As discussed supra with respect to enablement, we construe claim 1 to
recite a method for thrusting a rocket, and we do not give the preamble
patentable weight.
First, our reviewing court has made clear that "the written description
requirement does not demand either examples or an actual reduction to
practice; a constructive reduction to practice that in a definite way identifies
the claimed invention can satisfy the written description requirement."
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
( en bane). Further, "the level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology."
Id. at 1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir.
2005)). "The description requirement of the patent statute requires a
description of an invention, not an indication of a result that one might
achieve if one made that invention." Regents of the Univ. of California v.
Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). The court inAriad
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explained that the patent law's intention is not to award patents for academic
theories, even when groundbreaking.
Patents are not awarded for academic theories, no matter how
groundbreaking or necessary to the later patentable inventions of
others. "[A] patent is not a hunting license. It is not a reward for
the search, but compensation for its successful conclusion." Id.
at 930 n.10 (quoting Brenner[ v. Manson], 383 U.S. [519,] 536,
86 S. Ct. 1033[ (1966)]). Requiring a written description of the
invention limits patent protection to those who actually perform
the difficult work of "invention"-that is, conceive of the
complete and final invention with all its claimed limitations-
and disclose the fruits of that effort to the public.
That research hypotheses do not qualify for patent
protection possibly results in some loss of incentive, although
Ariad presents no evidence of any discemable impact on the pace
of innovation or the number of patents obtained by universities.
But claims to research plans also impose costs on downstream
research, discouraging later invention. The goal is to get the right
balance, and the written description doctrine does so by giving
the incentive to actual invention and not "attempt[ s] to preempt
the future before it has arrived." Fiers[ v. Revel], 984 F.2d
[1164,] 1171 [(Fed. Cir. 1993)].
Ariad, 598 F.3d at 1353 (first and fifth alteration in original).
Here, as discussed supra, the Specification discloses more than a
"black box" for establishing that Appellant had possession of the claimed
method for thrusting a rocket, as recited in claim 1. We acknowledge that
the Specification admits that data is required to practice the invention. 1° For
example, the Specification discloses that
10 Spec. 17:4--5 ("to evaluate their potential performance for MHD, the first
step is to obtain accurate electron-molecule collision cross-section data");
17:27-28 ("[t]he purpose of this comment is to emphasize that accurate data
on the collision cross-sections is critical for MHD power applications");
42:28-30 ("[T]he objective of this Invention is to teach how to benefit from
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the advantage of the specifications in the Application is to show
how to practice this invention in a manner that meets this
invention's goal of very high-speed, high-power, high payload
transport systems for use on Earth, the sea, and outer space.
These calculations give a concise top-level view of MHD
operation and avoid complex and detailed calculations in order
to show the range of MHD performances attainable.
Spec. 52: 11-15. Notwithstanding, the Specification provides a written
description detailing the misconceptions of the prior art and the science
supporting the claimed method steps. 11 See, e.g., id. at 69: 18-19 ("The
MHD for propulsion in general terms by showing its huge potential. The
details can be computed by those knowledgeable in the subject matter.");
46:24--26 ("A key new data to be implemented to practice this invention are
the metal fuel fired slagging combustor and the steady state MHD generator
and accelerator to determine their maximum output. This technology can
then proceed quickly to practical power use."); 51 :26-28 ("All this is stated
now because the analytical methods for MHD flow were well known in the
1960s. However, the theories on plasma phenomena and their conclusions
were in error, and the only way to verify the MHD claims herein is by
experiment."); 56:23-24 ("These numbers are to show the range of power
that could be obtained with enhanced conductivity in seeded hydrogen ....
The cost for validating this is minimal."); 93: 10-11 (" Again all these issues
would be resolved with MHD channel tests.").
11 Spec. 2:20-28 (disclosing that a "shortcoming" of "NASA's 1960s
NERVA 3000QK nuclear, multi-stage hydrogen rocket program" was "[a]
thrust that limited the specific impulse to 800 seconds," which dictated "a
semi-elliptical path [to Mars]," wherein "[t]he present invention's added
thrust from 6000QK Be combustion and a 10 times smaller rocket by
replacing the huge H2 'thermos bottle' with water will increase the specific
impulse to 1600 seconds," enabling "a direct, 7 5 million kilometer path to
Mars"); 3: 1---6 ( disclosing that known closed cycle MHD power heated gases
indirectly), as compared to 5:26-28 (disclosing that "[t]his invention
discloses methods and processes by which energy is transferred directly in
one step from the outlet of a high temperature metal fuel or nuclear heat
source to its end use for propulsion or electric power generation"); 6:20-7:2
( disclosing three advantages of the invention (paraphrased): (i) using metal
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present novel technology rests on sound science and is superior and very far
less costly than other publicly revealed energy and propulsion
technologies."). For example, the Specification discloses that "[t]he 1st
objection would be that the MHD accelerator couldn't operate at these high
temperature and non-equilibrium electron conditions," however, according
to Appellant's calculations, "there is no need for non-equilibrium ionization
above the stagnation gas temperature," which is a "totally unexpected
solution," and "[t]he real test will be to run prototype tests that can approach
even a fraction of these conditions." Spec. 98: 13-23.
The Examiner's rejection does not identify, with any particularity, the
claimed method steps that Appellant is lacking possession. On the record
before us, we determine that the Examiner's reliance on an article from 197 4
is simply insufficient to conclude that Appellant's claimed invention is a
oxides to directly heat gases; (ii) seed the working gas to enable electric
power production in an MHD power plant; (iii) utilize a gas-cooled nuclear
reactor to heat on-board water); 11 :24--26 (disclosing that with respect to
using "oxygen as the oxidizer and the alkali metal seeded hydrogen as the
MHD working gas[,] [ n ]either use was even thought of at the time due to
misunderstanding of elevated non-equilibrium, electron quenching by
diatomic molecules"); 11 :27-12:2 ("since nuclear power was considered
banned permanently, no one considered metal fuels could be a means to
prepare for subsequent nuclear powered MHD"); 40: 11-13 ("This
application is totally new because no one thought that nuclear energy could
be augmented with metal fuels to achieve very high equilibrium conductivity
and high non-equilibrium ionization and conductivity to deliver high thrust
from MHD."); 86:7-9 ("the invention teaches the features and the
procedures, not what a particular rocket would looks [sic] like or weigh.
Persons knowledgeable in rocket and MHD technology can implement
decades long established detailed calculations.").
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research hypothesis rather than a complete and final invention, wherein
Appellant had possession of all the claim limitations.
Accordingly, we do not sustain the Examiner's rejection of claims 1--4
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejection V
Indefiniteness is a question of law, subject to underlying facts. Akzo
Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir.
2016) ("Indefiniteness is a question of law that we review de novo, subject
to a determination of underlying facts." (citation omitted)). The PTO can
properly reject a claim as indefinite if the claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear. In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014). During patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed. See In re Zietz, 893 F .2d 319, 321 (Fed.
Cir. 1989). Section 112 places the burden of precise claim drafting on the
applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997). The
Examiner makes several determinations underlying the indefiniteness
rejection. We address each determination under separate headings below.
Indefiniteness: "A method of earth orbit to a planetary landing"
Regarding the preamble of independent claim 1, the Examiner
determines that "[i]t is unclear from the claims where this landing is taking
place." Final Act. 15; see also Ans. 7. Appellant argues that "the
Examiner's objection appears to be directed, not to the clarity of the claim
language, but to the breadth of the claim." Br. 44. The Examiner responds
that because the claim recites "39 days," the claim, in view of the
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Specification, is limited to a landing on Mars, not just any planet. Ans. 7;
see, e.g., Spec., Title, "Nuclear Energy, Metal Fuel Hi02 from H20, with
MHD Power and Propulsion for One Month Astronaut Rocket Voyages to
Mars."
Claim 1, as set forth supra, recites, in relevant part, as a preamble,
"[a] method of earth orbit to a planetary landing, round trip mission with
astronauts." We agree with Appellant that the language is clear, in that the
method comprises steps for achieving landing on a planet. The
Specification generally discloses that "[ t ]he present invention applies to
nuclear reactor and metal fuel combustion to interplanetary rocket
propulsion" (Spec. 5:22-23), and claim 1 reads on the embodiment wherein
the planet is Mars (id. at 9:28-29 ("the primary innovation disclosed in this
invention is propulsion of compact interplanetary rockets from Earth orbit to
Mars in 39 days"). Further, we determine that the preamble of claim 1 is not
limiting, because the body of the claim describes a complete method for
thrusting a rocket.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 2--4 depending therefrom, as indefinite
pursuant to such a determination by the Examiner.
Indefiniteness: Propulsion apparatus
Regarding independent claim 1, the Examiner determines that "[i]t is
unclear what portion of the apparatus is being used to propel the craft."
Final Act. 15; see also Ans. 7. Appellant argues that, in view of the
Specification, "one o[f] ordinary skill in the art would understand that the
water is heated in the rocket and then exhausted from the expanding co-axial
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chamber to provide additional thrust to the spacecraft." Br. 45 (supporting
citations to the Specification omitted).
We agree with Appellant that claim 1 recites "thrusting a rocket from
on-board pressurized water," and therefore, it is clear that the on-board
pressurized water, as processed according to the claimed method steps,
results in "exhausting [a] gas into Space," to propel the rocket. An ordinary
definition of the claim term "thrust," in view of the Specification, is "to push
or drive with a physical force," and more particularly, with respect to a
rocket, the claim term "thrust" is defined as "the forwardly directed reaction
force produced by a high-speed jet of fluid discharged rearwards from a
nozzle or orifice." WEBSTER'S THIRD NEW INT'L DICTIONARY 2386 (1993).
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 2--4 depending therefrom, as indefinite
pursuant to such a determination by the Examiner.
Indefiniteness: Omission of essential steps relative to the destination planet
MPEP § 2172.01 reads in pertinent part: "a claim which fails to
interrelate essential elements of the invention as defined by applicant(s) in
the specification may be rejected under 35 U.S.C. 112(b) or pre-AIA
35 U.S.C. 112, second paragraph, for failure to point out and distinctly claim
the invention." Cf Hybritech, 802 F .2d at 13 84 ("[A] patent need not teach,
and preferably omits, what is well known in the art.").
The Examiner determines that claims 1 to 4 are "incomplete for
omitting essential steps, such omission amounting to a gap between the
steps." Final Act. 16; see also Ans. 6. Specifically, the Examiner
determines that the omitted steps are: "travelling [sic] to a destination
planet, landing on the destination planet, relaunching, traveling back to Earth
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and landing on Earth." Id. The Examiner explains that the claims recite "a
round trip mission but the steps of the claimed method [ are not directed to]
this round trip," but rather, the claims are directed to "how thrust is provided
to the craft and how the reactor of the craft operates." Id.
Appellant argues that "it is clearly within Appellant's discretion to
determine what features are essential and which are needed" and that
"Appellant carefully crafted claims to recite the features which are necessary
to protect the invention." Br. 46. Appellant submits that "Appellant is not
required to claim the entire round trip in the method of claim 1." Id.
As set forth supra, we determine that the preamble of claim 1 is not
limiting, because the body of the claim describes a complete method for
thrusting a rocket, and therefore, we do not sustain the Examiner's rejection
on such a basis. Notwithstanding, as discussed infra, the Specification
discloses that adding supplemental hydrogen is an essential step to the
embodiment recited in claim 1, which requires the dissociation of hydrogen
and oxygen from an on-board source of water, and we find that the essential
step of adding supplemental hydrogen is omitted from claim 1.
Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 2 as indefinite for omitting essential steps, and designate our
affirmance as a NEW GROUND OF REJECTION to provide Appellant with
an opportunity to respond. Claims 3 and 4 do not include the deficiencies of
claims 1 and 2, as discussed infra.
Indefiniteness: Omission of essential steps relative to the BeO droplets
Regarding independent claim 1, the Examiner determines that "the
step of creating beryllium oxide droplets ... has no end use." Final Act. 16.
In other words, the Examiner determines that although "[i]t appears from the
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[S]pecification that these BeO droplets are used to heat hydrogen to propel
the rocket[,] this step is not present in the claims as written." Id. (citation
omitted). Thus, we understand the Examiner is rejecting claim 1 as
indefinite for omitting the essential step of using the BeO droplets to heat
hydrogen to propel the rocket.
Appellant argues that "the BeO droplets are used in the process of
adding thrust to propel the spacecraft." Br. 46 (citing Spec. 10).
The Specification at page 10 discloses that
FIG. 1 is a schematic drawing of a space based rocket propulsion
system in which water is injected into a pre-combustion
cylindrical chamber in which the water is dissociated into
hydrogen and oxygen by LeChatelier's principle in this water
dissociation chamber, aided by beryllium reaction with oxygen
from water, that flows into the first of two co-axial, counter gas
swirling, slagging metal fuel combustor that is fired with
beryllium and oxygen to form metal oxide that heats the
dissociated hydrogen and stored hydrogen to 6000QK.
Spec. 10: 1---6.
Claim 1, as set forth supra, recites, in relevant part, the steps of
"complete dissociation of the water into oxygen that reacts with beryllium
powder thereby forming beryllium oxide liquid droplets in a slagging
combustor" and "heating dissociated hydrogen from the water." As
discussed infra, the Specification discloses that using the beryllium reaction
to heat the dissociated hydrogen is an essential step to the embodiment
recited in claim 1. We determine that claim 1 inherently includes the
essential step of using the beryllium oxide liquid droplets in the slagging
combustor to provide the heat for heating the dissociated hydrogen from the
water, such that the omitting the positive recitation of such a step does not
result in the indefiniteness of claim 1.
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Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 as indefinite for omitting essential steps, pursuant to
such a determination by the Examiner, and claims 2--4 depending therefrom.
Indefiniteness: "A direct about 75 million kilometer path"
Regarding independent claim 1, the Examiner determines that "it is
unclear what distance is encompassed by [the] limitation." Final Act. 16;
see also Ans. 7-8. Claim 1, as set forth supra, recites, in relevant part, as a
preamble, "[a] method of earth orbit to a planetary landing, round trip
mission ... taking off in [a] rocket ship that travels a direct about 7 5 million
kilometer path." Appellant argues that "it is clear what is encompassed by
the limitation," namely, "a direct, 75 million kilometer radial path to Mars"
(Br. 4 7), and we agree with Appellant, in that the language clearly means
that the round trip mission is intended to take a direct path to its planetary
destination, which is about 7 5 million kilometers in length.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 2--4 depending therefrom, as indefinite
pursuant to such a determination by the Examiner.
Indefiniteness: More than one statutory category recited
The Examiner rejects claims 2--4 as indefinite because "it can't be
determined what acts are being performed," in that "[t]he claims detail
components of the spacecraft and actions that have taken place in them but
do not clearly state if these are actions are method steps of the claimed
process or are actions taken in a previous unclaimed method." Final Act.
16-17; see also Ans. 8. We determine that (i) claim 2 at least includes the
additional method step of periodically removing pebbles from the bottom of
the reactor bed; (ii) claim 3 at least includes the additional method step of
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tangentially injecting hydrogen; and (iii) claim 4 at least includes the
additional method steps of operating the MHD generator cycle under
equilibrium conductivity and the MHD accelerator at Mach numbers
between 1.5 and 2.5.
Accordingly, we do not sustain the Examiner's rejection of claims 2--4
depending therefrom, as indefinite pursuant to such a determination by the
Examiner.
Indefiniteness: "emit nuclear reaction heat for the water and gas"
Regarding dependent claim 2, the Examiner determines that "[i]t is
unclear what water and gas is being referred to and if this heat for the
water/ gas is transferred to the water/ gas in a method step or if the heat if
[sic] the claim is merely stating the purpose of the heat for a later use."
Final Act. 17. Appellant argues that "the water and gas refers to the water in
the nuclear water and the gas ( e.g., steam) formed in the nuclear reactor due
to the 100 atmosphere pressure." Br. 47 (citing Spec., pp. 11, 12, 22).
Claim 2, which depends from independent claim 1, recites, in relevant
part, "wherein the mission is implemented initially in a pebble bed, nuclear
reactor ... that heats the water to about 3000QK, wherein formation of steam
and partial dissociation into H2 and 02 takes place, and where the pebbles
... that emit nuclear reaction heat for the water and gas." Br. 60 (Claims
App 'x). Independent claim 1, recites in relevant part, supra, "on-board
pressurized water first heated in a 3000QK pebble bed nuclear reactor;
followed by complete dissociation of the water into oxygen ... [and]
dissociated hydrogen from the water." Claim 1 further recites, in relevant
part, supra, "heating dissociated hydrogen from the water to 6000QK which
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expands in a gas dynamic nozzle that is seeded with an alkali metal ... to
render the gas electrically conducting."
We determine that a collective reading of claims 1 and 2 indicate that
the antecedent basis for the claim term "the water" as recited in claim 2 is
the "on-board pressurized water" recited in claim 1, and that the antecedent
basis for the claim term "gas" as recited in claim 2 is the "gas" that results
from expansion of the hydrogen in the gas dynamic nozzle. To the extent
Appellant argues that the claim term "gas" in claim 2 is also the steam ( or
water vapor) recited in claim 2, rather than hydrogen gas implied in claim 1,
we agree with the Examiner that the meaning of claim 2 is indefinite.
Appellant's argument causes further confusion as to which gas (hydrogen or
steam) is the claimed gas that is exhausted into Space. See, e.g., Spec. 2: 14-
15 ("seeding the H2 with cesium for added thrust from an MHD powered,
MHD accelerator followed by exhausts [sic] into space").
Accordingly, we sustain the Examiner's rejection of claim 2, and
claims 3 and 4 depending therefrom, as indefinite, pursuant to such a
determination by the Examiner.
Indefiniteness: "a pebble conveyor that periodically . .. removes pebbles"
Regarding dependent claim 2, and the recitation of "where the pebble
bed, nuclear reactor contains a pebble conveyor that periodically at a
beginning or end of a mission removes pebbles from a bottom of a reactor
bed for inspection and re-injection or new pebbles through openings at a
top" (Br. 60 (Claims App'x)), the Examiner determines that "[i]t is unclear if
this is a step performed during the method claimed or if this [is] an ability of
the apparatus that can be utilized during other operations." Final Act. 17.
The Examiner also determines that "it is unclear if 'a mission' in the
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limitation is the previously recited mission or a separate and new mission."
Id. The Examiner further determines that "[i]t is unclear how these new
pebble[ s] can be removed after a mission since pebbles used in a mission
would not be considered new." Id. The Examiner further determines that
"[i]t is also unclear if the reinjection of the pebbles is intended to take place
through the top or bottom openings." Id.
Appellant argues that one of ordinary skill in the art would understand
from the language of claim 2 that removing pebbles "is a step performed
during the method claimed," and that "the mission refers to the previously
recited mission [in claim 1 ]." Br. 48.
We determine that, notwithstanding our finding that the preamble of
claim 1 is not entitled to patentable weight, we agree that the recitation of
"the mission" in claim 2 refers to "a planetary ... mission" as recited in the
preamble of claim 1, and clearly means that the recited periodic removal and
re-injection of pebbles occurs either before or after such mission. Also, as
written, we determine that claim 2 clearly means that both the re-injection of
used pebbles and injection of new pebbles occurs through the top opening.
Accordingly, we do not sustain the Examiner's rejection of claim 2,
and claims 3 and 4 depending therefrom, as indefinite, pursuant to such a
determination by the Examiner.
Indefiniteness: "multitude"
Regarding dependent claim 2, and the recitation of "where the pebbles
comprise a multitude of ceramic, nominal 2 inch diameter spheres in which
are embedded a multitude of chips of U238, U235, or U233" (Br. 60 (Claims
App'x)), the Examiner determines that "[i]t is unclear how many of the
ceramics listed must be selected to constitute a multitude," and also that
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"[t]he term 'multitude' is a relative term which renders the claim indefinite."
Final Act. 17.
Appellant argues that "one of ordinary skill in the art would
understand that the pebbles in claim 2 include a plurality of ceramics."
Br. 48.
The Specification does not use the claim term "multitude" to describe
the spheres or chips, however, an ordinary definition of the claim term
"multitude," in view of the Specification, is "the state of being many."
WEBSTER'S THIRD NEW INT'L DICTIONARY 1486 (1993). We do not agree
that the claim term "multitude" is a term of degree, but rather, a term that
has a clear meaning.
Accordingly, we do not sustain the Examiner's rejection of claim 2,
and claims 3 and 4 depending therefrom, as indefinite, pursuant to such a
determination by the Examiner.
Indefiniteness: BeO droplets
Regarding dependent claim 3, which recites in relevant part,
disassociating remaining water and steam into hydrogen and oxygen and
forming beryllium oxide droplets (see Br. 61 ), the Examiner determines that
"[i]t is unclear if this limitation is repeating the step claimed in claim 1 or if
this is a new formation ofBeO droplets for a different use." Final Act. 18.
Appellant argues that "one of ordinary skill in the art would
understand that claim 3 recites further features of the steps in claim 1." Br.
49.
We agree with Appellant that claim 1 requires heating the water in a
nuclear reactor, and also "complete dissociation of the water into oxygen ...
in a slagging combustor," as well as reciting "dissociated hydrogen from the
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water," and that claim 2 further requires that heating the water in the nuclear
reactor results in forming steam and the partial dissociation of the water into
H2 and 02, which proceeds according to claim 1 to complete dissociation in
the slagging combustor-with the additional step recited in claim 3 of using
a pre-combustion chamber for accomplishing the partial dissociation.
Although we determine that the claim language in dispute is clear, as
discussed supra, claim 1 omits the essential step of flowing partially
dissociated water (and steam) heated by the nuclear reactor into a pre-
combustion chamber to completely dissociate the water, rendering claim 1
indefinite.
Accordingly, we do not sustain the Examiner's rejection of claim 3,
pursuant to such a determination by the Examiner. As discussed above, we
enter a NEW GROUND OF REJECTION of claims 1 and 2 as indefinite for
omitting an essential step.
Indefiniteness: "wherein hydrogen is treated"
Regarding dependent claim 4, which recites in relevant part, "wherein
hydrogen was treated, exits the two stage cyclone combustor," the Examiner
determines that "the previous claims introduce more than one source of
hydrogen," and "[i]t is unclear what hydrogen has been treated." Final Act.
18. The Examiner also determines that "it is unclear what process takes
place to 'treat' this hydrogen," and that "it is unclear if this is a step being
performed in the claimed method or if this is merely a statement regarding
the condition of the hydrogen." Id.
Appellant argues that the Specification discloses that "the hydrogen
flows axially into a second fuel combustor chamber, where more on board
H2 is injected tangentially into the second fuel combustor chamber to
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counter the swirl, followed by all the hydrogen flowing into a sub-sonic
nozzle," and therefore, "this is a step being performed in the claimed
method." Br. 50 ( citing Spec., p. 10).
Claim 1, as set forth supra, recites "heating dissociated hydrogen from
the water ... which expands in a gas dynamic nozzle that is seeded with an
alkali metal ... to render the gas electrically conducting as it flows through
[ a co-axial MHD generator and accelerator, and expanding co-axial
channel]; and exhausting the gas into Space from the expanding co-axial
channel." Claim 2, as discussed supra, adds that H2 is partially dissociated
in the nuclear reactor, and claim 3 adds that complete dissociation of the H2
occurs in a pre-combustion chamber, "where remaining water and steam is
dissociated into H2 and 0 2 and reacts with injected beryllium powder to
form liquid BeO droplets that continuously exhaust into a first stage of a two
stage cyclone combustor with entrained unreacted beryllium powder to mix
with new tangentially injected hydrogen." Claim 4, which depends on claim
3, recites "wherein hydrogen was treated, exits the two stage cyclone
combustor and enters a sub-sonic nozzle." Br. 61 (Claims App'x).
We agree with the Examiner that claim 4 is indefinite, because it is
unclear from the language of the claims which product streams flow into
stage two of the two stage cyclone combustor, and whether there is any
treatment in stage two. Aside from reciting "a two stage cyclone
combustor," the claims are silent regarding product flow into or out of the
second stage, or any treatment occurring in the second stage. It is also
unclear from the language of claim 3 whether the recited "two stage cyclone
combustor" is meant to be a further description of the "slagging combustor"
recited in claim 1.
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Accordingly, we sustain the Examiner's rejection of claim 4 as
indefinite, pursuant to such a determination by the Examiner, and enter a
NEW GROUND OF REJECTION of claim 3 for reciting a two stage
cyclone combustor, because it is unclear whether the two stage cyclone
combustor is meant to further limit the slagging combustor recited in claim
1.
Indefiniteness: "whose exit is connected"
Regarding dependent claim 4, the Examiner determines that "it is
unclear if 'whose' is referring to 'a sub-sonic nozzle' or the source of the
cesium injection." Final Act. 18.
Appellant argues that, as shown in Figure 1 of the Specification, "the
exit of the sub-sonic nozzle is connected to a MHD generator channel," and
therefore, "one of ordinary skill in the art would understand the
configuration of the claimed apparatus." Br. 50.
Claim 4 recites, in relevant part, "wherein hydrogen ... exits the two
stage cyclone combustor and enters a sub-sonic nozzle ... whose exit is
connected to a linear Faraday Magnetohydrodynamic (MHD) generator
channel." Br. 61 (Claims App'x) (emphasis added). Although we agree
with Appellant that the language of claim 4 is clear in that "whose" refers to
"a sub-sonic nozzle," we determine that it is unclear whether the sub-sonic
nozzle, the linear Faraday MHD generator channel, the MHD linear
accelerator, the nozzle, and expansion channel, as recited in claim 4, refer
back to ( and further limit) the gas dynamic nozzle, MHD generator channel,
MHD accelerator, and expanding co-axial channel, as recited in claim 1.
Additionally, claims 2 and 4 refer to "the generator-accelerator," and claim 4
more specifically refers to "MHD generator section of the generator-
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accelerator," and it is unclear whether such structures refer back to (and
further limit) structures recited in claim 1.
Accordingly, we sustain the Examiner's rejection of claims 2 and 4 as
indefinite, and claim 3 depending therefrom, and designate our affirmance as
a NEW GROUND OF REJECTION to allow Appellant an opportunity to
respond.
Indefiniteness: "at a location of a nominal Mach number of 0.9"
Regarding dependent claim 4, the Examiner determines that "[i]t is
unclear if the MHD generator is placed in the coil when the rocket reaches
Mach 0.9 or if Mach 0.9 refers to a specific location as written in the claim."
Final Act. 18.
Appellant argues that "the MHD generator in claim 4 is placed in the
coil when the rocket reaches Mach 0.9." Br. 50-51 (citing Spec., pp. 14, 36,
40, 61, 64, and 70).
Claim 4 recites, in relevant part, that the MHD generator channel "is
placed inside a ... coil magnet, at a location of a nominal Mach number of
0.9." Br. 61 (Claims App'x). An ordinary definition of the claim term
"Mach number," in view of the Specification, is "a number representing the
ratio of the speed of a body to the speed of sound in the surrounding
atmosphere." WEBSTER'S THIRD NEW INT'L DICTIONARY 1354 (1993). The
Specification consistently refers to the MHD generator as "operating at
Mach=0.9" (see, e.g., Spec. 64: 15), and therefore, Appellant's argument that
a Mach number of 0.9 is a parameter of the rocket is confusing, and further,
it is unclear how the Mach 0.9 MHD operating parameter relates to a
location within a coil magnet.
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Accordingly, we sustain the Examiner's rejection of claim 4 as
indefinite, pursuant to such a determination by the Examiner.
Indefiniteness: "whose electrode power output wires of the MHD generator
section"
Regarding dependent claim 4, the Examiner determines that "[i]t is
unclear ... if whose is referring to a component other than the MHD
generator section." Final Act. 18 ( emphasis added).
Appellant argues that "one of ordinary skill in the art would
understand that the electrode power output wires is part of the MHD
generation section." Br. 51.
Claim 4 recites, in relevant part, "wherein a MHD generator section
of the generator-accelerator ... whose electrode power output wires of the
MHD generator section are connected, in a diagonal mode, to anodes and
cathodes of a coaxial supersonic, non-equilibrium conductivity, MHD linear
accelerator." Br. 61 (Claims App'x) (emphasis added). We agree with
Appellant that "whose" clearly refers to the MHD generator section, and that
the restatement of "of the MHD generator section" is merely redundant.
Accordingly, we do not sustain the Examiner's rejection of claim 4 as
indefinite, pursuant to such a determination by the Examiner.
Indefiniteness: Operating components that appear to increase speed
Regarding dependent claim 4, the Examiner determines that
recitations in claim 4 "discuss operating components of the apparatus that
appear to increase the speed of the rocket to Mach 6 but it cannot be
determined from the claim how this is accomplished," and that "the claim
refers to numerous components but does not clearly and definitively disclose
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steps taken to accomplish desired results of the stated method." Final Act.
19_ 12
Appellant argues that, regarding the preferred Case 3A,
H2, 0 2, liquid, are replaced with water on board, which is
dissociated and reduces the rocket size to 10% of NER VA with
the same capsule sizes. However, to use water one must
dissociate the water by non-equilibrium by LeChatilier's
Principle to remove all water into the MHD generator to prevent
the water from quenching non-equilibrium ionization [because]
[ u ]nder equilibrium dissociation too much H20 remains that
inhibits non- equilibrium MHD .
. . . Then, a huge breakthrough of using water in the rocket
and LeChateliers principle to dissociate it and MHD which cuts
the rocket weight to 10% of NERVA, [results in] 39 days to
Mars.
Moreover, in the present disclosure, the claimed invention
uses most of the hydrogen energy to propel the rocket, which
enables velocities far above those attainable with a nuclear rocket
alone. Thus, the claimed invention enables speeds many times
faster than with a nuclear thermal rocket, which allows for trips
to mars in the order of one month. Further, in the claimed
invention, the MHD propulsion can provide a factor of ten higher
thrust, and thereby drastically shorten the voyage by replacing
the elliptic rocket trajectories with direct radial interplanetary
trips .... Therefore, the claimed invention can increase the speed
of the rocket based on the hydrogen energy in the MHD
propulsion and the reduced rocket weight.
Br. 52 ( citations omitted).
The Examiner has not specified which language of claim 4 is unclear,
and to the extent the Examiner questions how the recited method of thrusting
a rocket achieves "an inherent gas dynamic thrust from the channel's
12 See also Final Act. 2 (maintaining the rejection as stated in Section 35 of
the Non-Final Action, dated May 10, 2017).
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stagnation pressure to Mach No. 5 to 6," such a rejection is properly made
under enablement.
Accordingly, we do not sustain the Examiner's rejection of claim 4 as
indefinite, pursuant to such a determination by the Examiner.
Rejection VI
Regarding independent claim 1, the Examiner finds that Zauderer
'722 generally discloses the claimed invention, as claimed. Final Act. 20
( citations omitted). The Examiner determines that Zauderer '722 fails to
disclose "that the reactor is a pebble bed reactor or that the method of space
travel includes a direct trip or 75 million kilometers in 39 days, a planetary
landing or a return trip of 75 million kilometers." Id. The Examiner relies
on Zauderer '543 for teaching "utilizing a pebble bed reactor as the heat
source in a MHD generator" (citing Zauderer '543, Fig. 3) and reasons that it
would have been obvious to modify Zauderer '722 in view of Zauderer '543
"for the predictable result of achieving high efficiency at low capital,
operating and fuel costs." Id. The Examiner relies on Redd for teaching the
limitations recited in the preamble of claim 1, which, as determined supra, is
not entitled to patentable weight. Id.
First, regarding independent claim 1, Appellant argues that none of
the prior art references disclose the claimed step of
heating dissociated hydrogen from the water to 6000QK which
expands in a gas dynamic nozzle that is seeded with an alkali
metal from 0.1 % to 1 % to render the gas electrically conducting
as it flows through a [MHD] generator channel that is co-axially
attached to a MHD accelerator that is co-axially attached to an
expanding co-axial channel.
Br. 56. In support, Appellant submits that Zauderer '722 discloses "a MHD
channel with a 2.7 Tesla magnetic field, neon-seeded with 1 % to 1.7%
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cesium, 10 MW thermal input power, and stagnation temperature of
3520QK," and also "a MHD generator 136 connected to a spray condenser
138." Id. Appellant further argues that such a deficiency is not cured by
either Zauderer '543 or Redd.
The Examiner responds that Zauderer '722 "states that the hydrogen is
heated to 6000k and expanded through a nozzle (135) that is seeded with an
alkali metal ( cesium) from 0.1 % to 1 %." Ans. 9 ( citing Zauderer '722,
3:20 et seq., 19:18 et seq.)). The Examiner also responds that Zauderer '722
discloses that "the working fluid can be exhausted into the environment" (id.
(citing Zauderer '722, 6:63 et seq.)) and that "the apparatus can be used in
space based applications" (id. (citing Zauderer '722, 4:29 et seq.,
18:40 et seq.)). The Examiner concludes that "[t]he gas is therefore
exhausted in to space." Id.
It is unclear from Appellant's recitation of the claim language, which
elements Appellant determines are missing from disclosure in the prior art.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2013) (requiring an appeal brief to "explain
why the examiner erred as to each ground of rejection contested by
appellant").
To the extent that Appellant is arguing that Zauderer '722 discloses
neon seeded with cesium, rather than hydrogen, Zauderer clearly discloses
that the working fluid can be hydrogen: "[i]n the present invention,
stagnation temperatures up to 6000QK. are believed to be attainable in low
molecular weight gases," and "[t]herefore, the non-equilibrium
conductivities that were heretofore only attainable in seeded noble gases
now also are attainable in gases such as hydrogen." Zauderer '722, 2:65-
3 :6. Zauderer '722 also discloses seeding neon with "1 to 1.7% cesium" (id.
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at 3 :20-21) and also that "the working fluid in the second section [ of the
cyclone combustor, which heats hydrogen gas working fluid] is seeded with
a small fraction of an easily ionized alkali metal, such as cesium," and that
"the working fluid then is expanded through a supersonic nozzle into the
MHD generator where electric power is extracted from the working fluid."
Id. at 6:29-36, 56-59. Zauderer '722 teaches seeding the working fluid for
the express purpose of "render[ing] the working fluid electrically
conductive" (id. at 9:3--4). Zauderer '722 refers to the neon-seeded working
fluid as an actual working example. Id. at 3:11-28. Thus, we determine that
a preponderance of evidence supports the Examiner's determination that
Zauderer '722 discloses seeding the dissociated hydrogen with an alkali
metal (i.e., cesium), and that the amount (or percentage range) is recognized
in the art as a result-effective variable for rendering the working fluid
conductive. Cf Spec. 16:20-22 (acknowledging that "MHD power is a
function of the electrical conductivity that depends on the degree of
ionization of the alkali metal gas seeded in the transport gas in the generator
and accelerator").
To the extent Appellant is arguing that Zauderer '722 fails to disclose
an MHD generator channel co-axially attached to an MHD accelerator that is
co-axially attached to an expanding co-axial channel, we agree. The
Examiner has not supported a finding that Figure 11 of Zauderer '722, upon
which the Examiner relies for depicting "MHD Generator 136," depicts an
MHD generator co-axially aligned with an MHD accelerator that is co-
axially aligned with a channel, as claimed. Cf Zauderer '722, Fig. 11;
Spec., Figs. 1, 3. Although Zauderer '543 discloses that MHD generators
and accelerators are known, the co-axial arrangement is not expressly
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disclosed. See, e.g., Zauderer '543, 27:51-55 (disclosing that "nuclear
closed cycle MHD generators and accelerators can be applied to unmanned
and manned space travel, especially now that water and hydrogen have just
been discovered on the Moon"). Thus, we are also persuaded by Appellant's
argument that none of the references disclose "exhausting the gas into Space
from the expanding co-axial channel," as claimed. Br. 57; see also Spec.
19:4--21 :26 ( disclosing that MHD generators and accelerators are known);
23:5-7 ("[a]t no time was there any claim that this metal fuel fired MHD
generator could be used to drive an MHD accelerator"); 39:4--46:26
(discussing "[t]he [c]oaxial linear MHD [g]enerator-[a]ccelerator).
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1--4 under 35 U.S.C. § 101 as
unsupported by either credible asserted or well-established utility is
REVERSED.
The Examiner's rejection of claims 2--4 under 35 U.S.C. § 101 as
being directed to more than one of the four statutory subject matter
categories is REVERSED.
The Examiner's rejection of claims 1 and 2 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement is
AFFIRMED and designated as a NEW GROUND OF REJECTION, and the
Examiner's rejection of claims 3 and 4 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement is
REVERSED.
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The Examiner's rejection of claims 1--4 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
REVERSED.
The Examiner's rejection of claims 1 and 2 under 35 U.S.C. § 112,
second paragraph, for being indefinite for omitting essential elements, is
AFFIRMED and designated a NEW GROUND OF REJECTION; and
further, the Examiner's rejection of claims 1--4 under 35 U.S.C. § 112,
second paragraph, for being indefinite, is also AFFIRMED based on grounds
articulated by the Examiner.
The Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) is
REVERSED.
FINALITY OF DECISION
This decision contains new grounds of rejection as permitted under
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.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 ground
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.
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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 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 the Manual of Patent Examining Procedure§ 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 4I.50(b)
44