Joseph Clay

Patent Trials and Appeals Board

Aug 27, 2021

2020004042 (P.T.A.B. Aug. 27, 2021)

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.
12/850,940 08/05/2010 Joseph M. Clay SPC-P02771US2 1802
23770 7590 08/27/2021
PAULA D. MORRIS
THE MORRIS LAW FIRM, P.C.
PO BOX 420787
HOUSTON, TX 77242-0787
EXAMINER
LE, QUE TAN
ART UNIT PAPER NUMBER
2878
NOTIFICATION DATE DELIVERY MODE
08/27/2021 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):
AALANIZ@MORRISIPLAW.COM
PMORRIS@MORRISIPLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. CLAY
Appeal 2020-004042
Application 12/850,940
Technology Center 2800
Before TERRY J. OWENS, JEFFREY T. SMITH, and
N. WHITNEY. WILSON, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellant argues in the Request for Rehearing that in our
Decision we erred in affirming the rejections of claims 72 and 92 under the
35 U.S.C. § 112, first paragraph written description requirement and
claims 52, 72, and 92 under the 35 U.S.C. § 112(a) enablement requirement,
and that we introduced a new ground of rejection of claims 52 and 72 under
35 U.S.C. § 112(b) (Req. Reh’g 2).
Appeal 2020-004042
Application 12/850,940

2
Written Description
Claim 72 requires “a containment chamber comprising a
predetermined reflective light path comprising one or more reflective
surfaces communicating with an energy system.”1
The Appellant’s Specification states that “[l]ight directed into a first
prism, therefore, passes through the boundary with the second prism,
through the second prism and enters a containment chamber” (Spec. 6:22–
24). Regarding Figure 3, the Appellant’s Specification states that “a back
face 306c of primary prism 306 is spaced from a front face 307c of
secondary prism 307, to form a compression boundary interface 314
between the primary prism 306 and the containment chamber 302” (Spec.
14:23–25). There is no containment chamber 302 in Figure 3, however, and
no containment chamber in any of the other figures. With respect to Figure
6, the Appellant’s Specification states that “[t]he secondary prism 607
communicates with each of the cylinders 608, 608’ and thus the mirror 612
and piston 610 in each of the cylinders 608, 608’” (Spec. 16:1–2).
The Appellant argues that written descriptive support for the
containment chamber is provided by the Specification’s statement
(Spec. 1:26–28) that “[t]he apparatus also includes a containment chamber
constructed to contain the propagation of light waves therein along a
predetermined reflected light wave path” (Req. Reh’g 6).

1 Claim 92 depends from claim 72 and requires that the claimed photon
engine further comprises “a collector comprising one or more collective
mirrors.”

Appeal 2020-004042
Application 12/850,940

3
That is not a disclosure of the containment chamber required by the
Appellant’s claim 72, i.e., “a containment chamber comprising a
predetermined reflective light path comprising one or more reflective
surfaces communicating with an energy system.” The Appellant’s
Specification states that “[t]he secondary prism 607 communicates with each
of the cylinders 608, 608’ and thus the mirror 612 and piston 610 in each of
the cylinders 608, 608’” (Spec. 16:1–2). Thus, Figure 6 shows that light
from the secondary prism, not a containment chamber, communicates with a
mirror on a piston.
Enablement Requirement
The Appellant argues that the Appellant’s Specification is enabling for
the full scope of the claim term “energy system” in claim 52 (which requires
“communicating the power output of the processed light beam to an energy
system communicating with the one or more reflective surfaces”) and
claim 72 because the term does not encompass energy systems generally but,
rather, is limited to the disclosed piston and cylinder assembly (Req.
Reh’g 9–12, 14).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
The Appellant’s Specification states that “the piston and cylinder
assembly may be replaced by another energy system such a [sic] energy
storage device (e.g., a spring device)” (Spec. 20:12–13). Thus, the broadest
reasonable interpretation of the Appellant’s claim term “energy system” is
not limited to a piston and cylinder assembly but, rather, encompasses
Appeal 2020-004042
Application 12/850,940

4
energy systems generally. As set forth in our Decision, “[t]he Appellant does
not explain how the Specification would have enabled one of ordinary skill
in the art, without undue experimentation, to make the claimed photon
engine or use it to provide energy for energy systems generally, energy
storage devices, piston and crankshaft assemblies, or spring devices”
(Dec. 9).
New Ground of Rejection
The Appellant argues that our interpretation of the Appellant’s claim
term “energy system” as encompassing energy systems generally is a new
rejection based on the claims being overly broad or indefinite under
35 U.S.C. § 112(b) (Req. Reh’g 2, 13). Our interpretation of the claim term
“energy system’ in our affirmance of the rejection under the
35 U.S.C. § 112(a) enablement requirement pertains to it rendering the
claims broader than the enabling disclosure, not to it being indefinite under
35 U.S.C. § 112(b).
For the above reasons, the Appellant’s request for rehearing is denied.
DENIED