Joseph ClayDownload PDFPatent Trials and Appeals BoardAug 27, 20212020004042 (P.T.A.B. Aug. 27, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation