Joseph Clay

Patent Trials and Appeals Board

Apr 28, 2021

2020004042 (P.T.A.B. Apr. 28, 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 04/28/2021
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
04/28/2021 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
MONTÉ T. SQUIRE, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 52–76 and 78–92. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Spacedesign
Corporation (Appeal Br. 3).
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Application 12/850,940

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CLAIMED SUBJECT MATTER
The claims are directed to a photon engine and a method for
producing a higher power output from a light beam. Claims 52 and 72,
reproduced below, are illustrative of the claimed subject matter:
52. A method of producing a higher power output from a light
beam, the method comprising:
providing a primary prism comprising a first transparent
optical medium having a first index of refraction, the primary
prism comprising multiple internal surfaces;
producing a processed light beam by directing an initial
light beam into a given facet of a light expander/contractor
device communicating with the primary prism, the light
expander/contractor device expanding light beams that enter the
light expander/contractor device from a given direction,
producing an exiting light beam;
reflecting the exiting light beam from one internal
surface of the primary prism to a next internal surface of the
primary prism until the exiting light beam reenters the light
expander/contractor device substantially parallel to and from
the same direction as the initial light beam but at a different
facet, thereby repeatedly rotating the exiting light beam within
the primary prism and producing the processed light beam;
selectively operating an optic switch controlling
communication of the processed light beam between the
primary prism and a containment chamber;
and, containing and repeatedly propagating the processed
light beam along a predetermined reflective light path in the
containment chamber, the predetermined reflective light path
comprising one or more reflective surfaces;
and, communicating the power output of the processed
light beam to an energy system communicating with the one or
more reflective surfaces.

72. A photon engine comprising:
a primary prism communicating with one or more light
beam inlets and comprising multiple internal faces comprising a
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Application 12/850,940

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primary back face, the primary prism comprising polished
crystalline quartz having a first index of refraction;
a light expander/contractor device communicating with
the one or more light beam inlets, the light expander/contractor
device comprising facets adapted to produce a processed light
beam by expanding a light beam entering the light
expander/contractor device from a given direction;
an optic switch communicating with the primary prism
and a containment chamber comprising a predetermined
reflective light path comprising one or more reflective surfaces
communicating with an energy system.
REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
52–76, 78–92 112, first paragraph Written Description
52–76, 78–92 112, first paragraph Enablement
OPINION
Res Judicata
The Appellant argues that we should dismiss this appeal as res
judicata because in the previous appeal we reversed the Examiner’s
rejections under the 35 U.S.C. § 112, written description and enablement
requirements (Appeal Br. 13–14). Res judicata does not apply because we
have not decided those issues based upon the current record.2
Written Description
For an applicant to comply with the 35 U.S.C. § 112 first paragraph
written description requirement, the applicant’s specification must “convey

2 The Appellant argues that the Examiner failed to fully address written
description and enablement in the first appeal and thereby violated the
principle of compact prosecution (Appeal Br. 13–14). Lack of compliance
by an examiner with the principle of compact prosecution is petitionable to
the Group Director, not appealable. See MPEP § 1002.02(c)(3).
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with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008),
quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991).
For written descriptive support of the photon engine claimed in
claims 72–81 and 84–92, the Appellant relies upon 18 Specification
paragraphs (4, 7, 31–33, 55–57, 61, 62, 65, 72–77, and 80) and 7 figures
(Figs. 1–7), and asserts that each paragraph and figure includes a claim
limitation (Appeal Br. 3–4; Exhibit L). For written descriptive support of the
method claimed in claims 52–68 and 72, the Appellant relies upon 25
Specification paragraphs (4, 7–9, 25–28, 31–33, 55, 57, 59–62, 66, 72–77,
and 80) and 7 figures (Figs. 1–7), and asserts that each paragraph and figure
includes a claim limitation (Appeal Br. 3–4). The Appellant does not point
out, and it is not apparent, where the Specification shows possession of the
combination of elements required by any claim.
Accordingly, we affirm the rejection under the 35 U.S.C. § 112 first
paragraph, written description requirement.
Enablement
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Factors to
be considered in determining whether a disclosure would require undue
experimentation “include (1) the quantity of experimentation necessary,
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(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.” In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
The Appellant argues: Exhibit L “demonstrated that the elements of
the claims correspond in scope to those used in describing and defining the
subject matter sought to be patented. The specification therefore must be
taken as in compliance with the enablement requirement of the first
paragraph of 35 U.S.C. § 112. Fiers v. Revel, 25 [USPQ2d] at 1607”
(Appeal Br. 18).
As pointed out above, the record does not indicate that the claims
correspond in scope with the Specification. Also, the complete sentence in
Fiers v. Revel relied upon by the Appellant is:
[A] specification disclosure which contains a teaching of the
manner and process of making and using the invention in terms
which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be taken
as in compliance with the enabling requirement of the first
paragraph of § 112 unless there is reason to doubt the objective
truth of the statements contained therein which must be relied on
for enabling support.

Fiers v. Revel, 984 F.2d 1164, 1171–72 (Fed. Cir. 1993), quoting In re
Marzocchi, 439 F.2d 220, 223 (CCPA 1971)).
Regarding the first Wands factor (the quantity of experimentation
necessary), the Appellant argues that the quantity of experimentation
required is low (Appeal Br. 18). In support of that argument, the Appellant
relies upon a Declaration of Charles Edward Webb (Exhibit B to First
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Appeal Br.) in which Webb states that the Thermal Synthesizer System
(TSS) “became a new industry standard for thermal-analysis modeling in
orbit” (¶ 20), “TSS is commonly used in the industry to perform thermal-
analysis software modeling” (¶ 21), and “[i]f TSS thermal analysis modeling
indicates that a device will produce particular results, then persons of
ordinary skill in the art would reasonably expect the device to produce the
particular results when the device is built and operated in accordance with
the TSS modeling” (¶ 22) (Appeal Br. 19). The Appellant argues (Appeal
Br. 19):
Ex. A and B of the First App. Brief establish that a PHOSITA
would initially only be required to make the following selections:
i. select a desired energy system;
ii. select the power output desired to communicate to
that energy system; and,
iii. assume sizes of the components of the photon engine.
The foregoing steps (i)-(iii) involve making selections or
assumptions—they do not require experimentation.
Based on the evidence provided in the Webb Declarations (“the
Webb Decl.”) appended as Ex. A and B to the First Appeal Brief in
this application (hereafter the “First App. Brief”), once selections (i)-
(iii) are made, the only “experimentation” that a PHOSITA would
need to perform in order to build and operate a photon engine that
communicates the selected amount of energy to the selected energy
system would be to:
1) Use standard thermal analysis software (“TSS”) to simulate
operation of the photon engine having the components with
the assumed size(s); and,
2) Determine whether the simulation communicates the selected
amount of energy to the selected energy system; and,
3) If the simulation does not communicate the selected amount
of energy to the selected energy system, adjust the assumed
sizes (step c, above) until the simulation does communicate
the selected amount of energy to the selected energy system,

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thereby determining optimized component sizes for the
selected power output and energy system.
See Ex. A to First App. Brief, ¶¶ 14, 16, 21–22. The PHOSITA could
then use the optimized component sizes to build an optimized photon
engine that would practice the claimed to communicate the selected
output to the selected energy system. Amgen Inc. v. Chugai Pharm.
Co., 18 U.S.P.Q.2d 1016 (Fed. Cir. 1991).

Webb’s statement that TSS “became a new industry standard for
thermal-analysis modeling in orbit” (¶ 20) appears to indicate that in Webb’s
statement that “TSS is commonly used in the industry to perform thermal-
analysis software modeling” (¶ 21), “the industry” is the industry of thermal-
analysis modeling in orbit. The Appellant’s claims are not limited to thermal
analysis modeling in orbit. Also, Webb’s statement that“[i]f TSS thermal
analysis modeling indicates that a device will produce particular results, then
persons of ordinary skill in the art would reasonably expect the device to
produce the particular results when the device is built and operated in
accordance with the TSS modeling” (¶ 22) is unsupported by evidence that
TSS thermal analysis modeling would have enabled one of ordinary skill in
the art, without undue experimentation, to apply the Appellant’s claim 52
light reflection method or claim 72 photon engine to any energy system.
Thus, the record does not support the Appellant’s argument that one
of ordinary skill in the art, after obtaining the optimum component sizes
provided by a TSS simulation, could make and use a workable photon
engine for any energy system as required by the Appellant’s claims 52
and 72.
With respect to the second Wands factor (the amount of direction or
guidance presented), the Appellant argues that the Specification contains a
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clear written description of how to make and use the photon engine
optimized in the Clay Declarations (Exhibits C–E to the First Appeal Br.),
and that TSS was augmented and used by Webb to predict solar and Earth
radiation forces for all Ice, Cloud and land Elevation (ICE Sat) orbit and
attitude geometrics (Appeal Br. 21).3
The Appellant does not explain, and it is not apparent, how the
Appellant’s Exhibits C–E show how to make the photon engine claimed in
claim 72 or use a photon engine according to the method claimed in
claim 52.
As for the third Wands factor (the presence or absence of working
examples), the Appellant argues that Exhibits A–F provide a working
example in the form of a TSS model (Appeal Br. 23). That model is not a
working example of the claimed photon engine (claim 72) or method
(claim 52).4
Regarding the seventh Wands factor (the predictability or
unpredictability of the art), the Appellant argues (Appeal Br. 24):
Appellant has provided evidence that a PHOSITA could have
used ray tracing analysis and existing thermal analysis software (TSS)
to predict performance of the resulting photon engine when the
components had the assumed sizes. Appellant also has provided
the components in order to optimize the photon engine to achieve a
selected result.

3As indicated in our discussion of the rejection under 35 U.S.C. § 112, first
paragraph, written description requirement, the Specification does not
provide the argued clear written description.
4 The Appellant does not provide a substantive argument with respect to the
fourth (the nature of the invention), fifth (the state of the prior art), or sixth
(the relative skill of those in the art) Wands factors (Appeal Br. 23–24).
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The record does not indicate that thermal analysis software provides
predictability with respect to building a working photon engine, without
undue experimentation, that powers an energy system, particularly any
energy system as required by claims 52 and 72.
With respect to the eighth Wands factor (the breadth of the claims),
the Appellant argues that the claims “are limited to a photon engine
comprising specific components combined in the manner claimed” (Appeal
Br. 24). The Appellant points out that the energy system can be limited to an
energy storage device (claims 65, 66, 78), a piston and crankshaft assembly
(claims 70, 71, and 82), or a spring device (claims 67, 68) (Appeal Br. 25–
27).
The 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.
For the above reasons, we are not persuaded of reversible error in the
rejection under the 35 U.S.C. § 112, first paragraph, enablement
requirement.
CONCLUSION
The Examiner’s decision to reject claims 52–76 and 78–92 is
AFFIRMED.
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Application 12/850,940

10
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
52–76, 78–
92
112, first
paragraph
Written
Description
52–76,
78–92

52–76, 78–
92
112, first
paragraph
Enablement 52–76,
78–92

Overall
Outcome
52–76,
78–92

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED