PARANETICS, INC.

Patent Trials and Appeals Board

Jul 28, 2021

2020006213 (P.T.A.B. Jul. 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.
15/001,187 01/19/2016 Thomas A. Daniel 121534-0001UT01 7731
27189 7590 07/28/2021
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
TALPALATSKI, ALEXANDER
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
07/28/2021 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):
PTONotifications@procopio.com
docketing@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte THOMAS A. DANIEL and LARRY STAMBAUGH

Appeal 2020-006213
Application 15/001,187
Technology Center 2800

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 23–30 and 32–37.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.3

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Paranetics,
Inc. Appeal Br. 2.
2 Claims 1–22 and 31 were canceled. Non-Final Act. 1.
3 Throughout this Decision we refer to the Specification filed January 19,
2016 (“Spec.”), the Non-Final Rejection mailed May 8, 2019 (“Non-Final
Act.”), the Appeal Brief filed May 5, 2020 (“Appeal Br.”), the Examiner’s
Answer mailed June 30, 2020 (“Ans.”), and the Reply Brief filed August 31,
2020 (“Reply Br.”).
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INVENTION
The present invention relates to a magnetic device which “generates a
magnetic field pattern including two magnetic poles of the same polarity on
both ends, or sides of the magnetic device, and a third magnetic pole of a
different polarity from the other two magnetic poles” with “the third
magnetic pole . . . located inside the magnetic device and between the other
two magnetic poles.” Abstr. Claim 23 is representative of the invention and
is reproduced below.
23. A magnetic device, comprising:
a first magnetic field generator configured to generate a
first magnetic field pattern comprising a first magnetic field of a
first polarity, and a second magnetic field and a third magnetic
field both of a second polarity and located on either side of the
first magnetic field; and
a second magnetic field generator coupled in series with
the first magnetic field generator and configured to generate a
second magnetic field pattern which is substantially identical to
the first magnetic field pattern,
wherein the first and the second magnetic field patterns
form a combined field pattern oriented in sequence second
polarity-first polarity-second polarity-second polarity-first
polarity-second polarity, and
wherein each of the first and second magnetic field
generators comprises:
a base including an upper surface, a lower surface,
and an inner wall and an outer wall that are sandwiched
between the upper surface and the lower surface, wherein
the upper surface includes a first opening defined by the
upper edge of the inner wall, the lower surface includes a
second opening defined by the lower edge of the inner
wall; and
a set of magnets placed to cover a portion of the
inner wall, wherein each of the magnets is positioned
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such that an axis of the magnet connecting the north pole
and the south pole of the magnet forms an angle with
respect to the upper and lower surfaces,
wherein the first magnetic field of a first polarity is
formed substantially between the upper surface and the
lower surface inside the base, the second magnetic field
of the second polarity is formed outward from the first
opening of the base, and the third magnetic field of the
second polarity is formed outward from the second
opening of the base and on the opposite side of the first
magnetic field.
Appeal Br. 17–18 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Schwamm US 6,979,925 B2 Dec. 27, 2005
Ito et al. US 7,924,128 B2 Apr. 12, 2011

REJECTIONS
Claim 23 is rejected under 35 U.S.C. § 112(a), as failing to comply
with the enablement requirement. Non-Final Act. 5.
Claim 23 is rejected under 35 U.S.C. § 112(b), as being indefinite.
Non-Final Act. 6.
Claims 23–30 and 32–37 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ito in view of Schwamm. Non-Final Act. 6–10.

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OPINION
35 U.S.C. § 112(a) (Enablement)
The Examiner rejects claim 23 as failing to comply with the
enablement requirement. Non-Final Act. 5. Specifically, the Examiner lists
the last limitation in claim 23 (“the disputed claim limitation”) reciting
the first magnetic field of a first polarity is formed substantially
between the upper surface and the lower surface inside the base,
the second magnetic field of the second polarity is formed
outward from the first opening of the base, and the third magnetic
field of the second polarity is formed outward from the second
opening of the base and on the opposite side of the first magnetic
field,

and states that the Specification does not provide an enabling disclosure as it
is not clear how the structure in Appellant’s Figures 3 and 4A could
“produce a magnetic field of two different polarities inside and outside the
opening as claimed” and illustrated in Appellant’s Figure 4B. See id. The
Examiner asserts that the device disclosed in Appellant’s Figures 3 and 4A
“would not produce the claimed polarities based on known scientific
principles.” Id. More particularly, the Examiner explains that “Figure 4A
shows the expected field polarities based on common knowledge in the art
and laws of physics,” while
claim [23] is claiming what is shown in figure 4B which includes
both a South and a North polarity on the same side of [a] magnet.
Known laws of physics do not allow this type of result. . . . [and]
applicant did not provide any reasonable evidence or explanation
to show why the claimed structure [(e.g., a base with magnets as
shown in Figure 4A)] produces the unexpected result that is
being claimed.

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See id. In the Answer, the Examiner further supports the rejection by
providing a discussion of Appellant’s submitted evidence that includes
magnetic field projector measurements. See Ans. 3–10. The Examiner finds
that
[Appellant’s] test data demonstrates field configuration that is
the opposite from what is claimed and shown in figure 4B.
Specifically, there is only one change in polarity shown by the
test data which happens close to the center of the device inside
the opening between the front and the back (as clearly shown by
the change from the positive to the negative field values in tables
1–3 of exhibit 3). Figure 4B, on the contrary, shows field change
occurring in two locations: one at each surface of the device with
the center of the device having a constant field of a first polarity
between the surfaces. . . .
the findings of Exhibits 2 and 3 contradict the claimed invention
because in the claimed invention the polarities outside the device
formed outward from the openings of the base are different from
the polarity inside base of the device between the upper and
lower surfaces. Thus there are two changes of polarity claimed,
one at each surface as claimed in claim 23 and shown in figure
4b. Exhibits 2–3 clearly shows[sic] a different magnetic field
pattern [that what is claimed].

Ans. 4, 6.
We address below Appellant’s arguments submitted in the Briefs and
the Examiner’s discussions as they apply to the disclosure in Appellant’s
Specification and Exhibits of magnetic field projector measurements.
Appellant argues the Specification is enabling because “[t]he
information that Applicant has invented is clearly conveyed; what the
Applicant claims as the invention is also clearly conveyed; and the
technology sought to be patented is adequately described.” Appeal Br. 8–9
(citing Spec. Figs. 4A–4B); Reply Br. 7. For example, Appellant explains
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that “Figure 4A was specifically included [in the Specification] to depict
what the expected field patterns would be. . . . [b]ut nonetheless, and what
makes the claimed device so novel, is that the field pattern of figure 4B is
what is produced.” Appeal Br. 8. Appellant further explains the
Specification is enabling because
the description of the presently claimed invention is not
theoretical. If it were, the description would have predicted the
fields of figure 4A and as predicted in the Action. Rather, the
description is based on empirical data gathered once the field
generators (300) and devices, e.g., 710 were built and tested.
Thus, while conventional thought may not have predicted, and
the Examiner may not believe that the field generation device
(300) described and claimed produces the fields of figure 4B, it
does not change the fact that it does, as more than adequately
described.

Appeal Br. 9. Thus, Appellant argues, the only “issue is that the Examiner
does not believe ‘the device disclosed in the specification/drawings . . .
would . . . produce the claimed polarities.’” See Appeal Br. 8.
We acknowledge that Appellant’s Specification contrasts Figure 4A’s
“magnetic device” and “field patterns that would be expected to be
produced,” with “FIG. 4B [which] illustrates exemplary field patterns
actually generated by the magnet configuration of the device.” See Spec.
¶¶ 48–49 (emphases added), 74–77, Figs. 4A–4B.
We are unpersuaded, however, that the Examiner erred in concluding
that the Specification is non-enabling with respect to the disputed claim
limitation. We are unpersuaded particularly because (i) nothing in the
Specification or any claim details how a base with a set of magnets as shown
in Appellant’s Fig. 4A (and claimed in claim 23) can produce the claimed
first magnetic field of a first polarity (corresponding to a “first primary field
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410 having a polarity of magnetic south” in Appellant’s Figure 4B), second
magnetic field of a second polarity (corresponding to a “second primary
field 408 having a polarity of magnetic north” in Figure 4B), and third
magnetic field of the second polarity (corresponding to a “third primary field
406 having a polarity also of magnetic north” in Figure 4B). See Spec.
¶¶ 75–77 (emphases added), Fig. 4B (showing field 410 labelled “S,” field
408 labelled “N,” and “field 406” labelled N created by magnets 402a and
402b in base 302).
As the Examiner explains, known physical laws of magnetism
indicate that magnets 402a and 402b—with their North poles oriented to one
side (right side in Appellant’s Figure 4A) of the base, and South poles to the
opposite base side—would produce a magnetic field with a polarity of North
at the base’s right side, and a polarity of South at the base’s left side shown
in Figure 4A. Non-Final Act. 5; Ans. 9–10. Appellant’s Specification and
claim 23 do not specify whether the base in Figure 4A has particular
magnetic properties, or whether the entire magnetic device in Figures 4A
and 4B is subjected to other magnetic influences. See generally Spec.
Absent such details, the production of a sequence of magnetic fields 406 of
N polarity, 410 of S polarity, and 408 of N polarity (as shown in Appellant’s
Figure 4B and claimed in claim 23) is not credible, for the reasons
articulated by the Examiner. See Non-Final Act. 5; Ans. 9–10.
“[T]o be enabling, the specification of a patent [application] must
teach those skilled in the art how to make and use the full scope of the
claimed invention without ‘undue experimentation.’” Genentech, Inc. v.
Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (emphasis added). Here, we
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agree with the Examiner that the Specification does not teach the skilled
artisan how to build a magnetic device that would produce the magnetic field
pattern of alternating polarities shown in Figure 4B and recited in the
disputed limitation. Non-Final Act. 5; Ans. 9–10.
Appellant’s Specification merely discloses a base of unspecified
magnetic characteristics, with generic permanent magnets inserted therein.
See, e.g., Spec. ¶¶ 68–69, 73–75. Appellant does not identify any passages
in the Specification disclosing how to control or adjust physical device
properties—and which technical properties and features would need to be
controlled—to enable a skilled artisan to make the magnetic device as
claimed in the disputed limitation. With no guidance from Appellant’s
Specification, a person of ordinary skill in the art would be required to
perform unreasonable experimentation in determining the particular
technical features of a base and its inserted magnetic components that would
produce the magnetic field pattern of alternating polarities recited in the
disputed limitation.
For example, the skilled artisan would be required to perform
unreasonable experimentation in determining what kinds of base materials
and/or surrounding magnetic fields would produce the claimed magnetic
field pattern. The skilled artisan would further be required to perform
unreasonable experimentation in determining which technical parameters of
the base and of the permanent magnets would need to be controlled or
adjusted to obtain a magnetic device that would produce the claimed
magnetic field pattern. As such, we concur with the Examiner that
Appellant’s Specification does not provide a disclosure as to how to make
the invention claimed.
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We now turn to Appellant’s arguments regarding the submitted
exhibits, and the Examiner’s discussion of those exhibits. Appellant relies
on Declarations from Ronald D Weiss (Chief Technical Officer of ARkival
Technology Corporation) (Exhibits 1, 2, and 3), and Inventor Thomas A.
Daniel (Exhibits 4, 5, 6, and 7) as allegedly demonstrating that the claimed
invention is enabled. Appeal Br. 9–13, 21; Reply Br. 2–7. The declarations
of Mr. Weiss and the Inventor each make essentially the same arguments,
which are set forth at pages 9–12 of the Appeal Brief and 3–6 of the Reply
Brief.
In particular, Appellant submits that Exhibits 3 and 6 provide
credibility through experimental confirmation of a magnetic device that
generates a “first magnetic field of a first polarity . . . formed substantially
between the upper surface and the lower surface inside the base,” as
claimed. Appeal Br. 10–11; Reply Br. 3–7. Appellant references Table 1 on
page 4 of Exhibit 3, asserting that “[t]he data of exhibit 3 . . . clearly and
unequivocally demonstrate this polarity reversal [of claim 23]” that
“require[s] that within the opening of device the polarity reverses from the
second polarity of the fields outside of the device to the first polarity within
the device.” Reply Br. 6; see also Reply Br. 3–6, 7; Appeal Br. 10–11. We
remain unpersuaded by Appellant’s evidence and arguments because, as the
Examiner explains,
in the claimed invention the polarities outside the device formed
outward from the openings of the base are different from the
polarity inside base of the device between the upper and lower
surfaces. Thus there are two changes of polarity claimed, one at
each surface as claimed in claim 23 and shown in figure 4b.
Exhibits 2–3 clearly shows a different magnetic field pattern
[than claimed]. Specifically, the field pattern within the device
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(between the upper and lower surfaces) is best shown in Table 1
of Exhibit 3 where the peak field in the center of the opening
changes polarity somewhere between 9.5 mm and 14.5 mm from
the back (second opening position) of the device (see Table 1 of
Exhibit 3 . . .). Thus, this position is nowhere near the openings
of the base at the surfaces, but is much closer to the middle of the
device away from the openings, and clearly shows that there are
two polarities between the upper and lower surfaces of the
device, not one as claimed.

Ans. 6. We agree with the Examiner’s assessment of the data in Exhibit 3.
As Tables 1 on page 4 (and the similar Tables 2A–2B and 3 on pages 5–6)
of Exhibit 3 shows, the measured magnetic field inside the base between the
upper base surface (Z0-FACE, see Table 1) and lower base surface (Z4-BACK)
gradually changes from a positive value to a negative value—as would be
expected for magnetic field lines of a magnet with the N polarity at the
base’s upper surface (i.e., right side in Figure 4A of the Specification) and S
polarity at the base’s lower surface (i.e., left side in Figure 4A). See Ex. 3;
see also Spec. Fig. 4A. Appellant’s submitted evidence does not show the
creation of a “first magnetic field of a first polarity [(e.g., S polarity of field
410 in Figure 4B)] . . . formed substantially between the upper surface and
the lower surface inside the base,” the “first polarity” being different from a
“second polarity” (N polarity in Figure 4B) of a “second magnetic field . . .
formed outward from the first opening of the base,” as claimed. Ans. 4–6,
9–10. Appellant’s submitted evidence in Exhibits 3, 6, and 7 also does not
teach the skilled artisan how to make a magnetic device that would produce
the claimed “first magnetic field of a first polarity . . . formed substantially
between the upper surface and the lower surface inside the base.”
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Thus, Appellant’s submitted evidence and arguments have not
persuaded us the Examiner erred in concluding that the claimed “first
magnetic field of a first polarity . . . formed substantially between the upper
surface and the lower surface inside the base” is not enabled.
Appellant further submits that Exhibits 2 and 5 provide credibility
through experimental confirmation of a magnetic device that generates a
“second magnetic field of the second polarity . . . formed outward from the
first opening of the base” and a “third magnetic field of the second polarity
. . . formed outward from the second opening of the base and on the opposite
side of the first magnetic field [of the first polarity],” as claimed. Appeal Br.
9–11; Reply Br. 3–7. Appellant references Table 1 on page 6 of Exhibit 2,
asserting “[the] data demonstrates that the magnetic fields above and below
the device are of a first polarity positively oriented away from device.”
Reply Br. 5; see also Reply Br. 3–4, 7; Appeal Br. 10–11. We remain
unpersuaded by Appellant’s evidence and argument because, as the
Examiner explains,
in the claimed invention the polarities outside the device formed
outward from the openings of the base are different from the
polarity inside base of the device between the upper and lower
surfaces. Thus there are two changes of polarity claimed, one at
each surface as claimed in claim 23 and shown in figure 4b.
Exhibits 2–3 clearly shows[sic] a different magnetic field pattern
[than claimed]. . . .
data from Table 1 of Exhibit 2 measuring magnetic field formed
outward from the openings clearly shows continuation of the
polarities from Table 1 of Exhibit 3 without any further changes
in polarities.

Ans. 6–7. We agree with the Examiner’s assessment of the data in Exhibit
2. As the data in Table 1 on page 6 of Exhibit 2 shows, the measured
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magnetic field outward from the first opening of the base (Z-plane Distance
from FACE) and outward from the second opening of the base (Z-plane
Distance from BACK) changes from a positive value (3080 at 1 mm Z-plane
Distance from FACE) to a negative value (−1500 at 1 mm Z-plane Distance
from BACK)—as would be expected for magnetic field lines of a generic
(e.g., permanent) magnet oriented with one polarity (N) at the base’s upper
surface (i.e., right side in Figure 4A of the Specification) and the other
polarity (S) at the base’s lower surface (i.e., left side in Figure 4A). See Ex.
2; see also Spec. Fig. 4A. This test data does not show creation of “a second
magnetic field and a third magnetic field both of a second polarity and
located on either side of the first magnetic field [of the first polarity],” with
the “third magnetic field of the second polarity . . . formed outward from the
second opening of the base and on the opposite side of the first magnetic
field,” as claimed. Ans. 4, 6–7, 10.
We note that Table 1 on page 6 of Exhibit 2 also shows a measured
magnetic field outward from the second opening of the base (Z-plane
Distance from BACK) of a positive value (1190 at 1 mm Z-plane Distance
from BACK, at “Coordinate Center ONLY” of (0, 0), see 4th and 5th
columns of Table 1). See Ex. 2. Appellant references this magnetic field
value of 1190 as support for the claimed “third magnetic field of the second
polarity” as the second magnetic field (of positive polarity in Table 1). See
Appeal Br. 10; Reply Br. 3–5 (“As illustrated by the peak field
measurements along the Z-plane center on page 6 . . . of Exhibit 2 and the
combined data tables on pages 9-17 of Exhibit 2, magnetic fields external to
the device are of a decreasing magnitude as a function of the distance from
the device” and “confirm[] the shape of the external device fields illustrated
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in FIG.4B of the present application”). We remain unpersuaded that the data
point of 1190 supports and enables the disputed claim limitation. We are
unpersuaded because, although Table 1 of Exhibit 2 states that the value of
1190 is at 1 mm Z-plane Distance from BACK at “Coordinate Center” of
(0, 0), the actual BACK side measurements (as shown on page 5 of Exhibit
2) do not indicate a positive magnetic value at coordinate center (i.e., (0, 0)).
See Ex. 2, 5. Rather, the BACK side measurements on page 5 of Exhibit 2
show negative measured magnetic field values (see vertical axis values
shown on page 5) at coordinate center locations of 0 (see horizontal axis as
shown on page 5)—casting doubt on the significance and accuracy of the
reported positive value of 1190 in Table 1 at 1 mm Z-plane Distance from
BACK at “Coordinate Center ONLY” of (0, 0). See Ex. 2, Table 1.
In addition, we note the measured magnetic field data in Exhibits 2, 5,
and 7 is insufficient to show enablement of the disputed limitation also
because the data does not teach the skilled artisan how to make a magnetic
device that would produce the claimed “third magnetic field of the second
polarity [as the second magnetic field] . . . formed outward from the second
opening of the base and on the opposite side of the first magnetic field.”
Thus, Appellant’s submitted evidence and arguments have not
persuaded us the Examiner erred in concluding that the claimed “third
magnetic field of the second polarity [as the second magnetic field] . . .
formed outward from the second opening of the base and on the opposite
side of the first magnetic field [of first polarity]” is not enabled.
As Appellant’s arguments have not persuaded us of error in the
Examiner’s enablement rejection of independent claim 23, we sustain the
Examiner’s rejection for lack of enablement under 35 U.S.C. § 112(a), of
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independent claim 23.
35 U.S.C. § 112(b) (Indefiniteness)
The Examiner concludes that the three polarities recited in claim 23
render the claim indefinite as it is unclear “how the three polarities claimed
can be produced.” Non-Final Act. 6; see also Ans. 11–12 (referencing the
known nature of magnetic fields as compared to the claimed polarity
patterns, and citing sections 1.2–1.5 of the EPO Search Report dated August
13, 2019, which contrasts the known structure of magnetic fields with the
claimed polarity patterns).
Appellant argues the Examiner’s § 112(b) rejection is improper as
“the actual evidence in the record[] reveal[s] they [(the claimed fields)] are
not only possible but in fact produced by a device constructed as described
and claimed in the present application.” Appeal Br. 13; see also Reply Br.
2.
Appellant’s claim 23 recites a field generator that generates “a first
magnetic field pattern comprising a first magnetic field of a first polarity,
and a second magnetic field and a third magnetic field both of a second
polarity,” with “the first magnetic field of a first polarity . . . formed
substantially between the upper surface and the lower surface inside the
base,” “the second magnetic field of the second polarity . . . formed outward
from the first opening of the base,” and “the third magnetic field of the
second polarity . . . formed outward from the second opening of the base and
on the opposite side of the first magnetic field.” Appeal Br. 17–18 (claim 23
(emphases added)). We concur with the Examiner that the use of the terms
“first magnetic field of a first polarity,” “second magnetic field of the second
polarity,” and “third magnetic field of the second polarity” renders the claim
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indefinite. As the Examiner notes, it is known in magnetic technology arts
that a magnetic field is defined by magnetic field lines that follow the
direction of the field from a North (“+” or “N”) pole to a South (“−” or “S”)
pole. See Non-Final Act. 5.4 Known laws of physics indicate that magnetic
poles always come in North–South pairs, and magnets (such as Appellant’s
permanent magnets described at Spec. ¶¶ 68, 73, 100) exist only in the form
of magnetic dipoles, whereby a “[m]agnetic polarity refers to the orientation
of these poles in space.”5 A magnetic monopole (e.g., a North or South
magnetic pole, by itself) is not known to exist.6 In contrast to these known
technical principles and physical laws, Appellant’s Specification and Figure
4B describe the claimed “first magnetic field of a first polarity” as a “first
primary field 410 having a polarity of magnetic south,” the claimed “second
magnetic field of the second polarity” as a “second primary field 408 having
a polarity of magnetic north,” and the claimed “third magnetic field of the
second polarity” as a “third primary field 406 having a polarity also of
magnetic north.” See Spec. ¶¶ 75–76 (emphases added); see also Spec. Fig.
4B (showing field 410 labelled “S,” field 408 labelled “N,” and “field 406”
labelled N).

4 See, e.g., http://hyperphysics.phy-astr.gsu.edu/hbase/magnetic/elemag.html
(last accessed July 17, 2021).
5 See
https://whatis.techtarget.com/definition/polarity#:~:text=In%20a%20perman
ent%20magnet%2C%20a,of%20these%20poles%20in%20space (last
accessed July 17, 2021); see also https://phys.org/news/2016-08-mysterious-
magnetic-monopole.html (last accessed July 17, 2021) and
https://www.forbes.com/sites/startswithabang/2016/07/08/why-doesnt-our-
universe-have-magnetic-monopoles/?sh=dd49101380b7 (last accessed July
17, 2021).
6 See n.5.
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Since a magnetic field is defined by magnetic field lines that follow
the direction of the field from N to S, and magnetic polarity generally refers
to an orientation of the paired N–S poles in space, it is unclear how
Appellant’s field 410 can have “a polarity of magnetic south,” or how fields
408 and 406 can have “a polarity of magnetic north.” See Spec. ¶¶ 75–77
(emphases added) and Fig. 4B. In other words, Appellant’s Specification
and claim 23 appear to assign one pole (S, N, and N, respectively) to each of
the first, second, and third magnetic fields, even though magnetic monopoles
are not known to exist.7 Thus, Appellant’s Specification and claim 23 do
not provide a technically-coherent guide as to the bounds of the terms “first
magnetic field of a first polarity,” “second magnetic field of the second
polarity,” and “third magnetic field of the second polarity,” such that the
technical meaning of these claim terms is unclear. For the same reasons, it
is unclear what the claim limitation of “a first magnetic field pattern
comprising a first magnetic field of a first polarity, and a second magnetic
field and a third magnetic field both of a second polarity” means, and what
technical effect or arrangement would this limitation encompass. We are
therefore not persuaded of error in the Examiner’s conclusion that the
limitations requiring “a first magnetic field of a first polarity” and “a second
magnetic field and a third magnetic field both of a second polarity” render
claim 23 indefinite.
As Appellant’s arguments have not persuaded us of error in the
Examiner’s indefiniteness rejection of claim 23, we sustain the Examiner’s
rejection of independent claim 23.

7 See n.5.
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35 U.S.C. § 103 Rejection
Having determined, supra, that claim 23 is indefinite, we cannot
consider the rejection of this claim under 35 U.S.C. § 103, because to do so
would require speculation as to the scope of the claim. Presently, claim 23
(and its dependent claims, by virtue of their dependency) are indefinite and
the metes and bounds of these claims cannot be ascertained. Our reviewing
court has said that it is wrong to rely upon speculative assumptions as to the
meaning of claims when considering a rejection over prior art. In re Steele,
305 F.2d 859, 862–63 (CCPA 1962) (holding the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a) because the rejection
was based on speculative assumptions as to the meaning of the claims).
Accordingly, we do not reach the obviousness rejection applied to
claims 23–30 and 32–37. Because the claims are indefinite, we do not know
what they cover, and we decline to engage in speculation. Thus, we
procedurally reverse the § 103 rejection of claims 23–30 and 32–37 without
reaching the merits of that rejection.

CONCLUSION
The Examiner’s decision rejecting claims 23–30 and 32–37 under
35 U.S.C. § 112(a) is AFFIRMED.8

8 Although the Examiner references only independent claim 23 in the
§ 112(a), enablement rejection (see Non-Final Act. 5), all dependent claims
24–30 and 32–37 inherit the enablement defect of claim 23 by virtue of their
dependency. We consider the Examiner’s omission of the dependent claims
from the statement of the § 112(a) rejection to be a clerical and
typographical error, and understand the dependent claims to have been
included in the Examiner’s enablement rejection, by virtue of their
Appeal 2020-006213
Application 15/001,187

18
The Examiner’s decision rejecting claims 23–30 and 32–37 under
35 U.S.C. § 112(b) is AFFIRMED.9
The Examiner’s decision rejecting claims 23–30 and 32–37 under
35 U.S.C. § 103 is REVERSED, pro forma.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23–30,
32–37
112(a) Enablement 23–30,
32–37

23–30,
32–37
112(b) Indefiniteness 23–30,
32–37

23–30,
32–37
103 Ito, Schwamm 23–30,
32–37
Overall
Outcome
23–30,
32–37

dependency from claim 23, and we include these claims in the grouping.
See 37 C.F.R. § 41.37(c)(1)(iv).
9 Although the Examiner references only independent claim 23 in the
§ 112(b) rejection (see Non-Final Act. 6), all dependent claims 24–30 and
32–37 inherit the indefiniteness defect of claim 23 by virtue of their
dependency. We consider the Examiner’s omission of the dependent claims
from the statement of the § 112(b) rejection to be a clerical and
typographical error, and understand the dependent claims to have been
included in the Examiner’s indefiniteness rejection, by virtue of their
dependency from claim 23, and we include these claims in the grouping.
See 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2020-006213
Application 15/001,187

19
TIME PERIOD FOR 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