Calagen, Inc.

Patent Trials and Appeals BoardNov 26, 2021

2021004334 (P.T.A.B. Nov. 26, 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. 16/137,338 09/20/2018 David Reginald Carver 9334-99587-02 1043 24197 7590 11/26/2021 KLARQUIST SPARKMAN, LLP 121 SW SALMON STREET SUITE 1600 PORTLAND, OR 97204 EXAMINER AYAD, TAMIR ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 11/26/2021 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): docketing@klarquist.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID REGINALD CARVER, SEAN WILLIAM REYNOLDS, and SEAN CLAUDIUS HALL ____________ Appeal 2021-004334 Application 16/137,338 Technology Center 1700 ____________ Before TERRY J. OWENS, KAREN M. HASTINGS, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, 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 13, 15, 16, 18, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Calagen, Inc. as the real party in interest. Appeal Br. 2. Appeal 2021-004334 Application 16/137,338 2 BACKGROUND The invention relates to “methods and apparatus for converting thermal energy into electrical energy.” Spec. ¶ 4. The Specification describes a circuit including an electrical pulse generator, an electrical element such as a simple copper wire, and a load. Id. ¶¶ 5, 32. According to the Specification, applying electrical pulses to the electrical element causes the element to cool, absorb ambient heat, and convert the absorbed ambient heat to electrical energy, thereby increasing the power delivered to the load. Id. ¶¶ 32–34; see also ¶ 53 (“Pulsing of the pulse generator 102 applied to the electrical element 104 causes the electrical element to cool. The absorbed heat is thereby converted to electrical energy.”). Claim 13 is the sole independent claim on appeal and reads as follows: 13. A method comprising: generating, using a pulse generator, a continuous stream of electrical pulses as an input to a circuit, wherein the circuit comprises a first portion including a load, and a second portion comprising an electrical element connected to the load and coupled to the pulse generator, wherein the electric element is a heat sink having a greater surface area than wires coupling the electric element to the load and coupling the electric element to the pulse generator, the greater surface area allowing for absorption of heat; absorbing heat within the electrical element; converting the absorbed heat into electrical energy to increase a power of the continuous stream of electric pulses; and applying the continuous stream of electric pulses with increased power to the load; wherein the first portion of the circuit further comprises a primary oscillator and a secondary oscillator connected in series with the electrical element and wherein a changing voltage of the electrical pulses causes the primary oscillator to oscillate at a first frequency and the secondary oscillator to oscillate at a Appeal 2021-004334 Application 16/137,338 3 second frequency greater than the first frequency, wherein the electrical pulses have a change in voltage with respect to time of at least 100 volts per second. Appeal Br. 15 (Claims Appendix). REJECTIONS I. Claims 13, 15, 16, 18, and 21 stand rejected under 35 U.S.C. § 101 for lack of utility. II. Claims 13, 15, 16, 18, and 21 stand rejected under 35 U.S.C. § 112(a) for lack of enablement. OPINION Enablement under 35 U.S.C. § 112 and the utility requirement of 35 U.S.C. § 101 are closely related. In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000). The utility requirement of § 101 requires that the claimed invention is operable to achieve a useful result. Id. Where the invention is inoperative, the claims also fail to satisfy the enablement requirement of § 112 because one skilled in the art cannot practice the invention. Id. With regard to both rejections on appeal, Appellant argues claims 13, 15, 16, 18, and 21 as a group. Appeal Br. 10 (“As to the issues under 35 U.S.C. § 112, claims 13, 15–16, 18, and 21 stand or fall together.”); id. at 13 (“As to the issues under 35 U.S.C. § 101, claims 13, 15–16, 18, and 21 stand or fall together.”). We select independent claim 13 as representative of the rejected claims. Claim 13 recites, inter alia, the steps of “absorbing heat within the electrical element” and “converting the absorbed heat into electrical energy.” The Examiner finds the Specification does not describe an operative method Appeal 2021-004334 Application 16/137,338 4 for converting heat to electrical energy. Final Act. 2 (“The manner in which heat is converted to electricity in the specification is not operative.”). According to the Examiner, “Copper wires are not known to convert ambient heat to electricity, and applicant provides no evidence showing the conversion of thermal energy from ambient heat to electrical energy with an electrical element such as a copper wire.” Id. at 4. See also Ans. 12 (“[T]he Examiner maintains skepticism with regard to the claim that heat absorbed from ambient air is being converted to electricity with simple materials such as a copper wire in a manner which is not supported by known scientific principles.”). The Examiner additionally finds an electrical circuit such as that encompassed by claim 13 necessarily would generate heat “as all electrical circuits do through the inherent resistance of the component parts.” Id. at 14. Thus, the Examiner also expresses skepticism regarding the Specification’s disclosure that an applied electrical pulse could cause a simple wire to cool and, consequently, absorb ambient heat. Appellant argues the Specification describes how to construct a circuit as depicted in Figure 4, and that “the claim is reasonably narrow and targeted to FIG. 4.” Appeal Br. 10. Appellant refers to two Declarations filed during prosecution: the Carver Declaration dated September 4, 2019, and the Young Declaration dated March 13, 2020. See id. at 8–9. Referring to the Carver Declaration, Appellant contends Dr. Carver “built the circuit of FIG. 5, and filed a declaration . . . stating that the circuit works and converts heat to electrical energy.” Id. at 8. Referring to the Young Declaration, Appellant further contends Dr. Young “observed the same circuit of FIG. 5 and confirmed that it worked.” Id. at 9. Appellant argues “the Examiner has provided no evidence that contradicts the declarations of Professor Young or Appeal 2021-004334 Application 16/137,338 5 Dr. Carver that the circuit works.” Id. at 11. See also Reply Br. 2 (arguing the Examiner “has not presented any evidence whatsoever”). Appellant’s arguments are not persuasive of reversible error. Appellant does not dispute the Examiner’s finding that the described step of generating electrical energy through mere heating of a copper wire is neither supported by known scientific principles nor consistent with generally observed characteristics of electrical circuits. Nor does Appellant challenge the Examiner’s finding that applying electrical pulses to a copper wire would have been expected to cause the wire to heat, not cool. To the contrary, Dr. Young characterizes his observation of cooling in Dr. Carver’s circuit as “unusual in electrical circuits.” Young Decl. ¶ 12. See also Appeal Br. 12– 13 (“Why a continuous wave of electrical pulses with sufficient dv/dt makes a wire cool and absorb heat can’t be determined with virtual certainty.”). Thus, Appellant does not show error in the Examiner’s initial determination that claim 13 encompasses a described embodiment that lacks utility and enablement. See In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (“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.’”) (quoting In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)). Where the Examiner sets forth such a prima facie case, the evidentiary burden shifts to Appellant to submit “evidence of operability that would be sufficient to overcome reasonable doubt.” Swartz, 232 F.3d at 864. Here, Appellant relies on the Carver and Young Declarations. Appeal Br. 10 (“[T]wo declarations have been submitted indicating that the circuit works.”). Appeal 2021-004334 Application 16/137,338 6 In the Carver Declaration, Dr. Carver declares he “constructed a circuit in accordance with FIG. 5 of the application.” Carver Decl. ¶ 4. Included in the constructed circuit were a capacitor and an inductor, forming an LC circuit. Id. ¶ 5. Dr. Carver reports calculated power values of 30.58mW and 82.4mW at the power supply and load, respectively. Id. ¶ 7. Dr. Young declares he observed the circuit of Figure 5 constructed by Dr. Carver and, in operation, “observed that the measured electrical energy output of the circuit was greater than the measured electrical energy input into the circuit.” Young Decl. ¶ 11. Dr. Young further declares he “observed that a copper conductor in the circuit cooled.” Id. ¶ 12. While the Carver and Young Declarations attest to perceived operability of the circuit referenced in those Declarations, they do not persuade us of reversible error in the Examiner’s rejections. Both Declarations concern a circuit constructed in accordance with Figure 5 of the Specification. Figure 5 depicts a circuit which includes “capacitor 502 and an inductor 504 to form an LC or tank circuit.” Spec. ¶ 39; see Carver Decl. Exh A. Claim 13 lacks any reference to either a capacitor or inductor. Conversely, claim 13 recites “a primary oscillator and a secondary oscillator connected in series with the electrical element,” and further requires that the secondary oscillator oscillates at a frequency greater than that of the first oscillator. Appellant does not identify such primary and secondary oscillators in the circuit considered in the Carver and Young Declarations. Nor does Appellant present any discussion regarding the foregoing differences between the circuit considered in the relied-upon Declarations and that which is recited in claim 13. As such, we are not persuaded that the Appeal 2021-004334 Application 16/137,338 7 statements presented in the Carver and Young Declarations are sufficient to demonstrate operability of the claimed method.2 For the foregoing reasons, Appellant’s arguments and evidence do not identify reversible error in the Examiner’s rejection of claim 13 for lack of utility and lack of enablement. The rejections under 35 U.S.C. § 101 and 112, therefore, are sustained. CONCLUSION The Examiner’s decision rejecting claims 13, 15, 16, 18, and 21 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13, 15, 16, 18, 21 101 Utility 13, 15, 16, 18, 21 13, 15, 16, 18, 21 112(a) Enablement 13, 15, 16, 18, 21 Overall Outcome 13, 15, 16, 18, 21 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 2 Moreover, Appellant does not provide any explanation as to how the reported measurements and calculations corresponding to a single test are sufficient to demonstrate that the reported results are reproducible and reliable.