E. Michael. Campbell et al.

Patent Trials and Appeals Board

Sep 23, 2019

14057922 - (D) (P.T.A.B. Sep. 23, 2019)

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.
14/057,922 10/18/2013 E. Michael Campbell 009130.00002 1472
22908 7590 09/23/2019
BANNER & WITCOFF, LTD.
71 SOUTH WACKER DRIVE
SUITE 3600
CHICAGO, IL 60606
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
eofficeaction@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte E. MICHAEL CAMPBELL, DAVID EIMERL, and
WILLIAM F. KRUPKE

Appeal 2018-000646
Application 14/057,922
Technology Center 3600
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Logos Technologies LLC,
appeals from the Examiner’s decision to reject claims 1 and 3–26. Final Act.
1. An oral hearing was held on August 8, 2019. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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 Logos
Technologies LLC. Appeal Br. 1.
Appeal 2018-000646
Application 14/057,922
2
CLAIMED SUBJECT MATTER
The claims are directed to a flexible driver laser for inertial fusion
energy. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
Claim 1: A laser fusion system comprising:
a plurality of at least 512 pulsed lasers that emit laser
pulses, the plurality of pulsed lasers each having an exit aperture,
the plurality of pulsed lasers configured such that all of the
plurality of pulsed lasers emit a laser pulse that irradiates a target
within a same time window of less than about 100 ns,
at least four of the plurality of pulsed lasers having
different central optical frequencies such that the central optical
frequencies of their respective emitted laser pulses differ by more
than l THz, the central optical frequency of each of the plurality
of pulsed lasers being correlated with a direction of propagation
toward the target of the corresponding laser pulses to contribute
to an increased uniformity in a k-space representation of a local
electric field of a laser drive at the target.

REJECTIONS2
Claims 1, 8–12, 19, 21, 23, and 25 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement. Final
Act. 11.
Claims 13 and 17 are rejected under 35 U.S.C. § 112, second
paragraph. Final Act. 13.

2 The Examiner withdrew the rejections under 35 U.S.C. § 103(a). Ans. 2.
Appeal 2018-000646
Application 14/057,922
3
OPINION
Enablement
The Examiner initially indicates in the statement of rejection that the
rejection under 35 U.S.C. § 112, first paragraph is for failing to comply with
the enablement requirement. Final Act. 11, para. 32. However, the Examiner
immediately, and repeatedly, thereafter asserts Appellant has failed to
demonstrate possession of the invention, which is the standard affiliated with
the written description, as opposed to the enablement, requirement of 35
U.S.C. § 112, first paragraph. Final Act. 11 (“there exists absolutely no
evidence of constructive possession at the time of filing”); Final Act. 12
(quoting from a portion of Falko-Gunter Falkner v. Inglis, 448 F.3d 1357,
1365 (Fed. Cir. 2006) discussing the written description requirement.).
The enablement requirement of 35 U.S.C. § 112, first paragraph, is
separate and distinct from the description requirement. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991); MPEP § 2161. The test for
sufficiency with the written description requirement is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had actual or constructive possession of the
claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citations omitted); MPEP
§ 2163. On the other hand, the standard for determining whether the
specification meets the enablement requirement was cast in the Supreme
Court decision of Minerals Separation v. Hyde, 242 U.S. 261, 270 (1916)
which postured the question: is the experimentation needed to practice the
invention undue or unreasonable? That standard is still the one to be applied.
Appeal 2018-000646
Application 14/057,922
4
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); MPEP § 2164 (discussing
the Wands factors).
Although the standards for determining compliance with the written
description and enablement requirements are separate and distinct, there are
important policy considerations underlying both of these requirements. The
so-called quid-pro-quo of the patent grant ensures a patentee’s right to
exclude does not overreach the contribution to the art that the public receives
from the patent’s disclosure. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
at 1353–4; MPEP § 2162. It is vital to the purpose of the patent system that
patents do not “preempt the future before it has arrived.” Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d at 1353 (citation omitted). Although the
Examiner’s initial rejection appears to conflate the standards for compliance
with the written description and enablement requirements of 35 U.S.C.
§ 112, first paragraph, in the Final Action, the Examiner, in the statement of
rejection, raises some valid concerns related to these underlying policy
considerations. These concerns are particularly relevant here because the
field of endeavor involves a highly sought-after, yet thus far elusive,
technology having the ultimate goal of generating a controlled and
sustainable thermonuclear fusion reaction. See Spec. 1–11.
Paragraphs 33–39 on pages 11 to 13 of the Final Action set forth the
initial basis for the Examiner’s enablement rejection. Aside from the
Examiner’s assertion regarding the alleged absence of evidence showing
possession, there does not appear to be any dispute regarding the contents of
paragraph 33 of the Final Action in which the Examiner explains the
National Ignition Facility (NIF) at the Lawrence Livermore National
Laboratory (LLNL) in Livermore, California represents the state of the
present art, involved significant time and expense to construct, and
Appeal 2018-000646
Application 14/057,922
5
encountered various unforeseen obstacles. See Spec. 8–11. In paragraph 24
the Examiner asserts Appellant claimed to have developed a system at least
three times more powerful than that at NIF. Final Act. 11–12. Although this
would be a concern if true, we agree with the Appellant that the Examiner
has failed to provide adequate evidence or explanation supporting the
Examiner’s conclusion in this regard. Appeal Br. 19–20.
In paragraph 36 of the Final Action the Examiner questions whether
512 off-the-shelf diode lasers could produce enough power to produce an
inertial confinement reaction and whether one could align and synchronize
the firing of those lasers adequately. Again, the Examiner fails to adequately
explain, with technical reasoning or evidentiary support, specifically why a
skilled artisan would not know how to achieve the power, alignment and
synchronization requirements necessary to satisfy the claim language. In
paragraph 37 the Examiner asserts lasers do not yet exist to carry out the
invention.
The inventor, David Eimerl, has provided an example of at least one
commercially available laser purported to satisfy the power requirements
necessary for the invention. Eimerl Dec’l para. 13. The Declaration goes on
to address the other concerns raised by the Examiner in paragraph 36
regarding alignment and synchronization of the large number of lasers.
Eimerl Dec’l paras. 14–17. The Examiner’s only response regarding the
Declaration and the subject matter in question is to assert that the Eimerl
declaration was not entered into the record during prosecution. Ans. 10.
Appellant points out (Reply Br. 17) the Eimerl Declaration was entered with,
and referenced in, Appellant’s remarks of March 28, 2016. It may not have
been separately indexed in the Image File Wrapper (IFW) as an affidavit or
declaration under 37 C.F.R. § 1.132, as is often done, but we are not
Appeal 2018-000646
Application 14/057,922
6
apprised of any specific reasons that justify the Examiner’s refusal to
consider the Eimerl Declaration. A coauthor on the “StarDriver” publication
(see Eimerl Dec’l 22), but not a named inventor on the present application,
Robert L. McCrory also submitted a declaration discussing some of these
issues. McCrory dec’l paras. 10–12. The McCrory declaration, though
initially discussed with regard to the now-withdrawn obviousness rejection,
does not appear to be discussed by the Examiner in connection with the
enablement rejection. Reply Br. 6.
Paragraph 38 of the Final Action asserts regarding claims 8–11, 21,
and 25:
there exists no objective proof that the multiple aperture system
can provide spatial uniformity at values of 1% and 0.25% rms.
While the [S]pecification makes broad statements,[] very little
attention is paid to how one of ordinary skill would go about
actually optimizing spatial uniformity for the beamlet design.[]
Final Act. 13 (citations to the Specification omitted). It is true that a
specification will fail to comply with the enablement requirement if it
merely states a result to be achieved and one skilled in the art, based on the
specification and the knowledge generally available to them would be
unable to determine how to achieve that result without undue
experimentation. Here, the Examiner does not provide any cogent technical
explanation or supporting evidence to demonstrate why one skilled in the art
would not be able to produce the particular pulse uniformity recited in
claims 8, 9, 21, and 25. The Examiner also groups claims having differing
limitations so it is not clear precisely what subject matter the Examiner
considered non-enabled with regard to claims 10 and 11 specifically. Appeal
Br. 37. Appellant relies on, for enabling disclosure regarding spatial
uniformity, paragraphs 89 and 150–173 of the Specification and Figures 9
Appeal 2018-000646
Application 14/057,922
7
and 10. Appeal Br. 37–42. We are unable to find any analysis from the
Examiner regarding the relied upon portion of Appellant’s disclosure.
In the response to arguments section of the Final Action and the
Examiner’s Answer the Examiner discusses the Wands factors. Final Act. 4–
7; Ans. 5–13. Appellant also presents an analysis of the Wands factors.
Appeal Br. 27–35; Reply Br. 8–17.
On page 5 of the Answer, considering the breadth of the claims, the
Examiner takes issue with the absence of any specific recitation regarding
the type of laser employed and other various properties of that laser.
However, the Examiner’s questions are not coupled with any explanation as
to why these specific characteristics must be included to narrow the scope of
the claim so as to be commensurate with the disclosure. The claims are
indeed broad, including generic and functional recitations without limitation
to very specific structure. However, the Examiner’s analysis does not point
to specific claim elements and provide any persuasive evidence or
explanation as to why using generic or functional language is inappropriate
in these particular circumstances.
On page 6 of the Answer, regarding the state of the prior art, the
Examiner questions the ability to align the numerous lasers. The Examiner
points to the difficulties associated with NIF lasers. However the Examiner
does not provide any evidence or technical explanation regarding alignment
specifically or why a “technological breakthrough” is needed to achieve
such alignment.
On page 7 of the Answer the Examiner makes a generic assertion,
again without supporting evidence or technical reasoning to explain why,
skilled artisans would need more direction than is provided by the
Specification or than is generally available to the skilled artisan, to select,
Appeal 2018-000646
Application 14/057,922
8
tune, and operate a system having the number of lasers recited. There is no
evidence before us to demonstrate that there is a simple and direct
correlation between the number of lasers employed and the degree of
difficulty in selecting, tuning, and operating them.
On pages 7–9 of the Answer the Examiner points to various
unforeseen issues encountered at NIF to determine the level of predictability
in the art is low. When it comes to the ultimate goal of achieving ignition or
a self-sustaining thermonuclear reaction, we agree the level of predictability
is low. However, it is not clear to us that this should be the exclusive focus
of the predictability inquiry. A device could be constructed with ignition as
the ultimate goal and nevertheless have uses other than that such as for
educational or research purposes. Reply Br. 12–14. The claim is directed to a
“laser fusion system” and is arguably incomplete if it lacks the necessary
elements for arriving at a system that produces fusion. The Examiner does
not assert that fusion reactions have not been achieved at NIF and the
Examiner does not identify any elements missing from the claim that are
necessary to achieving fusion. The Examiner does not present any analysis
as to why Appellant has not enabled at least a “laser fusion system” per se.
The Examiner has not presented, and we are unaware of, any legal authority
for the Examiner’s assertion that what must be enabled here is use for the
specific goal of ignition.
Neither the Examiner nor the Appellant present much discussion
concerning the amount of direction provided by the inventor or the existence
of working examples. Ans. 9; Reply Br. 14–15. The Examiner basically
summarizes some of the points discussed above on page 10 of the Answer.
We are mindful that the claims before us are broad, and the
technology involved complex, elusive, and highly sought-after. As PTO
Appeal 2018-000646
Application 14/057,922
9
examiners are not typically in a position to obtain and test devices,
particularly devices such as these, or solicit expert testimony, we are also
mindful that addressing, with particularity, the declarations and the plethora
of other articles and evidence of record is quite burdensome. However, the
Examiner does not, in our view, adequately identify specific aspects of the
claim language and adequately explain why, in light of the Specification,
declarations, and other evidence of record relied upon by Appellant, those
aspects cause the claim to encompass subject matter that is not enabled. See
MPEP § 2164.04–05. Thus, on the record presently before us, we conclude
the Examiner has not adequately articulated sufficient reasoning to conclude
that Appellant’s Specification fails to comply with the enablement
requirement.

Indefiniteness
Claims 13 and 17 are rejected as indefinite because the term
“substantially different” is, according to the Examiner, a term of degree with
no standard provided in the Specification for ascertaining the degree
necessary to satisfy the claim language. Final Act. 13; see MPEP
§ 2173.05(b).
Appellant directs our attention to paragraph 171 of the Specification
for understanding what is meant by “pulse shapes [that] . . . are substantially
different” as recited in claim 13. Appeal Br. 44. In the Answer the Examiner
indicates this paragraph is not sufficient to explicitly define “substantially
different” and takes an alternate position that “different” is not a term that
can be modified by a term of degree. Ans. 11. An explicit definition is not
necessarily required for definiteness here. It is only necessary that one
understands the meaning of claim terms when those terms are read in light of
Appeal 2018-000646
Application 14/057,922
10
the Specification. See MPEP § 2173.05(b)(I). Further, we cannot agree with
the Examiner’s position that things are either different or not. Different is a
term that can be subject to varying degrees from very similar or nearly
identical to completely disparate. The relevant inquiry here is whether, in
light of the Specification, one skilled in the art would know when pulse
shapes do or do not fall into the category of “substantially different.” There
are various well-known pulse shapes that pulses can be categorized into.3
Pulses may have significant or insignificant irregularities or deviations from
these. The Examiner does not present any evidence that the dimensions of a
shape (Ans. 12–13) would obfuscate categorization of the shape itself. The
Examiner appears to be reading the claim as though it recites “pulses which
are ‘substantially different’” (Ans. 11 n. 15). That is not what claim 13
recites. The Examiner has not presented sufficient evidence or reasoning to
demonstrate that one skilled in the art could not compare pulse shapes and
ascertain with a reasonable degree of certainty when they are, or are not,
“substantially different.”
Appellant directs our attention to paragraph 168 of the Specification
for understanding what is meant by “pulses irradiate . . . at substantially
different times” as recited in claim 17. Appeal Br. 44–45. Paragraph 168
provides a more definitive standard than paragraph 171:
The pulses may be considered to irradiate the target substantially
simultaneously when the pulses irradiate the target within a close
enough window of time such that the target implodes to create a
controlled fusion reaction as described herein, even though the
pulses may not irradiate the target literally simultaneously . . .

3 See, e.g., https://en.wikipedia.org/wiki/Pulse_(signal_processing) last
accessed Sept. 4, 2019.
Appeal 2018-000646
Application 14/057,922
11
also irradiating the target at substantially different times such the
pulses are time sequenced. . . .
This paragraph indicates that the nature of differences is to be judged based
on the pulses’ influence on the target and the sequencing capabilities of the
lasers. The Examiner does not appear to provide any further analysis on this
limitation in the Answer. We are not apprised as to why a skilled artisan
could not compare the arrival times of pulses at a target and ascertain with a
reasonable degree of certainty in this particular context whether they should
be categorized as being substantially different or not.
For the foregoing reasoning we do not sustain the indefiniteness
rejections.
DECISION
The Examiner’s rejections are reversed.
REVERSED