Ex Parte Aylor

Patent Trial and Appeal Board

Aug 23, 2017

11706676 (P.T.A.B. Aug. 23, 2017)

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.
AYLOR-US3 7845
EXAMINER
ABDOSH, SAMIR
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
11/706,676 02/15/2007
7590 0
ROBERT B. AYLOR
9502 BLUEWING TERRACE
CINCINNATI, OH 45241
Robert Benson Aylor
08/23/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BENSON AYLOR
Appeal 2015-004357
Application 11/706,676
Technology Center 3600
Before JOHN C. KERINS, ANNETTE R. REIMERS, and HYUN J. JUNG,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Benson Aylor (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the final rejection of claims 21—39.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The status of claim 30 is unclear. It was purportedly canceled in a
Preliminary Amendment in Continuing Examination (RCE), dated July 7,
2014, filed in connection with a Request for Continued Examination of the
same date. However, both the Examiner and Appellant included claim 30 in
the rejection in the Final Action, and Appeal Brief, respectively. Final Act.
3; Appeal Br. 1, 4. We will treat claim 30 as a pending claim on appeal.
Appeal 2015-004357
Application 11/706,676
THE INVENTION
Appellant’s invention is directed to a method for reducing the damage
from a cyclonic wind such as a tornado or hurricane. Claim 21, reproduced
below with minor reformatting, is illustrative:
21. A method for reducing the damage from a cyclonic wind
such as a tornado or hurricane, said method either
(1) consisting essentially of providing a passageway for air
from outside the center of a tornado to the center of the tornado
by at least one of either:
using a directed explosion to provide a directed explosive
force in at least one direction that is either:
directed against the wind in the eye wall of a
tornado;
directed into the center of the tornado;
any projectile that is used to deliver said directed
explosive force comprising a finely divided
material used as a projectile; or
providing a tunnel with multiple openings to allow air to
flow from outside a tornado to the center of the tornado;
or
providing a heat source at the top of the cyclonic wind to
create a heat inversion, and
(2) for hurricanes providing a method consisting essentially of
at least one of:
using a directed explosion to provide a directed force in a
direction that is against the wind at the eye wall of a hurricane;
or
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Application 11/706,676
deploying incendiary devices around the eye wall of a
hurricane near the top of the eye wall to create a heat inversion.
THE REJECTIONS
The Examiner rejects claims 21—39 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
ANALYSIS
Appellant indicates, in the “Summary of Claimed Subject Matter,” at
pages 1—5 of the Appeal Brief, that each of claims 21—39 is to be considered
separately as to the issue of enablement. We address all claims below to the
extent necessary.
In a prior appeal2 in the parent to the present application, a rejection
for lack of enablement was affirmed, principally on the basis that the use of
a directed explosion to create a passageway for air to pass from the outside
of the center of a tornado to inside the center, is not enabled by Appellant’s
Specification. This issue is presented in the instant appeal as well, and will
be addressed subsequent to addressing new arguments directed to claim 1
appearing in the Appeal Brief.
Appellant first argues that the use of a directed explosive is not the
only approach set forth in claim 21 for creating the air passageway. Appeal
Br. 6. Specifically, Appellant points out that claim 21 includes, as an
alternative to using a directed explosion, a step of providing a tunnel with
multiple openings to allow air to flow from the outside to the center of a
tornado, or providing a heat source at the top of a cyclonic wind to create a
2 Appeal Number 2010-009556, in Application Serial Number 11,706,676.
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Application 11/706,676
heat inversion. Id. Appellant argues that the enablement rejection is
improper because it does not address these other methods. Id.
The argument does not apprise us of Examiner error. The enablement
provision in the first paragraph of 35 U.S.C. § 112 requires that the full
scope of a claim be enabled. ALZA Corp. v. Andrx Pharmaceuticals, LLC,
603 F.3d 935, 943 (Fed. Cir. 2010) (claim inclusive of both osmotic and
non-osmotic dosage forms not enabled where non-osmotic dosage forms not
enabled); Automotive Technologies Intern., Inc. v. BMW of North America,
Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007) (claim inclusive of both
electronic and mechanical side impact sensors not enabled where electronic
sensors not enabled). Here, for reasons discussed below, the lack of
enablement of the method involving the use of a directed explosive, a
method within the scope of claim 21, results in the full scope of claim 21 not
being enabled, regardless of the recitation of the two additional approaches
or methods.
Appellant’s arguments directed to the claimed option of using a
directed explosive distill down to, as a result of the manner in which various
issues were resolved in the prior appeal, maintaining that the disclosure in
the Specification of the size of a directed explosion needed to create the
claimed air passageway in an F5-rated tornado, adequately enables the
directed explosive option. Appeal Br. 6. Appellant asserts that the
calculations presented at page 8 of the Specification “clearly provide a
specific size of an explosive that would be sufficient for any tornado.” Id. at
7. Appellant essentially maintains that this disclosure compels a finding that
“extensive experimentation is not required,” and that the rejection must
therefore be based on the notion that “the invention will not work.” Id.
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Application 11/706,676
This line of argument was addressed in the prior appeal, with the
following reasoning, which we adopt here as well:
Appellant’s argument that the Specification discloses
calculations for determining the size of explosive for use
against an F5 tornado ... is not consistent with the disclosure in
the Specification . . . For example, Appellant’s argument
contradicts the disclosure that “the size required for a particular
tornado cannot be calculated with any degree of accuracy in
advance.” ... In that regard, Appellant’s argument does not
explain why, if the disclosed calculations can be used to
determine the size of explosive for use against an F5 tornado,
similar values would not be ascertainable for tornados of lower
intensity, such that a required size of explosive could be
calculated in advance with some degree of accuracy for any
particular tornado. Similarly, Appellant’s argument that the
Specification discloses calculating the size of explosive for an
F5 tornado is not consistent with the disclosure that destroying
a sufficient part of the wall of a tornado “requires an explosive
force of unknown magnitude, but one that can be approximated
by doing some research, which can be accomplished with
tornado generators or by destroying ‘dust devils.’” Spec. 8,11.
4-9.
Decision on Request for Rehearing 7—8, dated May 15, 2014, Appeal No.
2010-009556 (Reh’g. Decision).
Similarly, with respect to the actual calculation presented in
Appellant’s Specification, we also adopt the reasoning in the prior appeal, to
wit:
It is more reasonable that a person of ordinary skill would
interpret the calculations as having little or no practical
application, consistent with the disclosure that “the size
required for a particular tornado cannot be calculated with any
degree of accuracy in advance.” [Spec.] 7, 1. 49 — 8, 1.2.
Indeed, by arguing that “the only experiment required would be
to deploy an explosive of the indicated size against a tornado
and determine if the invention works” (Request [for Rehearing]
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Application 11/706,676
5, emphasis added), Appellant acknowledges, as the Examiner
found, that the very efficacy of the method itself is subject to
doubt.
Reh’g Decision 8.
Appellant takes essentially the same, consistent, position in this
appeal, stating that:
One could use a single size explosive detonated next to the
outside of a tornado and directed at the tornado. Either the
tornado will be destroyed or not. . . . This position cannot be
determined either way until there is at least one trial.
Appeal Br. 7. Appellant additionally submits that “the specification
provides ample suggestion for experimentation. The trial of one explosive
having a size which would be sufficient for even the strongest tornado is not
extensive experimentation and definitely does not involve an explosive of
unknown size.” Id. at 10.
Notwithstanding the apparent attempt to trivialize the amount of
testing that might be required (“at least one trial”), statements of this type
further evidence that the Specification lacks sufficient clarity and specificity
so as to render the experimentation necessary to make and use the invention
as something less than undue experimentation.
We adopt the remaining findings and conclusions reached in the prior
appeal relative to the nonenablement rejection therein, particularly the
analysis of the various Wands3 factors, as well as the failure of the
Specification to enable the full scope of even the directed explosive method
itself. Decision on Appeal, dated Jan. 7, 2013, Appeal No. 2010-009556;
(Reh’g. Decision).
3 In re Wands, 858 F.2d 731 (Fed. Cir. 1988).
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Application 11/706,676
Accordingly, we sustain the rejection of claim 21 under 35 U.S.C.
§112, first paragraph, for lack of enablement.
Appellant presents additional arguments that appear to be directed to
limitations found in certain dependent claims, as well as independent claim
39, without specifically identifying which claims the arguments are directed
to. Appeal Br. 7—13. Because these dependent claims and claim 39 do not
exclude the directed explosion method from the scope of the claimed subject
matter, the claims are not sufficiently enabled for the purposes of 35 U.S.C.
§112, first paragraph, for the same reasons set forth above relative to claim
21. This applies to dependent claims 22—32, and 34—38, as well as
independent claim 39. The nonenablement rejection is sustained as to those
claims.
Dependent claim 33 restricts the limitation directed to providing air
passageway to “an underground tunnel that can be used for water storage,”4
which we construe to exclude the claimed options of using a directed
explosion, and providing a heat source to create a heat inversion. Unlike in
the prior appeal, Appellant points out here that the rejection does not address
the other methods/options set forth in claim 21, and asserts that any
dependent claims relating to such other methods should be considered to be
allowable if presented in independent form. Appeal Br. 6, 7—8. Since the
scope of claim 33 excludes the possibility that the air passageway is created
by a directed explosion, and since the Examiner presents no findings,
reasoning, or conclusions as to whether this more limited subject matter is
4 Appellant appears to be under the impression that dependent claim 32 is
also limited to providing a tunnel as an air passageway. Appeal Br. 3. We
see no such limitation in claim 32.
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Application 11/706,676
enabled by the Specification, we do not sustain the enablement rejection as
to claim 33.
DECISION
The rejection of claims 21—39 under 35 U.S.C. § 112, first paragraph,
is AFFIRMED as to claims 21—32 and claims 34—39, and is REVERSED as
to claim 33.
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)(l)(iv).
AFFIRMED-IN-PART
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