Ex Parte Aylor

Patent Trials and Appeals BoardMay 13, 2014

11706676 - (R) (P.T.A.B. May. 13, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/706,676 02/15/2007 Robert Benson Aylor AYLOR-US3 7845 7590 05/15/2014 ROBERT B. AYLOR 9502 BLUEWING TERRACE CINCINNATI, OH 45241 EXAMINER ABDOSH, SAMIR ART UNIT PAPER NUMBER 3641 MAIL DATE DELIVERY MODE 05/15/2014 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 2010-009556 Application 11/706,676 Technology Center 3600 ____________ Before JOHN C. KERINS, HYUN J. JUNG, and RICHARD E. RICE, Administrative Patent Judges. RICE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Robert Benson Aylor (Appellant) has filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52. The Request seeks reconsideration of the Board’s Decision dated January 7, 2013 (“Decision”). We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-009556 Application 11/706,676 2 A request for rehearing is limited to points that Appellant believes have been misapprehended or overlooked by the Board. 37 C.F.R. § 41.52(a)(1). That is, a request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board; and arguments not raised and evidence not relied upon previously are not permitted, with few exceptions. Id. § 41.52(a)(1)-(4). Appellant argues in the Request for Rehearing that the Board misapprehended or overlooked points with respect to non-enablement and anticipation. We first discuss Appellant’s arguments with respect to non- enablement, and then turn to Appellant’s arguments with respect to anticipation. Background with respect to Non-Enablement The Examiner rejected claims 21-39 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Final Office Action mailed April 13, 2009, at 2-4; Ans. 3-5.1 The Examiner determined that the Specification fails to describe the claimed subject matter (“steering or attenuating hurricanes or tornados via directed explosions directed against the central eye”) in such a way as to enable one of ordinary skill in the art to make or use the claimed invention without undue experimentation. Id. at 4. With respect to tornadoes, the Examiner found that “[t]he specification fails to teach one how or in what manner the method of sending a projectile to the eye wall of a tornado can be accomplished”; “it is questionable whether or not an explosion will disrupt a tornado”; and “if an explosion can stop a twister, it is unknown and undisclosed by 1 We cite to the Examiner’s supplemental Answer filed April 13, 2010. Appeal 2010-009556 Application 11/706,676 3 [Appellant] what size and strength such an explosion should be.” Id. at 4-5. The Examiner also found that “Appellant’s method concerns the utilization of a system that has never before been successfully constructed and/or proven to be feasible.” Id. at 13. Appellant’s briefs explained the theoretical basis for the claimed invention, but did not address or provide rebuttal to the Examiner’s determination that if an explosion can stop a twister, it is unknown and undisclosed by Appellant what size and strength such an explosion should be. See App. Br. 9-14; Reply Br. 2-4. Arguments in the Request with respect to Non-Enablement Appellant argues that the Board misapprehended or overlooked points with respect to the portion of the Board’s Decision sustaining the Examiner’s rejection of claims 21-39 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Request 1-6. In the Decision, the Board agreed with the Examiner’s determination that the Specification did not enable one skilled in the art to perform the method of claim 21 without undue experimentation. Decision 7. The Board found that the Examiner, in determining that the claims were non-enabled, had analyzed such Wands factors2 as the nature of the invention, the unpredictability of the art, and the amount of guidance presented in the Specification. Id. at 5 (citing Ans. 3-5, 12-14). The Board determined that Appellant had not responded adequately to the Examiner’s finding that “if an explosion can stop a twister, it is unknown and undisclosed by applicant what size and strength such an explosion should be.” Decision 7 (citing 2 See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Appeal 2010-009556 Application 11/706,676 4 Ans. 5). As discussed above, Appellant failed to address that finding in his briefs. The Board noted, furthermore, that the Specification explicitly supports the Examiner’s finding that the magnitude of the explosive force required to practice the invention is “unknown.” Id. The Board quoted the description in the Specification that: “To destroy a sufficient part of the wall of the 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.’” Id. (citing Spec. 8, ll. 4-9) (emphasis added).3 In addition, the Board stated: “To approximate the magnitude of the explosive force required, the Specification suggests ‘doing some research’ of an unspecified nature ‘with tornado generators’ or ‘by destroying ‘dust devils.’’” Id. The Board noted that “[t]he Specification does describe ‘[s]ome calculations of the maximum force required to disrupt the flow of air in a tornado’ (by solving for 1/2mv2 where m is the weight and v is the velocity of the air in a tornado).” Id. (citing Spec. 8, ll. 10-18). The Board determined, however, that it was “unclear from the Specification how the calculations relate to the suggested research involving tornado generators or dust devils.” Id. The Board also determined that the Specification does not enable one of ordinary skill in the art to perform the full scope of claim 21, which is not limited to “a directed explosion” of maximum force as determined by the disclosed calculations, but rather broadly encompasses any size or magnitude of explosion, including explosions much smaller, or much larger, 3 We cite to the original Specification filed February 15, 2007. Appeal 2010-009556 Application 11/706,676 5 than the maximum force calculations would indicate. Id. at 8 (citations omitted). Appellant argues that the Board misinterpreted the reference to “an explosive force of unknown magnitude” (see Request 4-6) in the paragraph of the Specification that states: Although a gun can be used to direct an explosion, shaped charges are especially desirable, since the shaped charges can be delivered, using rockets, to a point where they can be detonated and the rockets do not need to carry the weight of a gun barrel, etc. Shaped charges can be created in a variety of sizes, but the size required for a particular tornado cannot be calculated with any degree of accuracy in advance. It will be desirable to have a selection of charges including one large enough to destroy an F5 tornado and have a margin of error. The force created by an F5 tornado would be the largest force expected. To destroy a sufficient part of the wall of the tornado to allow the outside pressure to raise the density inside the tornado, thus eliminating the mechanism by which the tornado generates the cyclonic flow, 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. 7, l. 46 ‒ 8, l. 9 (emphasis added). Appellant argues that, in the context of the surrounding language of the paragraph, “[t]he statement relating to the ‘unknown magnitude’ was directed to the selection of different sizes of charges for particular tornados.” Request 4. Appellant draws the Board’s attention to the disclosure in the same paragraph “that the force required to destroy a sufficient amount of the wall of an F5 tornado would be the largest force required.” Id. With this predicate, Appellant argues that the next paragraph of the Specification Appeal 2010-009556 Application 11/706,676 6 discloses “us[ing] the wind speed for an F5 tornado for calculating how much force would be required.” Id. The next paragraph states: Some calculations of the maximum force required to disrupt the flow of air in a tornado can be made by solving for 1/2mv2 where m is the weight of the air and v is the velocity. For example, an approximately 100 meter cube of air, using an air density of 1.2 kg per cubic meter, would weigh about 1,200,000 kg., and when moving at about 500 kilometers per hour would have a kinetic energy of about 1.1 X 1010 joules. The explosive force needed for stopping this mass totally, would be the equivalent of about 2.5 tons of TNT, an explosive charge that can well be delivered by a rocket. It is unlikely that this total amount of energy would be required, and for smaller tornados, the energy needed would be much less. Spec. 8, ll. 10-18 (emphasis added). Appellant asserts that “the calculations clearly provide a specific size of an explosive that would be sufficient for any tornado” and “[t]hus, the specification clearly teaches an explosive of a size suitable for practice of the invention.” Request 4. Appellant additionally argues that “[s]ince the specification teaches an explosive that would be sufficient to destroy any normal tornado, the only experiment required would be to deploy an explosive of the indicated size against a tornado and determine if the invention works.” Id. at 5. Appellant contends that “a single trial is not undue experimentation.” Id. With respect to the Board’s determination that the Specification does not enable the full scope of claim 21, Appellant argues that “[t]he enablement herein clearly meets the requirement that it cover the scope of the claims since an F5 tornado is the largest size of tornado[, i.e.,] the enablement is more than, or equal to the scope of the claims.” Id. Appeal 2010-009556 Application 11/706,676 7 Analysis of Arguments with respect to Non-Enablement When rejecting a claim for lack of enablement, the initial burden is on the PTO to set forth “a reasonable explanation” of why it believes the specification is not enabling. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). In this case, the Examiner’s determination of non-enablement met that burden, and the burden then shifted to Appellant to show that the Specification “is indeed enabling.” See In re Wright, 999 F.2d at 1562. In the Decision, the Board determined that Appellant failed to meet his burden to show that the Specification is enabling. In particular, the Board determined that Appellant had not responded adequately to the Examiner’s finding that “if an explosion can stop a twister, it is unknown and undisclosed by [Appellant] what size and strength such an explosion should be.” See Decision 7 (citing Ans. 5) (emphasis added). In the Request for Rehearing, Appellant argues, for the first time, that the Specification discloses calculations for determining the size of explosive for use against an F5 tornado. See Request 4. Appellant does not contend that he made this argument in his briefs. A request for rehearing is not an opportunity to raise arguments that could have been made earlier. See 37 C.F.R. § 41.52(a)(1). Accordingly, Appellant has not shown that the Board misapprehended or overlooked any point in determining that Appellant did not respond adequately to the Examiner’s finding that if an explosion can stop a twister, it is unknown and undisclosed by Appellant what size and strength such an explosion should be. Appellant’s argument that the Specification discloses calculations for determining the size of explosive for use against an F5 tornado (see Request Appeal 2010-009556 Application 11/706,676 8 4), moreover, is not consistent with the disclosure in the Specification, quoted above. 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.” Compare Request 4-5 with Spec. 7, l. 49 ‒ 8, l. 2. 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, ll. 4-9. 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.” Id. at 7, l. 49 ‒ 8, l. 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 5, emphasis added), Appellant acknowledges, as the Examiner found, that the very efficacy of the method itself is subject to doubt. In conclusion, the inconsistencies in the Specification brought to light by Appellant’s new arguments reinforce the Board’s conclusion in the Decision that, on the record, the experimentation needed to practice the Appeal 2010-009556 Application 11/706,676 9 claimed invention is not merely routine, and that the Specification does not provide a reasonable amount of guidance as to the direction in which such experimentation should proceed. See Decision 7-8 (citing Wands, 858 F.2d at 737). Finally, Appellant’s argument with respect to the Board’s determination of non-enablement of the full scope of claim 21 misunderstands the Board’s analysis. The scope of claim 21 encompasses use of explosives of all sizes against tornados of all intensities. For example, claim 21 encompasses use of a very small-size explosion against a very high-intensity tornado. Even if, as Appellant argues, the Specification enables (provides calculations for) use of a large-size explosion against an F5 tornado, and thus also enables use of such a large-size explosion against tornados of lesser intensities, the Specification does not enable use of a smaller-size explosion against any tornado, regardless of intensity. Accordingly, Appellant’s argument does not establish that the Specification enables those skilled in the art to make and use the full scope of claim 21 without undue experimentation. For the foregoing reasons, Appellant’s arguments do not show that the Board misapprehended or overlooked any point in sustaining the Examiner’s rejection of claims 21-39 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Background with respect to Anticipation The Examiner rejected claims 21-23, 26, 29, 34, and 39 under 35 U.S.C. § 102(b), as anticipated by US 2005/0039626 A1 (pub. Feb. 24, 2005) (“Yi”). Ans. 6. As to claims 21, 22, and 39, the Examiner found “Yi Appeal 2010-009556 Application 11/706,676 10 teaches the directing of an explosive force against the eye wall of the cyclonic wind near its base.” Id. (citing Yi, fig. 9). The Examiner made separate findings with respect to each of claims 23, 26, 29, and 34. Id. at 6-7. Appellant argued with respect to all of the rejected claims that “[t]here is no disclosure in Yi of a finely divided material used as a projectile or a directed explosion against the winds of a tornado or from outside the center into a tornado.” App. Br. 14; see Reply Br. 4-5. Appellant made separate arguments for claims 23, 26, and 34. App. Br. 14-15; Reply Br. 6. Appellant did not make a separate argument for claim 39. Claim 39 recites: “A method for steering a hurricane comprising using at least one directed explosion that is directed against the wind at the edge of eye of the hurricane.” In the Decision, the Board determined Appellant’s arguments were not commensurate in scope with the subject matter of claim 39 and Appellant had waived any other argument. See Decision 10. Arguments in the Request with respect to Anticipation Appellant requests rehearing with respect to the portion of the Board’s Decision sustaining the Examiner’s rejection of claim 39 as anticipated by Yi. In the Request for Rehearing, Appellant relies on the statement in the Appeal Brief: “‘With respect to Claims 21-23, 26, 29, 34, and 39, it is clear that the Yi reference does not teach the claimed invention.’” Request 7 (quoting App. Br. 14). Appellant argues that: “It is necessary for the Appeal 2010-009556 Application 11/706,676 11 rejection of the claim to actually make a case for the claim being anticipated before any argument by applicant is required.” Id. The vague statement that Yi does not teach the claimed invention, however, does not constitute a substantive argument for patentability of claim 39 pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably interpreted its rule as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Appellant further argues: “As pointed out in the brief, Yi does not relate to, or teach anything with respect to hurricanes.” Request 7 (emphasis added). Appellant, however, has not directed the Board to any location in either of Appellant’s briefs where it is argued, with respect to the rejection of claim 39 as anticipated by Yi, that “Yi does not relate to, or teach anything with respect to hurricanes,” as Appellant argues in the Request for Rehearing. See id. As stated above, a request for rehearing is not an opportunity to raise arguments that could have been made earlier. See 37 C.F.R. § 41.52(a)(1). For the foregoing reasons, Appellant’s arguments in the Request for Rehearing do not show that the Board misapprehended or overlooked any point in sustaining the Examiner’s rejection of claim 39 under 35 U.S.C. § 102(b), as anticipated by Yi. Appeal 2010-009556 Application 11/706,676 12 DECISION The Board has carefully reviewed and considered Appellant’s Request for Rehearing. We have granted the Request only to the extent that Appellant’s arguments have been considered. The Request is denied with respect to making any changes in the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REQUEST DENIED Vsh