Ex Parte Blum et al

Patent Trial and Appeal Board

Oct 17, 2012

09994860 (P.T.A.B. Oct. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RONALD D. BLUM, BRADLEY J. BLUM,
DWIGHT P. DUSTON, and GEORGE M. HAGERMAN, JR.
____________________

Appeal 2011-003578
Application 09/994,860
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-17 and 33-36. The Examiner withdrew claim 37
from consideration. No other claims are pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, but we designate our affirmance a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method of making a reduced intensity hurricane,
comprising:
positioning a plurality of submersibles in a hurricane
interception area, the hurricane interception area describing
an area of ocean through which at least a portion of the
hurricane's central core will pass;
maneuvering the plurality of submersibles to a depth;
maintaining the plurality of submersibles in the hurricane
interception area at the depth for a period of time; and
releasing a gas from the plurality of submersibles after
the plurality of submersibles have entered the hurricane
interception area, the gas being released during the period of
time, the gas forming bubbles which rise in a plume toward
a surface of the ocean, the plume entraining water from at
least the depth and upwelling the entrained water toward the
surface of the ocean to cool the surface of the ocean, the
cooled surface reducing the intensity of the hurricane whose
portion of central core passes through the hurricane
interception area.
Rejections
Appellants request our review of the Examiner’s rejections of claims
1-17 and 33-36:
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(1) under 35 U.S.C. § 101 because, according to the Examiner, the
disclosed invention is wholly inoperative and therefore lacking
credible utility; and
(2) under 35 U.S.C. § 112, first paragraph, as containing subject
matter which was not described in the specification in such a
way as to enable one skilled in the art to which it pertains, or
with which is most nearly connected, to make and/or use the
invention.
OPINION
Utility
There does not appear to be any dispute that Appellants’ Specification
asserts a specific and substantial utility (i.e., hurricane intensity reduction)
for the claimed invention. The basis of the Examiner’s rejection under
35 U.S.C. § 101 is that the disclosed invention is wholly inoperative and
therefore lacks credible utility.
As a matter of Patent Office practice, a specification
which contains a disclosure of utility which corresponds in
scope to the subject matter sought to be patented must be taken
as sufficient to satisfy the utility requirement of § 101 for the
entire claimed subject matter unless there is reason for one
skilled in the art to question the objective truth of the statement
of utility or its scope. Assuming that sufficient reason to
question the statement of utility and its scope does exist, a
rejection for lack of utility under § 101 will be proper on that
basis; such a rejection can be overcome by suitable proofs
indicating that the statement of utility and its scope as found in
the specification are true.
In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974).
Thus, “the PTO has the initial burden of challenging a presumptively
correct assertion of utility in the disclosure.” In re Brana, 51 F.3d 1560,
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1566 (Fed. Cir. 1995). Further, “the PTO must do more than merely
question operability it must set forth factual reasons which would lead one
skilled in the art to question the objective truth of the statement of
operability.” In re Gaubert, 524 F.2d 1222, 1224-25 (CCPA 1975).
Appellants’ claims are directed to a method of reducing the intensity
of a hurricane, or making a reduced intensity hurricane, by positioning
submersibles in a hurricane interception area at a depth below the ocean
surface and generating at least one bubble plume from the submersibles to
entrain or upwell water toward the ocean surface to thereby cool the ocean
surface to thereby reduce the intensity of the hurricane.
Appellants’ Specification states that “it is generally accepted that a
large area of cooled ocean surface can suppress hurricane intensity,” and
alludes to numerical modeling that suggests reducing “sea surface
temperature by 2.5oC in the storm’s central core would eliminate the
thermodynamic conditions that sustain hurricanes.” Spec., para. [0005].
The Ginis Declaration1 substantiates that this is generally accepted by those
of ordinary skill in the field of the present invention. Ginis Decl., para. 7
(confirming that the statement “is consistent with the knowledge of one
skilled in the art at the time of filing the application” and alluding to numeric
modeling showing that reduction of the temperature in the storm’s central
core would reduce wind speed, and hence the intensity, of the hurricane);
para. 10 (averring that “[n]umerical modeling studies suggest that a
reduction of sea surface temperature by 2.5o C in the storm’s central core
would eliminate the conditions that sustain hurricanes”).

1 Isaac Ginis, Ph.D, DECLARATION UNDER 37 C.F.R. § 1.132, filed
November 5, 2007.
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Using the National Oceanic and Atmospheric Administration
(NOAA) operational GFDL/URI2 coupled hurricane-ocean model, which is
the U.S. National Weather Service’s official hurricane model, “with
idealized, but realistic, oceanic and atmospheric conditions,” including an
initially horizontally uniform and motionless ocean with a sea surface
temperature of 28.5oC and a hurricane moving northwest at 5 m/s, Dr. Ginis
introduced cooled regions in front of the moving hurricane. Ginis Decl.,
paras. 11, 13, 15. The cooled regions were temperature anomalies of 1oC
and 2oC and were evenly distributed over the 30 m depth of the mixed layer.
Id. at paras. 13, 15. The model showed that the “maximum winds were
reduced from about 145 kts to about 135 kts (6% reduction) in the 1oC swath
experiment and to about 130 kts (10% reduction) in the 2oC swath
experiment.” Id. at para. 16. By doubling the size of the 2oC cooled region
along the track direction, “the hurricane intensity was further reduced from
about 145 kts to about 120 kts (22% reduction).” Id. at para. 17. According
to Ginis, “[t]hese sensitivity experiments clearly indicate that both the size
and magnitude of the cooled area encountered by a moving hurricane make
important impact on the hurricane intensity reduction.” Id.
Against this background, the asserted utility of reducing the intensity
of a hurricane, or making a reduced intensity hurricane, by reducing the
ocean surface temperature in a hurricane interception area “does not suggest
an inherently unbelievable undertaking or involve implausible scientific
principles.” See Brana, 51 F.3d at 1566.
The Examiner does not present any technical reasoning or evidence to
suggest that a person of ordinary skill in the art would doubt or question the

2 Geophysical Fluid Dynamics Library/University of Rhode Island.
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underlying premise of Appellants’ invention that hurricane intensity can be
reduced by reducing sea surface temperature in the storm’s central core.
In order to reduce the ocean surface temperature to realize the
intensity reductions as predicted by numerical models and as observed when
hurricanes are exposed to natural cold water upwelling, Appellants’
Specification discloses methods for artificial upwelling of deep, cold
seawater. Spec., paras. [0005], [0006]; fig. 1. Appellants also disclose
illustrative embodiments of partial airlift ducts that can be used to convey
released gas and deep seawater entrained thereby from submersibles up to
the ocean surface. See figs. 8-10.
In order to calculate the volume of upwelling water required to
weaken a major hurricane, Appellants model what they characterize as “the
worst-case design environment” of the ocean waters off the east coast of
Florida, which, according to Appellants, have the deepest 26oC isotherm (70
m) and the highest average Hurricane Heat Potential (HHP)3 layer
temperature (i.e., a pre-storm sea surface temperature of 28.8 oC and an
average HHP layer temperature of 27.74 oC). Spec., paras. [0040] - [0042].
Appellants additionally outline the basic principles and formulae for
determining that the area of the region to be cooled within the eyewall is a
circle having a radius of 90 km, in order to eliminate the entire Hurricane
Heat Potential (HHP). Spec., paras. [0042], [0043]. However, Appellants’
Specification also points out that Appellants’ invention is not limited to the

3 The HHP is “used by meteorologists to quantify the heat energy in the
upper ocean that is available to fuel a tropical storm” and is “defined as the
heat content in excess of 26oC typically per unit area of the underlying water
column between the sea surface and the depth of the thermocline.” Spec.,
para. [0007]. “The thermocline is a layer in the ocean that sharply separates
regions having different temperatures.” Spec., p. 6, para. [0030].
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scope of elimination of the entire HHP. Spec., para. [0042]. The Examiner
does not present any technical reasoning or evidence showing that a person
of ordinary skill in the art would doubt or question the underlying principles
or mathematical formulae for determining the area to be cooled.
Based on this determined area to be cooled, Appellants’ Specification
calculates a surface area of ocean that needs to be cooled to a depth of about
70 m, which translates to a total volume of 6.80 x 1012 cubic meters, to
ensure interception of a hurricane based on a stationary interception strategy
using the 24-hour position forecast. Spec., paras. [0048] – [0050]. That
volume can be reduced by targeting only half the storm’s central core, and
can be further reduced by using a “maneuver-before-upwelling method
strategy” for targeting half of a storm’s central core. Spec., paras. [0062] –
[0069].
Appellants’ Specification also estimates that deep seawater at about
15oC will rise to approximately 20.2oC by the time it reaches the mixed layer
above the 26oC isotherm and, on this basis, estimates that about 23% of the
total layer volume should be replaced by upwelling water. Spec., paras.
[0051] – [0052]. Consequently, Appellants’ Specification estimates a total
upwelling plume volume of 1.57 x 1012 m3 over a 24-hour period
(corresponding to a total upwelling rate of 18.2 million cubic meters per
second) for the stationary interception strategy, and a total upwelling plume
volume of 2.61 x 1011 m3 over a 6-hour period (corresponding to a total
upwelling rate of approximately 12.1 million cubic meters per second) for
the maneuver-before-upwelling method targeting half the central core.
Spec., para. [0069].
The Examiner does not present any technical reasoning or evidence to
suggest that a person of ordinary skill in the art would doubt or question the
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methodology used to estimate the upwelling rates for these different
interception strategies.
The Specification discloses that “[o]n average, a normal cubic meter
of gas is capable of upwelling 380 cubic meters of water, based on the
results of lake field experiments” using CO2. Spec., para. [0102].
Consequently, the Specification estimates that a CO2 gas volume emission of
approximately 687 million Nm3 would be sufficient for the preferred (i.e.,
maneuver-before-upwelling method) embodiment of the invention. Id.
The Singleton Declaration4 concludes, based on established discrete-
bubble flow method, circular bubble-plume, and linear bubble-plume models
using a 26oC isotherm depth of 81 m, which Singleton characterizes as
“slightly more conservative than the 70 m depth” used in Appellants’
Specification, that a total of 233 linear diffusers or 236 circular diffusers
may be needed to achieve the total upwelled water flow rate of at least 12.1
million cubic meters per second called for in Appellants’ Specification.
Singleton Decl., paras. 6-9. This corresponds to a total gas volume of 5.29 x
1010 Nm3 for linear diffusers and 6.37 x 1010 Nm3 for circular diffusers. Id.,
para. 9. Further, according to Singleton, assuming 476 Nm3 of gas would
be liberated per cubic meter of liquid, the amount of liquid CO2 required
would be about 1 x 108 m3 for linear diffusers and about 1.3 x 108 m3 for
circular diffusers. Id.
In short, the Singleton Declaration shows that methodologies have
been established for determining how many diffusers and how much liquid
CO2 would be needed to upwell the required volume of water to cool the
ocean surface temperature in accordance with Appellants’ disclosed

4 Vickie Lien Singleton, DECLARATION UNDER 37 C.F.R. § 1.132,
filed November 5, 2007.
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maneuver-before-upwelling method. However, Singleton’s estimate for the
amount of CO2 gas, and hence the amount of liquid CO2, needed to upwell
the required volume of deep seawater to reduce the ocean surface
temperature to 26oC is over 75 times higher than Appellants’ estimate.
Compare Singleton Decl., para. 9 (estimating a total CO2 gas volume of 5.29
x 1010 Nm3 for linear diffusers and 6.37 x 1010 Nm3 for circular diffusers)
with Spec., para. [0102] (estimating a CO2 gas volume emission of
approximately 687 million Nm3).
The Examiner dismisses the Singleton Declaration because it does not
show that upwelling water at the rate of 12.1 million cubic meters per
second will reduce the surface temperature of the ocean. Ans. 14. The
Examiner’s position is unsound, because the Singleton Declaration is not
relied upon to establish this point. As discussed above, the Examiner does
not present any technical reasoning or evidence to suggest that a person of
ordinary skill in the art would doubt or question the efficacy of the models,
principles, or methodology detailed in Appellants’ Specification to support
the premise that upwelling water at this rate will reduce the ocean surface
temperature. Moreover, the Singleton Declaration states that, on the basis of
diffuser models, assuming an 81 m depth of the 26oC isotherm (a more
conservative estimate than the 70 m assumption used in Appellants’
modeling), “[i]t would be expected that the artificial upwelling of the deep,
cold seawater to the sea surface by the bubble-driven plume would create an
upper ocean layer region of sufficiently lower temperature.” Singleton
Decl., para. 8.
The Examiner also criticizes the Singleton Declaration because the
bubble plume methods used therein have never been used in open-ocean,
upper water column environments and thus, according to the Examiner,
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cannot properly be used to model the present invention. Ans. 14. The
Examiner does not cite any evidence or set forth any technical reasoning to
support the assertion that these models/methods would not be applicable to
open-ocean, upper water column environments, at least to establish “an
initial order-of-magnitude estimate of the gas flow rate and the quantity of
gas required to induce an adequate upwelling flow rate to lower the
temperature of the upper sea surface,” as the Singleton Declaration sets out
to do. See Singleton Decl., para. 5.
The Rondorf Declaration5 states that two basic methods (modification
of existing submarine hulls by conversion of missile tubes only and
modification by cutting the submarine hull in half and inserting a new
section specific for the desired use) are known for converting submarines to
a gas carrying capacity. Rondorf Decl., paras. 8, 9. Additionally, Rondorf
avers that as an alternative to submarine conversion, a towed body may be
constructed to carry and release the gas required for upwelling. Id. at para.
10. According to Rondorf, such a towed body could be constructed using
submarine construction technologies available prior to November 28, 2001
(the filing date of the present application). Id. Further, the majority of the
volume of an unmanned towed body may be dedicated to gas carrying
capacity with minimum on board systems. Id.
Rondorf states that an existing submersible, such as the existing Naval
Research vessel NR-1, which has an estimated volume as a towed body of
approximately 32,400 ft3 (917 m3), “can be easily scaled up to increase gas
carrying capacity.” Id.

5 Neil E. Rondorf, DECLARATION UNDER 37 C.F.R. § 1.132, filed
November 5, 2007.
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Rondorf estimates that only 19 Typhoon hulls having a volume
capacity of 73,000 cubic meters6 (using the second submarine conversion
method, i.e., converting an entire section of a submarine from its original use
to a gas release volume) would be needed to carry the 1.4 million m3 liquid
CO2 for the CO2 gas release volume of 687 million Nm3 estimated in
Appellants’ Specification (which is significantly smaller than the volume
estimated by Singleton). Rondorf Decl., para. 14. However, if the Singleton
CO2 volume estimates are correct, Rondorf’s calculated number of Typhoon
hulls may be an underestimate by a factor of over 75 of the number of
Typhoon hulls needed to effect the total upwelling plume volume of 2.61 x
1011 m3 over a 6-hour period (corresponding to a total upwelling rate of
approximately 12.1 million cubic meters per second) for the maneuver-
before-upwelling method of Appellants’ invention.
On the basis of our findings above, the Examiner has not set forth a
factual basis to establish that there is reason for one skilled in the art to
question the presumptively correct assertion of utility (i.e., reducing
hurricane intensity) for the claimed invention. While the discrepancy
between the volume of CO2 calculated in Appellants’ Specification and that
calculated by Singleton suggest that Appellants’ disclosure may be
underestimating the volume of CO2 needed to achieve an effective reduction
in hurricane intensity, the Examiner does not provide any technical

6 The Examiner’s assertion that Rondorf’s calculations are off by a factor 73
because it is derived from calculations using a Typhoon hull (Ans. 12-13),
appears to be based on a misapprehension of what Rondorf is calculating.
While the Examiner is correct that approximately 73 NR-1 vessels would be
required to carry the same volume as one Typhoon hull, Rondorf does not
calculate the number of NR-1 vessels required. Rather, Rondorf calculates
the required number of Typhoon hulls (or NR-1 type vessels scaled up to a
Typhoon hull volume).
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reasoning or evidence to show that Appellants’ claimed method of
positioning submersibles in a hurricane interception area at a depth below
the ocean surface and generating at least one bubble plume from the
submersibles to entrain or upwell water toward the ocean surface is totally
incapable of cooling the ocean surface to thereby reduce the intensity of a
hurricane. See Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d
1555, 1571(Fed. Cir. 1992) (stating “[t]o violate § 101 the claimed device
must be totally incapable of achieving a useful result”). Alternatively, even
assuming the Examiner met the initial burden of challenging the asserted
utility thereby shifting the burden to Appellants to offer rebuttal evidence,
Appellants proffered sufficient evidence, in the form of the Ginis, Singleton,
and Rondorf Declarations, to convince one of ordinary skill in the art of the
capability, even if not the practicality, of the claimed method to achieve the
asserted utility.
For the above reasons, we do not sustain the rejection of claims 1-17
and 33-36 under 35 U.S.C. § 101 as being wholly inoperative and therefore
lacking credible utility.
Enablement
In order to comply with the enablement requirement of 35 U.S.C.
§ 112, first paragraph, the specification must provide sufficient teaching
such that one skilled in the art could make and use the full scope of the
invention without undue experimentation. CFMT, Inc. v. Yieldup Int’l
Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003); Genentech, Inc. v. Novo
Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997); In re Wands, 858 F.2d
731, 736-37 (Fed. Cir. 1988). The key word is “undue,” not
experimentation. Wands, 858 F.2d at 737. That is, the specification need
only teach those aspects of the invention that one skilled in the art could not
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figure out without undue experimentation. See, e.g., Nat’l Recovery Techs.,
Inc., v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999)
(“The scope of enablement . . . is that which is disclosed in the specification
plus the scope of what would be known to one of ordinary skill in the art
without undue experimentation.”); Wands, 858 F.2d at 736-37 (“Enablement
is not precluded by the necessity for some experimentation such as routine
screening.”).” Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d
1326, 1337 (Fed. Cir. 2005).
Factors to be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Wands, 858 F.2d at 737.
The Examiner found that the amount of experimentation necessary for
a person of ordinary skill in the art to carry out Appellants’ claimed
invention would be undue. Ans. 5-6. In making this finding, the Examiner
briefly addressed the Wands factors. Id.
In addressing these undue experimentation factors, we are struck by
the vast difference between the assumptions of Appellants and those of
Singleton with regard to the volume of deep seawater that will be upwelled
by a cubic meter of CO2 gas. Compare Spec., para. [0102] (stating “a
normal cubic meter of gas is capable of upwelling 380 cubic meters of
water, based on the results of lake field experiments” using CO2) with
Singleton, para. 8 (showing a ratio of water volumetric flow rate to CO2 gas
flow rate of about 4.94:1 for linear diffusers and of about 4.1:1 for circular
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diffusers). As noted in our findings above, the assumptions made by
Singleton lead to an estimate for the amount of CO2 gas, and hence the
amount of liquid CO2, needed to upwell the required volume of deep
seawater to reduce the ocean surface temperature to 26oC that is over 75
times higher than Appellants’ estimate.
Appellants attempt to dismiss this difference as “within a range
accounted for by the different assumptions by Ms. Singleton, i.e., depth of
the thermocline and geography of the area.” App. Br. 30. However, this
response is mere attorney argument unsupported by evidence or technical
reasoning7 and is thus inadequate to account for the very large difference
(i.e., a factor of over 75) between the two estimates, especially in view of the
facts that both Appellants and Singleton purport to be modeling the waters
off the eastern coast of Florida, that Appellants characterize their
assumptions as a “worst-case design environment, having the deepest 26oC
isotherm,” and that Singleton characterizes her isotherm depth of
approximately 81 m to be “slightly more conservative than the 70 m depth”
(emphasis added) assumption of Appellants’ Specification. See Spec., para.
[0042]; Singleton Decl., para. 7.
The magnitude of the difference between the CO2 volume estimated
by Appellants and that estimated in the Singleton Declaration, and the
absence of any factually supported technical explanation on the record for
the magnitude of this difference, raise a question as to whether the guidance
provided in Appellants’ Specification is adequate to enable a person of
ordinary skill in the art to ascertain, without undue experimentation, the
required CO2 volume to achieve a reduction in the intensity of a hurricane.

7 Unsupported attorney argument is entitled to little weight. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997).
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Consequently, the PTO has a reasonable basis to believe that the subject
matter of claims 1-17 and 33-36 is not adequately enabled by the description
of the invention provided in the Specification of the present application.
Thus, we sustain the rejection of claims 1-17 and 33-36 under
35 U.S.C. § 112, first paragraph, as containing subject matter which was not
described in the specification in such a way as to enable one skilled in the art
to make and/or use the invention. However, because our reasoning in
reaching this conclusion differs from, or significantly elaborates on, the
reasoning articulated in the Examiner’s rejection, we designate our
affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to
provide Appellants with an opportunity to respond thereto.
DECISION
The Examiner’s decision rejecting claims 1-17 and 33-36 is affirmed.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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; 37 C.F.R. § 41.50(b)

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