Ex Parte Dardik

Patent Trial and Appeal Board

Apr 29, 2016

12398052 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/398,052 0310412009
37705 7590 05/03/2016
GREENBERG TRAURIG (DEN)
1200 SEVENTEENTH STREET, SUITE 2400
DENVER, CO 80202
FIRST NAMED INVENTOR
Irving I. Dardik
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
061179-010301 9328
EXAMINER
GREENE, DANIEL LAWSON
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
gtipmail@ gtlaw .com
clairt@gtlaw.com
rupickd@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IRVING I. DARDIK
Appeal2014-003028
Application 12/398,052
Technology Center 3600
Before JENNIFERD. BAHR, LINDAE. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Irving I. Dardik ("Appellant")1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 10-24, which are all the pending
claims. Appeal Br. 3. Claims 1-9 have been canceled. Id. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F .R. § 4 l .50(b ).
According to Appellant, the real party in interest is Energetics
Technologies, L.L.C. Appeal Br. 3.
Appeal2014-003028
Application 12/398,052
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates generally to the use of
electrolytic cells and more particularly to a power generator that includes an
electrolytic cell across whose anode and cathode electrodes electrical power
is applied in a predetermined pattern." Spec. i-f 2. Claims 10, 14, 17, and 22
are independent. Claim 10, reproduced below, is illustrative of the subject
matter on appeal.
10. A method for generating heat energy comprising:
providing a container having disposed therein an
electrically conductive water or heavy water based electrolyte,
an anode electrode immersed in the electrolyte, and a cathode
electrode immersed in the electrolyte;
connecting a direct current electrical power source to the
anode and cathode electrodes; and
modulating direct current electrical power applied by the
source to the electrodes in a predetermined pattern in which a
major wave of current through the electrodes is modulated by a
plurality of minor waves of current of varying amplitude and
frequency.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Loch
Gupta
us 4,4 78,689
us 4,986,887
Oct. 23, 1984
Jan.22, 1991
Appellant's Admitted Prior Art ("AAP A") as described in pages 4-5
of US Application 10/161,158, filed May 30, 2002, to which the
instant divisional application claims priority ("Parent Application").
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REJECTIONS
The following rejections are before us for review:
I. Claims 17-24 stand rejected under 35 U.S.C. § 101 as being
inoperative and therefore lacking utility.
II. Claims 17-24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement
requirement. 2
III. Claims 17-24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the best mode requirement.
IV. Claims 17-24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
V. Claims 10-24 stand rejected under 35 U.S.C. § 102(b) as
anticipated by AAP A.
VI. Claims 10-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gupta and Loch.
2 The Examiner also objected to the Specification under 35 U.S.C.
§ 112, first paragraph, as failing to provide an adequate written description
of the invention and as failing to provide an enabling disclosure. Final
Act. 12. Ordinarily, an objection is reviewable by petition under 37 C.F.R.
§ 1.181, whereas a rejection is appealable to the Patent Trial and Appeal
Board. See Ex parte Frye, 94 USPQ2d 1072, 1078 (BP AI 2010)
(precedential) (discussing petitionable matters versus appealable matters).
Here, to the extent that the objection to the Specification in the Final Action
turns on the same issues as the enablement rejection under 35 U.S.C. § 112,
first paragraph, our decision with respect to the rejection is dispositive as to
the corresponding objection.
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Application 12/398,052
ANALYSIS
Rejections I and II - Claims 17-24 as lacking utility and
as failing to comply with the enablement requirement
The issues in this case of utility under 35 U.S.C. § 101 and of
enablement under 35 U.S.C. § 112, first paragraph, both tum on a single
question of operability of the claimed invention. See In re Brana, 51 F .3d
1560, 1564 (Fed. Cir. 1995) ("Obviously, if a claimed invention does not
have utility, the specification cannot enable one to use it."). Thus, we
analyze the utility rejection and the enablement rejections together.
Independent claim 1 7 recites a "method for generating thermal energy
in excess of input energy in an electrolytic cell." Appeal Br., Claims App.
Independent claim 22 recites a substantially similar limitation. Id.
Appellant's Specification describes the claimed method as applying
electrical energy to an electrolytic cell in a predetermined pattern and
generating heat energy greater than the applied electrical energy. See Spec.
i-fi-1 5-7. The original Specification in the Parent Application ("Parent
Specification") describes initiating low-energy nuclear reactions ("LENR")
at room temperature using electrolytic cells. See Parent Spec., p. 4, 1. 17 -
p. 5, 1. 25. As such, a person of ordinary skill in the art would understand
claims 1 7 and 22 to comprise methods that induce low energy nuclear
reactions, also known as cold fusion. See also Ans. 2 (explaining that the
claimed invention is considered to be "directed towards LENR as no other
mechanism of heat generation has been disclosed by the [S]pecification.").
Our threshold inquiry is to determine whether the Examiner has
provided evidence showing that one of ordinary skill in the art would
reasonably doubt the asserted utility. See Brana, 51 F .3d at 1566; see also
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Application 12/398,052
In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000). 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).
We agree with the Examiner's determination that there is no reputable
evidence that Appellant's invention is an operative process capable of
generating thermal energy in excess of input energy. See Final Act. 2-6
(incorporating by reference the evidence and explanation provided in
pages 2-54 of the Office Action dated December 20, 2005, in the Parent
Application ("Parent Action") and the analysis set forth in the Office Action
dated January 21, 2010, in the instant application on appeal). The Examiner
made numerous specific findings demonstrating that the scientific
community doubts the operability of the claimed process. See, e.g., Ans. 2
(referring to the Parent Action); Parent Act. 2-54 (discussing documentary
evidence showing lack of success in using cold fusion and the theory of
"superlooping" to generate excess heat). As such, the Examiner has pointed
out that the scientific community questions the operability of processes
which generate energy in excess input energy, such as Appellant's claimed
process. Final Act. 4-5. The Examiner also provided evidence showing that
the art is plagued with erroneous readings and improper procedures that lead
to "false positive" indications of excess energy being produced. Ans. 3.
We find that the Examiner has provided sufficient evidence to
establish a reason for one of ordinary skill in the art to reasonably doubt the
asserted utility of the claimed process. Because the Examiner made a prima
facie case that the claimed method lacks utility and therefore is also not
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Application 12/398,052
enabled, the evidentiary burden has shifted to Appellant to submit "evidence
of operability that would be sufficient to overcome reasonable doubt." See
Brana, 51 F.3d at 1566; see also Swartz, 232 F.3d at 864.
We are unconvinced by Appellant's rebuttal argument that the
"claimed invention has been clearly demonstrated to be operable, both in the
[S]pecification and by the independently conducted tests as documented in
the submissions under 3 7 CPR § 1.105 in the [P]arent [A ]pplication."
Appeal Br. 13. In particular, Appellant asserts that "the independent testing
conducted during the periods of suspension of the [P]arent [A ]pplication and
documented in the 2007 Final Report, entitled New Physical Effects In
Metal Deuterides, March 2007, by Michael C.H. McKubre et al, clearly
demonstrate[s] operability of the claimed invention." Id. at 11-12.
We initially note that the McKubre article referred to by Appellant is
not of record in the instant application, but rather appears in the record of the
Parent Application. Nevertheless, to the extent that the McKubre article
may be relevant to the issues of the instant appeal, Appellant has not
specifically explained the relevancy of the article or how it refutes the
Examiner's findings with respect to the question of operability. See, e.g.,
Final Act. 5 ("[Appellant] has failed to provide any indication or qualitative
statements as to the signal[-]to[-]noise ratios or full error analysis.").
Moreover, Appellant's response to the Examiner's request for information
under 37 C.F.R. § 1.105 in the Parent Application merely describes
prospective testing and contains no data establishing that the invention
operates as claimed. Although Appellant is correct in that "[t]here is no
requirement in US patent law that requires the Appellant to set forth, or
prove, the underlying science through which a claimed device (or method),
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Application 12/398,052
set forth above, achieves thermal energy, or heat, production," Appellant has
not sufficiently established that the invention does achieve the production of
thermal energy in excess of the input energy as claimed. Appeal Br. 10.
We find that the Examiner has set forth a prima facie case of lack of
utility of the claimed invention. Appellant's attempt to rebut this case by
asserting that independent testing demonstrates operability is unconvincing.
Further, Appellant fails to directly address the Examiner's specific findings
and we conclude that Appellant has not adequately rebutted the Examiner's
case. Because Appellant's application fails as a matter of fact to satisfy the
utility requirement of 35 U.S.C. § 101, the application also fails as a matter
of law to enable one of ordinary skill in the art to use the invention under
35 U.S.C. § 112, first paragraph. In re Ziegler, 992 F.2d 1197, 1200 (Fed.
Cir. 1993). Accordingly, we sustain the Examiner's rejections of claims
17-24 under 35 U.S.C. § 101 as lacking utility and under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
Rejection III - Claims 17-24 as failing to comply
with the best mode requirement
We determine in the analysis of the rejection of claim 17, discussed
supra, that claims 17-24 lack utility and are not enabled, such that
Appellant's Specification has not set forth any mode, let alone a best mode,
of practicing the invention. The best mode provision of 35 U.S.C. § 112 is
not directed to situations where no mode has been set forth, and therefore we
do not sustain this rejection. See Spectra-Physics, Inc. v. Coherent, Inc., 827
F.2d 1524, 1534 (Fed. Cir. 1987) (citing In re Glass, 492 F.2d 1228, 1233
(CCPA 1974) and In re Gay, 309 F.2d 769, 772 (CCPA 1962)).
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Rejection IV - Claims 17-24 as failing to comply
with the written description requirement
Our affirmance of the Examiner's decision to reject claims 17-24
under 35 U.S.C. §§ 101 and 112, discussed supra, is dispositive as to the
appeal of claims 17-24. See 37 C.F.R. § 41.50(a) ("The affirmance of the
rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim, except as to any
ground specifically reversed."). See also In re Wagenhorst, 64 F.2d 780,
782 (CCPA 1933) (cited with approval in In re Nielson, 816 F.2d 1567,
1571 (Fed. Cir. 1987)).
Rejection V- Claims 10-24 as anticipated by AAPA
Independent claim 10 recites "modulating direct current electrical
power applied by the source to the electrodes in a predetermined pattern in
which a major wave of current through the electrodes is modulated by a
plurality of minor waves of current of varying amplitude and frequency."
Appeal Br., Claims App. Independent claims 14, 17, and 22 recite
substantially similar limitations. Id. Appellant argues that AAP A does not
teach or suggest this limitation in the claims. Id. at 14. We agree.
With regard to modulating a direct current in a predetermined pattern
as claimed, the Examiner found that AAP A discloses this limitation. See
Final Act. 15. In particular, the Examiner stated that "the pulses set forth in
the [A]APA inherently include these 'minor waves"' as claimed. Id.
(referencing id. at 9-11 ). Although we agree with the Examiner that the
initial steps of Appellant's claimed energy generating method read on the
disclosure of AAP A, including applying DC current pulses to electrodes of
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Application 12/398,052
an electrochemical cell, we are not convinced that AAP A discloses
modulating the DC current in a pattern, much less the particular
predetermined pattern as recited in the claims. Thus, the Examiner has not
established by a preponderance of the evidence that AAP A discloses, either
expressly or inherently, modulating a direct current applied to electrodes in a
predetermined pattern in which a major wave of current is modulated by a
plurality of minor waves of current of varying amplitude and frequency as
claimed.
Accordingly, based on the record before us-because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims-we cannot sustain the rejection of independent
claims 10, 14, 17, and 22, and associated dependent claims 11-13, 15, 16,
18-21, 23, and24, as anticipated by AAPA.
Rejection VI - Claims 10-24 as unpatentable over Gupta and Loch
The Examiner found that Gupta discloses a method and apparatus for
generating heat energy using an electrolytic cell containing an electrically
conductive water electrolyte having an electrode pair immersed therein. See
Final Act. 19. The Examiner acknowledged that Gupta does not disclose
applying a voltage across the electrodes through an electronic modulator
controlled by a computer programmed to produce voltage pulses. Id. at 20.
Next, the Examiner found that
Loch teaches it is old, well known and beneficial to apply a train
of pulse packets produced by a DC source (Fig. 8, numerals 20
and 22: "D.C. Power Supply") whose output is applied to the
electrodes through an electronic modulator controlled by a
computer which is programmed to produce voltage pulses in said
pattern (Fig. 8, numeral 26).
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Application 12/398,052
Id. The Examiner concluded that, given the teachings of the prior art, it
would have been obvious to a person having ordinary skill in the art at the
time of the invention to utilize the computer control of Loch to apply
voltages across the cell electrodes of Gupta in order to provide automatic
and reproducible control of pulses. See id. The Examiner also explained
that, in view of the Specification, "[i]t must be appreciated and understood
that a DC 'pulse' and train of 'pulses' inherently include the superlooping
waveforms as claimed because [Appellant's] theory requires them to be
such." Id. at 10; see Spec. i-fi-f 17-18.
Appellant argues that Loch merely teaches electroplating using an
alternating current and "does not teach modulation of a direct current as
Appellant claims in claims 10-24." Appeal Br. 15. In particular, Appellant
asserts that "Loch does not teach modulating a direct current applied by the
source to the electrodes in a predetermined pattern in which a major wave of
de current through the electrodes is modulated by a plurality of minor waves
of current of varying amplitude and frequency." Id. at 16.
According to the disclosure of Appellant's Specification, "all waves
incorporate therein smaller waves and varying frequencies." Spec. i-f 17. In
particular, "[ e ]very wave necessarily incorporates smaller waves, and is
contained by larger waves" and "[t]hus each high-amplitude low-frequency
major wave is modulated by many higher frequency lower-amplitude minor
waves." Id. i-f 18. Given that Appellant's Specification-in light of which
the claims must be interpreted-explicitly states that all waves necessarily
incorporate smaller waves, and that every wave is modulated by higher
frequency minor waves, the claimed wave pattern used to modulate the DC
current is indistinguishable from any other wave, including the waveform
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Application 12/398,052
shown in Figure 2B of Loch. Appellant's arguments do not apprise us of
error in the Examiner's determination that applying Loch's modulated
pulsed waveform to the system of Gupta would inherently result in a
predetermined pattern in which lower frequency major waves are modulated
by higher frequency minor waves.
Accordingly, we sustain the rejection of independent claims 10, 14,
17, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Gupta and
Loch. Appellant does not set forth any additional substantive arguments for
dependent claims 11-13, 15, 16, 18-21, 23, and 24 apart from the arguments
for the independent claims. See Appeal Br. 15-16. Thus, we likewise
sustain the rejection of dependent claims 11-13, 15, 16, 18-21, 23, and 24 as
being unpatentable over Gupta and Loch.
New Ground of Re} ection
Our affirmance of the obviousness rejection of claims 10-24 is based
on the Examiner's finding that the pulsed signal of Loch, based on the
teaching in the Specification, inherently possesses the predetermined pattern
as claimed. To the extent that Appellant's claims are read to require
something more than the waveform that the Specification asserts inherently
exists in nature, then pursuant to our authority under 3 7 C.F .R. § 41. 50(b ),
we enter a new ground of rejection of claims 10-24 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
Section 112 requires that the Specification enable "those skilled in the
art to make and use the full scope of the claimed invention without 'undue
experimentation"' in order to extract meaningful disclosure of the invention
and, by such disclosure, advance the technical arts. Koito Mfg. Co. v.
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Application 12/398,052
Turn-Key-Tech, LLC, 381F.3d1142, 1155 (Fed. Cir. 2004) (quoting
Genentech, Inc. v. Novo NordiskAIS, 108 F.3d 1361, 1365 (Fed. Cir. 1997)
(citation omitted)). However, some experimentation-even a considerable
amount-is not "undue" if it is merely routine, or if the Specification
provides a reasonable amount of guidance as to the direction in which the
experimentation should proceed. In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988) (quoting Ex parte Jackson, 217 USPQ 804, 807 (Bd. App. 1982)).
The "undue experimentation" analysis involves the consideration of such
factors as: (1) the quantity of experimentation; (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 (the so-called "Wands factors"). Wands,
858 F.2d at 737. The analysis must consider evidence related to these
factors, and any conclusion of nonenablement must be based on the relevant
evidence as a whole. Id.
Independent claim 10 recites "a predetermined pattern in which a
major wave of current through the electrodes is modulated by a plurality of
minor waves of current of varying amplitude and frequency." Appeal Br.,
Claims App. Independent claims 14, 17, and 22 recite substantially similar
limitations involving modulating current in a predetermined pattern in which
a major wave of current is modulated by a plurality of minor waves of
current. See id.; see also id. at 16 (noting the similarity of the predetermined
pattern required by each of the independent claims). Although the claims do
not expressly recite "superlooping waves," the claimed major wave being
modulated by at least one minor wave is in accordance with superlooping
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Application 12/398,052
waves as described in Appellant's Specification. See Spec. ilil I 8-19. Thus,
the claims involve superlooping waves.
The Specification describes a current modulator controlled by a
"programmed computer 16, whereby the modulator yields voltage pulses
whose amplitude and duration as well as the duration of the intervals
between pulses are determined by the program." Spec. ,-r 24. The computer
controls the modulator to generate a train of pulse packets, with each packet
having a cluster of pulses in a predetermined pattern. See id. ,-r 25. As to the
predetermined pattern, the Specification provides:
The varying amplitudes of the pulses in the successive
packets conform to the amplitude envelope of a major wave W 1.
The varying durations of the pulses in the packets conform to the
amplitude envelope of a minor wave W 2 whose frequency differs
from that of major wave W 1. The varying durations of the
intervals between the pulses in a packet conforms to the
amplitude envelope of still another minor wave W 3 of different
frequency. And the varying durations of the intervals between
successive packets in the train are in accordance \'l1ith the
amplitude envelope of yet another minor wave W 4 of different
frequency.
Spec. ,-r 28. Thus, the pulse amplitudes, pulse durations, pulse intervals, and
packet intervals in the predetermined pattern each correspond to an
amplitude envelope of either a major wave or a minor wave. However, the
Specification does not explain how the pulse amplitudes, pulse durations,
pulse intervals, and packet intervals of the predetermined pattern are derived
from the amplitude envelopes. Moreover, the Specification does not explain
how to discern major and minor wave amplitude envelopes of superlooping
waves. The overall disclosure provides no direction or working examples
regarding how to generate a train of pulse voltage packets in a superlooping
wave pattern, as recited in the claims.
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Further, the Specification refers to superlooping waves as a "theory"
and a "hypothesis." Spec. i-fi-f 15-16. Aside from Appellant's own work,
there is no specific information about low frequency major waves being
modulated by high frequency minor waves in such a pattern. The article
referenced in paragraph 15 of the Specification provides a theoretical
discussion of superlooping wave activity, but does not deliver any guidance
or direction that would allow one of ordinary skill in the art to identify major
and minor wave amplitude envelopes associated with superlooping waves.
In view of the pertinent Wands factors, the Specification fails to
provide a sufficient amount of guidance as to how to modulate direct current
in a predetermined pattern in which a major wave of current is modulated by
a plurality of minor waves of current of varying amplitude and frequency,
and the experimentation necessary to make and use the full scope of the
invention would be undue. Accordingly, we reject claims 10-24 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
DECISION
We AFFIRM the Examiner's decision rejecting claims 17-24 under
35 U.S.C. §§ 101 and 112 as set forth above.
We REVERSE the Examiner's decision rejecting claims 10-24 under
35 U.S.C. § 102(b) as anticipated by AAPA.
We AFFIRM the Examiner's decision rejecting claims 10-24 under
35 U.S.C. § 103(a) as being unpatentable over Gupta and Loch.
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We ENTER A NEW GR OU-ND OF REJECTION of claims 10-24
under 35 U.S.C. § 112, first paragraph, for failing to comply with the
enablement requirement.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2014). 37 C.F.R. § 41.50(b) provides that "[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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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) (2014).
AFFIRMED; 37 C.F.R. § 41.50(b)
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