Porcelli, Elio Battista.

Patent Trials and Appeals Board

Aug 14, 2020

14146373 - (D) (P.T.A.B. Aug. 14, 2020)

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.
14/146,373 01/02/2014 Elio Battista Porcelli NASC-003 3606
21884 7590 08/14/2020
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
DOUGHERTY, THOMAS M
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
08/14/2020 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 ELIO BATTISTA PORCELLI
____________
Appeal 2019-004789
Application 14/146,373
Technology Center 2800
____________
Before N. WHITNEY WILSON, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claim 1 of Application 14/146,373, which
constitutes all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was held on July 22, 2020.

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
14/146,373 filed Jan. 2, 2014 ( the “’373 App.”); the Final Office Action
dated July 20, 2018 (“Final Act.”); the Advisory Action dated Dec. 18, 2018
(“Adv. Act.”); the Appeal Brief filed Feb. 26, 2019 (“Appeal Br.”); the
Examiner’s Answer dated Apr. 2, 2019 (“Ans.”); the Reply Brief filed May
31, 2019 (“Reply Br.”); and the transcript of the July 22, 2020 hearing
(“Tr.”).
2 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 the
inventor, Elio Battista Porcelli. Appeal Br. 1.
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For the reasons set forth below, we REVERSE.
STATEMENT OF THE CASE
The ’373 Application relates to piezoelectric materials used for
creating an induction force in external objects. Spec. 1, l. 2–3. According to
the Specification, the induction generation is performed with its molecular
structure widely coupled with the environment, is not intermediated by
acoustic waves or electromagnetic fields, and results from quantum
entanglements. Spec. 1, ll. 3–6. By properly adjusting some parameters,
such as the intensity of the electric filed or mechanical contact force applied
in the material, and the properties of the material, it is possible to control the
force induced in external targets place in any medium. Spec. 3, ll. 12–15.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. A method for using piezoelectric devices to produce
induction forces in an accelerometer on opposite sides of an
acoustic and electromagnetic barrier comprising the steps of:
positioning the piezoelectric devices and the
accelerometer on opposite sides of the acoustic and
electromagnetic barrier;
activating the piezoelectric devices via application of an
electrical field or a mechanical force to the piezoelectric
devices;
initiating generalized quantum entanglements between
internal polarized molecules of the piezoelectric devices and the
accelerometer placed in a beam environment so as to produce
induction forces crossing the acoustic and electromagnetic
barrier; and
adjusting an intensity of the electric field or the
mechanical force applied to the piezoelectric devices to produce
the induction forces that cross the acoustic and electromagnetic
barrier; and
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calculating the intensity of induction force measured by
the accelerometer.
REJECTIONS
The Examiner rejects claim 1 under 35 U.S.C. § 101. Final Act. 6–7.
The Examiner also rejects claim 1 under 35 U.S.C. § 112(a)3 for lacking
disclosure of the best mode, and under § 112(b) as indefinite. Id. at 7–9.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
persuaded that Appellant identifies reversible error in the Examiner’s
rejections.
A. Rejection under § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). In determining whether a claim falls within an excepted category,

3 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
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we are guided by the Supreme Court’s two-step framework, described in
Alice (see id. at 217–18), and Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75–77 (2012). In accordance with that
framework, at step one of the Alice/Mayo test, “it is not enough to merely
identify a patent-ineligible concept underlying the claim; we must determine
whether that patent-ineligible concept is what the claim is ‘directed to.’”
Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir.
2016).
If a claim is “directed to” an exception to patentable subject matter,
we turn to the second step of the Alice and Mayo framework, where we must
examine the elements of the claim to determine whether it contains an
‘inventive concept’ sufficient to “transform” the claimed exception into a
patent-eligible application. Alice, 573 U.S. at 221. A process reciting a law
of nature or natural phenomenon is not patentable, unless that process has
additional features that provide practical assurance that the process is more
than a drafting effort designed to monopolize the law of nature or natural
phenomenon itself. See Mayo, 566 U.S. at 77.
In January 2019, the PTO published revised guidance on the
application of Section 101. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under
the Guidance, we first look to whether a claim recites (1) any judicial
exceptions (“Guidance Step 2A, Prong One”), and (2) additional elements
that integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)) (“Guidance Step 2A, Prong Two”). Only if a
claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim
(3) adds a specific limitation beyond the judicial exception that is not “well-
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understood, routine, conventional” in the field (see MPEP § 2106.05(d)), or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception (“Guidance Step 2B”).
Claim 1 recites a method for using piezoelectric devices to produce
induction forces in an accelerometer. Appeal. Br. (Claims App.). Thus,
claim 1 recites a process, which is a statutory category of invention.
The Examiner finds:
The disclosed invention is inoperative and therefore lacks utility.
The invention is vague. It describes a field of research as a basis
for its conclusions on the functionality of an arrangement but
these are noted as theoretical in the research presented.
Final Act. 6; Adv. Act. 2. The Examiner finds that if, in fact, quantum
entanglement is induced, the quantum entanglement is a law of nature, and
has nothing to do with inventiveness. Final Act. 7; Adv. Act. 3. The
Examiner states that a working model of the invention is required for
demonstration. Final Act. 7.
Our discussion focuses on claim 1 even though the Examiner
addresses “the invention,” rather than the claim.
The Examiner’s finding that “[t]he disclosed invention is inoperative”
is a finding addressed to enablement, rather that § 101. See 35 U.S.C.
§ 112(a); see also Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336
U.S. 271, 275 (1949). The Examiner does not make findings supporting
lack of enablement.
The Examiner’s finding that “the invention” lacks utility is, likewise,
inadequately supported. Moreover, the Specification explains that the
invention may be used for metrology. Spec. 15, ll. 16–19.
1. Judicial Exception – Guidance Step 2A, Prong One
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As indicated above, under Guidance Step 2A, Prong One, we consider
whether claim 1 recites a judicial exception to the statutory categories of
patent-eligible subject matter. For laws of nature and natural phenomena,
Prong One does not represent a change from prior guidance. Guidance, 84
Fed. Reg. at 54.
Claim 1 recites “initiating generalized quantum entanglements.”
Appeal Br. (Claims App.). Appellant’s description of “quantum
entanglements” indicates that they reflect a law of nature or natural
phenomenon:
Quantum entanglement is a physical phenomenon that occurs
when pairs or groups of particles are generated or interact in
ways such that the quantum state of each particle cannot be
described independently of the others, even when the particles
are separated by a large distance—instead, a quantum state must
be described for the system as a whole.
See p. 8, App. G to Appeal Br. Thus, claim 1 recites a law of nature or
natural phenomenon. Therefore, we proceed to Step 2A, Prong Two.
2. Integration into a Practical Application – Guidance Step 2A,
Prong Two
Having determined that claim 1 recites a law of natural or natural
phenomenon, we next look to determine whether the claim as a whole
integrates the recited judicial exception into a practical application of that
exception. Guidance, 84 Fed. Reg. at 53. “A claim that integrates a judicial
exception into a practical application will apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Id.
Examples in which additional elements (or combination of elements)
are found to have integrated a judicial exception into a practical application
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include: (1) an additional element reflects an improvement in the functioning
of a computer or other technology, or a technical field (see DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir. 2014); (2) an
additional element implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or manufacture that is
integral to the claim (see Eibel Process Co. v. Minnesota & Ontario Paper
Co., 261 U.S. 45, 64–65 (1923); and (3) an additional element applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception (see Diamond v. Diehr, 450 U.S. 175,
184, 187 (1981)). Guidance, 84 Fed. Reg. at 55. The “improvements”
analysis in Example (1) in Step 2A determines whether the claim pertains to
an improvement to the functioning of a computer or to another technology
without reference to what is well-understood, routine, conventional activity.
Id. That is, the claimed invention may integrate the judicial exception into a
practical application by demonstrating that it improves the relevant existing
technology although it may not be an improvement over well-understood,
routine, conventional activity; the word “improvements” in the context of
this consideration is limited to improvements to the functioning of a
computer or any other technology/technical field. See MPEP
§ 2106.04(d)(1).
The method of claim 1 requires using piezoelectric devices to produce
induction forces in an accelerometer on opposite sides of an acoustic and
electromagnetic barrier, adjusting an intensity of the electric field or the
mechanical force applied to the piezoelectric device, and calculating the
intensity of the induction force measured by the accelerometer. Appeal Br.
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(Claims App.). The piezoelectric device, acoustic and electromagnetic
barrier, and accelerometer are additional elements that reflect an
improvement in the ability to detect and measure induction forces reflecting
quantum entanglements, thus providing information on, e.g., remote sensing
and metrology. See Spec. 15, l. 16; Tr. 8., l. 22–9, l. 16, 12, l. 25–13, l. 22.
Thus, although reciting a law of nature or natural phenomenon, claim
1 is not “directed to” the judicial exception, and recites patent-eligible
subject matter.
We do not sustain the rejection of claim 1 under 35 U.S.C. § 101.
B. Rejection under § 112(a)
The Examiner rejects claim 1 under 35 U.S.C. § 112(a) for failing to
describe the best mode for carrying out the invention. Final Act. 7–8.
Appellant argues that the Examiner provides no evidence—subjective
or objective—to show that Applicant had more information than that
disclosed when the ’373 Application was filed, and therefore withheld
information. Appeal Br. 8.
A best mode analysis requires first determining whether, at the time of
filing the application, the inventor knew of a mode of practicing the claimed
invention that the inventor considered to be better than any other, which is a
wholly subjective inquiry. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d
923, 927–28 (Fed. Cir. 1990). If the inventor in fact contemplated a
preferred mode, the second part of the analysis compares what the inventor
knew to what the inventor disclosed, i.e., whether the inventor concealed the
preferred mode from the public. Id. at 928.
The Examiner fails to make the required best mode analysis in the
Final Office Action or Answer, instead merely questioning whether quantum
entanglements can be detected on a molecular level. See Final Act. 7–8;
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Ans. 8. On this basis, we do not sustain the rejection of claim 1 under
§ 112(a).
C. Rejection under § 112(b)
The Examiner rejects claim 1 under 35 U.S.C. § 112(b) as indefinite.
Final Act. 8–9. The Examiner finds, “[i]f the method that results in
‘quantum entanglements’ is enabled by the structure, it would also
seemingly be prevented by that structure.” Id. at 8. The Examiner also finds
“[q]uantum entanglements involve sub atomic particles and their properties,
including spin, polarization and other determinable properties. They involve
a symmetry between subatomic particles at the generation of pairs of these
particles. Consequently, how the method actually works is not definite.”
Ans. 6.
In response, Appellant provides a general explanation of quantum
entanglement, as well as the Declaration of Victo dos Santos Filho, and
copies of numerous scientific articles. See Appeal Br. 9–19 and App. A–X.
We consider a claim indefinite “when it contains words or phrases
whose meaning is unclear.” Ex parte McAward, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential)) (quoting In re Packard, 751 F.3d
1307, 1314 (Fed. Cir. 2014)). In the rejection, the Examiner does not
identify any words or phrases whose meaning is unclear, thus fails to show
indefiniteness of claim 1.
We do not sustain the rejection of claim 1 under 35 U.S.C. § 112(b).
DECISION SUMMARY
In summary:
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Application 14/146,373
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Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
1 101 Law of Nature, Natural Phenomenon 1
1 112(a) Best Mode 1
1 112(b) Indefiniteness 1
Overall
Outcome
1
REVERSED