11356372 (B.P.A.I. Jun. 29, 2012)

Ex Parte Gosvener

Board of Patent Appeals and InterferencesJun 29, 2012

11356372 (B.P.A.I. Jun. 29, 2012)

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. 11/356,372 02/15/2006 Kendall C. Gosvener RAR603.02 1737 29762 7590 06/29/2012 RICHARD A. RYAN ATTORNEY AT LAW 440 W. FALLBROOK AVENUE SUITE 104 FRESNO, CA 93711 EXAMINER WAKS, JOSEPH ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 06/29/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KENDALL C. GOSVENER ____________ Appeal 2010-002832 Application 11/356,372 Technology Center 2800 ____________ Before SCOTT R. BOALICK, JEFFREY S. SMITH, and STANLEY M. WEINBERG, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002832 Application 11/356,372 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Invention Appellant’s invention relates to a magnetically actuated reciprocating motor and process using reverse magnetic switching. Title. Representative Claim 1. A magnetically actuated reciprocating motor, comprising: a cylinder having a first end and a second end, said cylinder defining a chamber therein; a piston reciprocally disposed in said chamber, said piston having a first end generally disposed toward said first end of said cylinder and a second end generally disposed toward said second end of said cylinder, said piston comprising a piston magnet having a piston magnet polarity directed outward of said first end of said piston toward said first end of said cylinder; means for converting reciprocating movement of said piston to rotate a work object, said converting means comprising a first output shaft; a magnetic switching device disposed above said first end of said cylinder, said magnetic switching device comprising a magnetic fixture having one of more fixture magnets, a first fixture polarity and a second fixture polarity, said first fixture polarity corresponding to said piston magnet polarity and said Appeal 2010-002832 Application 11/356,372 3 second fixture polarity opposite said piston magnet polarity; and means interconnecting said first output shaft with said magnetic fixture of said magnetic switching device for controlling rotational movement and timing of said magnetic fixture to reciprocate said piston in said chamber, wherein said piston is configured to move toward said second end of said cylinder when said first fixture polarity of said one or more fixture magnets is disposed toward said piston magnet and move toward said first end of said cylinder when said second fixture polarity of said one or more fixture magnets is disposed toward said piston magnet so as to rotate said first output shaft and said work object. Examiner’s Rejections Claims 1-20 stand rejected under 35 U.S.C. § 101 for lack of utility. Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph for lack of enablement. ANALYSIS Section 101 rejection for lack of utility Claim 1 recites “means interconnecting said first output shaft with said magnetic fixture of said magnetic switching device for controlling rotational movement and timing of said magnetic fixture to reciprocate said piston in said chamber.” The Examiner finds that claim 1 lacks utility because the “means interconnecting” describes a perpetual motion machine that violates the principle of energy conservation. Ans. 3-4. In particular, the Examiner finds that no external force is claimed or disclosed in the Specification. Ans. 5-6. Specifically, the Examiner finds that page 9, lines Appeal 2010-002832 Application 11/356,372 4 2-7 of Appellant’s Specification states that the motor does not rely on an external source of power or a prime mover to pivot, rotate or otherwise move the permanent magnets from an attracting position to a repelling position in order to reciprocally drive the piston inside the cylinder. Ans. 5- 6. Appellant contends that Appellant’s Specification describes that an external force is applied to move the magnetic switching device 48 and begin the required magnetic switching action and to overcome losses from friction. Therefore, Appellant contends that the motor recited in claim 1 does not violate the principle of energy conservation or result in a perpetual motion machine. App. Br. 8. We agree with Appellant. The Examiner, on pages 5-6 of the Answer, is citing page 9 of the Specification as originally filed. The Examiner has not addressed pages 9 and 13 of the Specification as amended, which states “Except as required to initiate operation of the motor and to overcome friction and other losses, the new magnetically actuated reciprocating motor does not rely on an external source of power….” (emphasis added). The Examiner has not provided persuasive evidence or argument to show that Appellant’s Specification as amended discloses a perpetual motion machine. Therefore, contrary to the Examiner’s finding at Ans. 5-6, we find that Appellant’s Specification does rely to some extent on an external power source and does not disclose a perpetual motion machine.1 We do not sustain the rejection of claims 1-20 under 35 U.S.C. § 101 for lack of utility. 1 Because we find that Appellant’s Specification discloses an external power source, we do not address the Examiner’s alternative reason for finding no utility: that the claims fail to recite an external force. Appeal 2010-002832 Application 11/356,372 5 Section 112, first paragraph rejection The Examiner finds that claim 1 is not supported by a utility because claim 1 recites a perpetual motion machine. See Ans. 4. We disagree with the Examiner for the reasons given in our analysis of the § 101 rejection. We do not sustain the rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph. DECISION The rejection of claims 1-20 under 35 U.S.C. § 101 is reversed. The rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph is reversed. REVERSED gvw