Ex Parte PintoDownload PDFPatent Trial and Appeal BoardApr 29, 201311197787 (P.T.A.B. Apr. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FABRIZIO PINTO ____________________ Appeal 2010-012113 Application 11/197,787 Technology Center 3600 ____________________ Before: EDWARD A. BROWN, HYUN J. JUNG, and NEIL T. POWELL, Administrative Patent Judges. JUNG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012113 Application 11/197,787 2 STATEMENT OF THE CASE Fabrizio Pinto (Appellant) appeals under 35 U.S.C. § 134 from an Examinerâs decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b) enter a NEW GROUND OF REJECTION of claims 1-20. THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus comprising: a plurality of particles; at least one trap for confining said particles; a device for delivering electromagnetic radiation to the confined particles, wherein said device delivers an amount of electromagnetic radiation that is sufficient to: (i) induce long-range interactions between said particles; and (ii) cause said particles to either accelerate or hover. THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Cox Kasevich Gersonde Esslinger Hirano US 4,891,600 US 6,314,809 B1 US 6,462,333 B1 US 6,476,383 B1 US 6,495,822 B2 Jan. 2, 1990 Nov. 13, 2001 Oct. 8, 2002 Nov. 5, 2002 Dec. 17, 2002 Appeal 2010-012113 Application 11/197,787 3 THE REJECTIONS The following rejections are before us for review: Claims 1-20 stand rejected under 35 U.S.C. § 101 because the disclosed invention is inoperative and lacks utility; Claims 1-20 stand rejected under 35 U.S.C. § 101 because the claimed invention is not supported by either a substantial and credible asserted utility or a well-established utility; Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, because one skilled in the art would not know how to use the claimed invention since the claimed invention is not supported by a either a substantial or credible asserted utility or a well-established utility; Claims 1-9 and 19 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Claims 1-9 and 19 stand rejected under 35 U.S.C. §112, second paragraph, as incomplete for omitting essential elements; Claims 1-7 stand rejected under 35 U.S.C. §102(b) as anticipated by Esslinger, Hirano, Gersonde, or Kasevich; Claims 1-7, 9-12, and 14-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by Cox; and Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cox. ANALYSIS Inoperability The Examiner provides cases regarding inventions that are âinoperativeâ or fail to produce the results claimed and thus not considered Appeal 2010-012113 Application 11/197,787 4 to be a âusefulâ invention. Ans. 6-8. However, the record before us fails to show why the claimed subject matter is totally incapable of achieving a useful result, lacks even a small degree of utility, fails to attain even partial success in achieving a useful result, or is inconsistent with known scientific principles. Thus, on the record before us, we cannot sustain the Examinerâs rejection of claims 1-20 under 35 U.S.C. § 101 as inoperative. Substantial and Credible or Well-Established Utility The Examiner asserts that the claimed subject matter lacks substantial and credible or well-established utility. Ans. 4. The Examiner states that one of ordinary skill in the art would not accept a device that creates propulsion without fuel consumption per se and mass expulsion per se in creating a hovering or propelling force in both atmosphere and vacuum. Id. The Examiner finds that a device that creates propulsion without fuel consumption and mass expulsion to create a hovering or propelling force would require carrying out further research to reasonably confirm that the device worked. Id. at 5. The Appellant argues that motion can be achieved without consuming fuel and such motion is not a violation of conservation laws. Br. 13. The Appellant also provides examples of propulsion that do not consume fuel or expel mass. Id. at 13-14. The Appellant asserts that the claimed apparatus follows the Second Law of Thermodynamics. Id. at 14. The Appellant argues that the ability to transport mass and passengers from one location to another using energy but not expelling fuel is an advantage. Id. at 15. The Appellant also argues that the claimed apparatus is based on well-known physics principles, and the Appellantâs results have appeared in publications, received an award, and been cited by other experts as facts. Id. at 16. The Appeal 2010-012113 Application 11/197,787 5 Appellant asserts that the lifting effect is observable but small and that the present state of the invention is âimperfect,â âcrude,â but partially successful. Id. at 17. The Examiner further finds that the claimed subject matter would not create propulsion as momentum in one direction cancels itself out in the other direction and the claimed apparatus appears to be in the realm of theoretical physics and lacks concrete, tangible evidence of functioning as a propulsion system. Ans. 12-13. The Examiner has the initial burden of setting forth a reason to doubt an appellantâs presumptively correct assertion of utility. In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000). âThe PTO may establish a reason to doubt an inventionâs asserted utility when the written description âsuggest[s] an inherently unbelievable undertaking or involve[s] implausible scientific principles.ââ In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (quoting In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)) (alteration in original). Stated differently, the examiner must present the evidence necessary to establish a reason for one of ordinary skill in the art to question the objective truth of the statement of utility. Id. The Examinerâs finding that the claimed subject matter lacks a substantial and credible or well-established utility is not supported by evidence. The Examiner states that the skilled artisan would doubt the asserted utility but does not provide any supporting evidence. Merely asserting that the claimed subject matter would require further research to identify or confirm that it worked, appears to be in the realm of theoretical physics and lacks concrete, tangible evidence of functioning as a propulsion system is not enough to establish a reason for one of ordinary skill in the art to question the objective truth of the statement of utility. See Ans. 5, 13. Appeal 2010-012113 Application 11/197,787 6 Therefore, we cannot sustain the Examinerâs rejection of claims 1-20 under 35 U.S.C. § 101 as lacking substantial, credible, or well-established utility. Enablement The Examiner finds that one skilled in the art would not know how to use the claimed invention since it is not supported by either a substantial and credible asserted utility or a well-established utility for the reasons cited in the rejection of claims 1-20 under 35 U.S.C. § 101. Ans. 9. As discussed supra, the record lacks evidence sufficient to establish a reason for one of ordinary skill in the art to question the objective truth of the statement of utility. Thus, we cannot sustain the Examinerâs rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph. Indefiniteness and Incompleteness The Examiner finds that claims 1-9 and 19 fail to distinctly claim the invention because no propulsion system is claimed. Ans. 9. The Examiner further finds that claims 1-9 and 19 are incomplete for omitting essential elements. Id. The Examiner states that the omitted elements are the closed propulsion system with particles, piston, spring, and shield. The Appellant argues that the invention is not limited to a propulsion system and the claimed apparatus is a way to increase the momentum of particles. Br. 20. The Appellant also argues that there is no requirement for the claims to recite a propulsion system, that there is no requirement to include additional elements of a propulsion system, and that the claims recite elements of an apparatus that cooperate to increase the momentum of particles. Id. at 21-22. We agree with the Appellant that there is no requirement to recite a propulsion system and can merely recite parts of an apparatus to increase the Appeal 2010-012113 Application 11/197,787 7 momentum of particles. Therefore, we cannot sustain the Examinerâs rejection of clams 1-9 and 19 under 35 U.S.C. § 112, second paragraph, as indefinite or incomplete for omitting essential elements. Rejections under 35 U.S.C. § 102 The Examiner states that either Esslinger, Hirano, Gersonde, or Kasevich clearly anticipate claims 1-7 as best understood. Ans. 10. The Appellant argues that none of the references discloses that trapped particles should be exposed to an amount of electromagnetic radiation that is sufficient to induce a force to exhibit long-range interactions and cause the particles to accelerate or hover, as required by independent claim 1. Br. 23. The Appellant also argues that the references do not recognize the transformation of short-range interactions to long-range interactions and do not inherently anticipate because the energies that are applied by the cited references are too low. Id. The Appellantâs arguments are persuasive. None of Esslinger, Hirano, Gersonde, or Kasevich expressly discloses exposing particles to an amount of electromagnetic radiation sufficient to induce a force to exhibit long-range interactions and cause the particles to accelerate or hover. Also, none of the cited references necessarily includes exposure to electromagnetic radiation at an amount to induce exhibiting long-range interactions and causing particles to accelerate or hover. Thus, we cannot sustain the Examinerâs rejection of claims 1-7 under 35 U.S.C. §102(b) as anticipated by Esslinger, Hirano, Gersonde, or Kasevich. The Examiner finds that Cox discloses the subject matter of claims 1- 7, 9-12, and 14-20 as best understood. Ans. 10. For independent claim 1, the Appellant argues that Cox does not disclose an operating mode wherein sufficient energy is delivered by a laser to induce long-range interactions Appeal 2010-012113 Application 11/197,787 8 between particles causing them to accelerate or hover. Br. 24. The Appellant also asserts that the power required to induce such long-range interactions is beyond the capabilities of the laser disclosed by Cox. Id. We are persuaded. Cox does not expressly disclose âa device for delivering electromagnetic radiation to the confined particles, wherein said device delivers an amount of electromagnetic radiation that is sufficient to: (i) induce long-range interactions between said particles; and (ii) cause said particles to either accelerate or hover,â as recited by claim 1. Also, Cox does not make clear that the missing descriptive matter is necessarily present such that it would be recognized by the skilled artisan. The Appellant similarly argues that Cox does not disclose a device that delivers an amount of electromagnetic radiation that is sufficient to induce long-range interactions between the particles and cause them to accelerate, as required by independent claim 17. Br. 25. The Appellant further contends that Cox fails to disclose a controller that, in conjunction with a power source, provides an amount of current to a laser to cause the laser to deliver an amount of electromagnetic radiation that is sufficient to induce long-range interactions between the particles and cause them to accelerate or hover, as required by independent claim 19. Id. For the reasons discussed supra with respect to claim 1, we agree with the Appellant. Accordingly, we cannot sustain the Examinerâs rejection of independent claims 1, 17, and 19, or their dependent claims 2-7, 9-12, 14-16, 18, and 20 under 35 U.S.C. § 102(b) as anticipated by Cox. Appeal 2010-012113 Application 11/197,787 9 Rejections under 35 U.S.C. § 103 For claim 8, the Examiner finds that Cox fails to disclose how many traps are utilized to trap particles. Ans. 11. However, the Examiner concludes that it would have been obvious to utilize a field to generate traps to hold a predetermined number of atoms because it would be a duplication of essential working parts involving only routine skill in the art. Id. Because the Examinerâs reasoning does not cure the deficiency of Cox discussed supra in regard to claim 1, we cannot sustain the rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Cox. New Ground of Rejection The U.S. Patent and Trademark Office âbears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application . . . .â In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). âSection 112 requires that the patent specification enable âthose skilled in the art to make and use the full scope of the claimed invention without âundue experimentationââ in order to extract meaningful disclosure of the invention and, by this disclosure, advance the technical arts. Koito Mfg. Co., Ltd. v. Turn-Key- Tech, LLC, 381 F.3d 1142, 1155 (Fed. Cir. 2004) (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed.Cir.1997) (citation omitted)). Some experimentation, even a considerable amount, is not âundueâ 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 Appeal 2010-012113 Application 11/197,787 10 Jackson, 217 USPQ 804, 807 (Bd. App. 1982)). The âundue experimentationâ 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 âWands factorsâ). Wands, 858 F.2d at 737. The analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. Id. Regarding the first of the Wands factors, the quantity of experimentation needed to make or use the invention based on the content of the disclosure, the Specification does not describe, for example, what amount of electromagnetic radiation a device must deliver that is sufficient to induce long-range interactions between particles and cause the particles to accelerate or hover, as required by independent claims 1 and 17, or current a controller must provide to a laser that is sufficient to induce long-range interactions between particles and cause the particles to accelerate or hover, as required by independent claim 19. Page 10, lines 10-11, of the Specification states that â[p]ower requirements for driving the propulsion system are described inâ but omits what describes such power requirements. Thus, further information and experimentation would be required to find the amount of electromagnetic radiation a device must deliver or current a controller must provide to a laser that is sufficient to induce long-range interactions between particles and cause the particles to accelerate or hover, as required by independent claims 1, 17, and 19. Appeal 2010-012113 Application 11/197,787 11 Pages 35-37 of the Specification provide a numerical example that calculates 35.0 MW is required for a craft of 10 metric tons. However, the Specification does not indicate that 35.0 MW actually leads to an amount of electromagnetic radiation that a device must deliver or current that a controller must provide to a laser that is sufficient to induce long-range interactions between particles and cause the particles to accelerate or hover, as required by independent claims 1, 17, and 19. Instead, the calculation assumes that reload time is negligible, but the Specification fails to indicate that the assumption would also apply to an actual practicing of the invention. Spec. 35 (âFor simplicity, the reload time was everywhere assumed to be negligibleâ); see also Spec. 30 (âÎtReload is the time required to prepare the new atomic cloud in the trap for the following cycleâ), 31 (âIn the limit in which the reload time vanishes (ÎtReload â 0) . . . In this ideal limit, . . . the total force on the atomic cloud must be equal to the weight of the entire vehicleâ), and 32 (âWe have, in the ideal case in which the reload time vanishesâ). For example, the Specification does not indicate if any particles have a negligible reload time after absorbing 35 MW or how any particles can be made to have a negligible reload time after absorbing 35 MW. The numerical example also lists an average interatomic distance of 5 times Bohrâs radius a0. Spec. 35. However, the Specification fails to describe how after absorbing 35 MW of energy, a gas cloud can be made to revert back to a condition in which particles have an average interatomic distance of 5a0 and maintain a negligible reload time. Thus, experimentation would be required to find the amount of electromagnetic energy, particles capable of negligible reload time while returning to an average interatomic distance of 5a0 after absorbing that amount of energy, and returning particles to an Appeal 2010-012113 Application 11/197,787 12 average interatomic distance of 5a0 after absorbing that amount of energy in order to make and use the claimed apparatus. Furthermore, page 37 addresses the feasibility of laser pulses requiring over 30 MW of electric power and speculates that âreactor power densities in the order of ~ 1- 5 kW/kg are surely possible.â Page 37 also indicates that a âsmall selection of such literature [regarding the study of high power, high efficiency, low-mass nuclear reactors for use in space applications], which cannot be cited here even partially because of its sheer size, can be found at [52] and References therein.â However, no literature regarding reactors capable of powering lasers pulses over 30 MW is included with the Specification, and the record indicates that no such literature was cited during prosecution. Thus, even accepting 30 MW leads to the claimed amount of electromagnetic radiation, the Specification surmises that there is a suitable power source but fails to disclose such a suitable power source. Therefore, one of ordinary skill in the art would need additional information and to experiment to find or develop a suitable device for delivering electromagnetic radiation or controller with power source that can be put on a 10 metric ton craft and capable of over 30 MW. Furthermore, the Specification indicates that the delivering of electromagnetic radiation must occur while the particles behave as atomic dipoles and before evolving toward a different state, the dynamics of which requires further work. Spec. 26 (âit is immediate to conclude that the almost immediate ionization of the entire atomic population is highly likely in all technologically meaningful cases, and that, as already pointed out in this section, it is imperative to choose parameters that ensure the expulsion of the gas from the trap well before this process is completedâ) and Spec. 28 Appeal 2010-012113 Application 11/197,787 13 (stating âwe assume that the phase of upward acceleration of the atoms takes place in the very early stages immediately following the application of the laser radiation field and before the eventual modification of the wavefunctions intervene[],â âthere exists a relatively brief time span immediately following the laser turn-on time, during which the atomic dipoles behave as such, although, eventually, the gas evolves towards a very different state, such as a plasma for instance,â and â[p]art of the refining work of the present invention will be to consider in detail the dynamics of the evolution of the atoms in the intense radiation fieldâ). However, the Specification does not describe how to deliver electromagnetic radiation to particles while they are behaving as atomic dipoles and before turning to plasma. Thus, one of ordinary skill would, at the least, need to experiment to uncover how to deliver electromagnetic radiation to particles to cause acceleration or hovering before ionization, which the Appellant discloses is necessary for practicing of the invention. As for the factor regarding the amount of direction or guidance presented, as discussed supra, the Specification provides no indication of the amount of electromagnetic radiation that is sufficient to induce particles to exhibit long-range interactions and cause the particles to accelerate or hover, as required by independent claims 1, 17, and 19. Moreover, the Specification provides no direction or guidance as to how to deliver the electromagnetic radiation to the particles in the ârelatively brief time span immediately following the laser turn-on time, during which the atomic dipoles behave as such, although, eventually, the gas evolves towards a very different state.â Spec. 28; see also id. (stating â[p]art of the refining work of the present invention will be to consider in detail the dynamics of the Appeal 2010-012113 Application 11/197,787 14 evolution of the atoms in the intense radiation fieldâ). Page 26 of the Specification states that âit is immediate to conclude that the almost immediate ionization of the entire atomic population is highly likely in all technologically meaningful cases, and that, as already pointed out in this section, it is imperative to choose parameters that ensure the expulsion of the gas from the trap well before this process is completed.â However, the Specification provides no guidance as to how to choose parameters to ensure expulsion of the gas before immediate ionization. Turning to the Wands factor of the existence of working examples, the Specification describes a propulsion system 100 (Spec. 9-11) and a vehicle system incorporating propulsion system 100 (Spec. 12-13). The Specification does not provide clear indication that there is a working example of the propulsion system 100 or the vehicle system incorporating such a system 100. Also, pages 35-38 of the Specification describe numerical examples which âwere generated by making use of a Mathematica notebook [13] which encoded the equations discussed in this documentâ). Also, the Examiner required a working model, and none was provided. Ans. 14-15 (âthe Examiner required a working model however none was provided further supporting the fact that such a device to perform the method to generate thrust or hover is not readily available and would require further research, development, and experimentationâ). Therefore, the disclosure and the lack of response to the Examinerâs request indicate that there is no working example. Regarding the next factor, the nature of the invention, the Specification states that â[u]nlike conventional propulsion technology, the propulsion system described in this [S]pecification does not consume fuel Appeal 2010-012113 Application 11/197,787 15 (although there is an energy requirement)â and that the âillustrative embodiment is grounded in accepted physics principles, albeit leading-edge, theoretical, experimental and applied physics.â Spec. 3-4. Thus, the nature of the invention is such that conventional propulsion technology and its associated concepts do not appear to be applicable, and making and using the claimed apparatus requires familiarity with âleading-edge, theoretical, experimental and applied physics,â and not conventional concepts. Therefore, experimentation to make and use the claimed invention would likely involve concepts not routinely encountered in the art and thus would not be considered routine experimentation. Turning to the Wands factor regarding the state of the prior art, pages 1 and 4 of the Specification state that â[c]urrent propulsion technology is based on an action-reaction principle, whereby a gas is expelled at high- speed to propel a payload in the opposite directionâ and that the âillustrative embodiment is grounded in accepted physics principles, albeit leading-edge, theoretical, experimental and applied physics.â Thus, the Specification indicates that there is very little or no prior art for a propulsion system that is not based on action-reaction principle, such as the claimed apparatus. Therefore, the prior art would provide little guidance for any experimentation that is required, and thus such experimentation would not be routine. Considering the next Wands factor of the relative skill of those in the art, as discussed supra, the Specification states that â[c]urrent propulsion technology is based on an action-reaction principle, whereby a gas is expelled at high-speed to propel a payload in the opposite directionâ and that the âillustrative embodiment is grounded in accepted physics principles, Appeal 2010-012113 Application 11/197,787 16 albeit leading-edge, theoretical, experimental and applied physics.â Spec. 1 and 4. Thus, the Specification indicates that those in the propulsion art would have relatively little skill with the claimed apparatus of independent claims 1, 17, and 19 that are based on the âleading-edge, theoretical, experimental and applied physicsâ and not based on current action-reaction principles. Turning to the level of predictability in the art, the Specification indicates that using lasers to transform short-range interaction to long-range interaction among neutral atoms is more unpredictable than merely using lasers to transfer energy to such neutral atoms to cause ionization and eventually form plasma. The Specification states âalmost immediate ionization of the entire atomic population is highly likely in all technologically meaningful cases.â Spec. 26 (emphasis added). The Specification acknowledges that there is a ârelatively brief time span immediately following the laser turn-on time, during which the atomic dipoles behave as such, although, eventually, the gas evolves towards a very different state.â Spec. 28. However, there is no indication that the ârelatively brief time spanâ is predictable enough or sufficiently long to make and use the claimed subject matter. The Specification also admits that â[p]art of the refining work of the present invention will be to consider in detail the dynamics of the evolution of the atoms in the intense radiation field.â Thus, the Specification indicates that there is a low level of predictability regarding the amount of electromagnetic radiation that is sufficient to induce particles to exhibit long-range interactions and cause the particles to accelerate or hover, as required by independent claims 1, 17, and 19. Appeal 2010-012113 Application 11/197,787 17 The final Wands factor directs consideration towards the breadth of the claims, and the scope of independent claims 1, 17, and 19 is broad enough to encompass embodiments, such as the one shown in Figure 8 and described at pages 12-13 of the Specification. Thus, the disclosure needs to enable the skilled artisan to make and use the full scope of the claims, which include embodiments that can be applied to a vehicle 800 that includes propulsion system 100, nuclear power subsystem 810, crews quarters 830, and shielding 840. See Spec. 12. As discussed supra, the Wands factors indicate that experimentation is required to find the amount of electromagnetic radiation a device must deliver or current a controller must provide to a laser that is sufficient to induce long-range interactions between particles to cause them to accelerate or hover; that the Specification provides no direction or guidance as to how to deliver the electromagnetic radiation before the particles ionize; that there is no working example; that the nature of the claimed apparatus is such that any experimentation would involve concepts not routinely encountered in the art; that there is little prior art concerning the claimed apparatus so that any experimentation would not be considered routine; that those in the propulsion art would have relatively little skill with the claimed apparatus; that there is low level of predictability regarding the amount of electromagnetic radiation that is sufficient to cause particles to accelerate or hover; and that the breadth of the claims encompasses a vehicle 800 with propulsion system 100, nuclear power subsystem 810, crews quarters 830, and shielding 840. Considering all of the Wands factors, the facts from the disclosure underlying each of the Wands factors, and the evidence as a whole, the Appeal 2010-012113 Application 11/197,787 18 Specification fails to provide a reasonable amount of guidance as to the direction in which experimentation should proceed, and each of the Wands factors indicates that experimentation to make and use the full scope of the claims would be undue. Thus, we conclude that the disclosure fails to enable the skilled artisan to make and use the full scope of independent claims 1, 17, and 19 without undue experimentation. Accordingly, we reject claims 1, 17, 19, and their dependent claims 2-16, 18, and 20 under 35 U.S.C. § 112, first paragraph, as failing to meet the enablement requirement. DECISION The rejection of claims 1-20 under 35 U.S.C. § 101 because the disclosed invention is inoperative is reversed. The rejection of claims 1-20 under 35 U.S.C. § 101 because the claimed invention lacks a substantial utility is reversed. The rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph, because one skilled in the art would not know how to use the claimed invention is reversed. The rejection of claims 1-9 and 19 under 35 U.S.C. §112, second paragraph, as indefinite and for omitting essential elements is reversed. The rejection of claims 1-7 under 35 U.S.C. §102(b) as anticipated by Esslinger, Hirano, Gersonde, or Kasevich is reversed. The rejection of claims 1-7, 9-12, and 14-20 under 35 U.S.C. § 102(b) as anticipated by Cox is reversed. The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Cox is reversed. Appeal 2010-012113 Application 11/197,787 19 We enter a new ground of rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph, as failing to meet the enablement requirement. 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 â[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.â 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 proceeding 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. . . . Should the Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If the Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment, or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final Appeal 2010-012113 Application 11/197,787 20 action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). REVERSED; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation