Ex Parte Pinto

Patent Trial and Appeal Board

Apr 29, 2013

11197787 (P.T.A.B. Apr. 29, 2013)

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

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STATEMENT OF THE CASE
Fabrizio Pinto (Appellant) appeals under 35 U.S.C. § 134 from an
Examiner’s 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
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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
“inoperative” or fail to produce the results claimed and thus not considered
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to be a “useful” 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 Examiner’s
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 Appellant’s results have appeared in publications,
received an award, and been cited by other experts as facts. Id. at 16. The
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Appellant asserts that the lifting effect is observable but small and that the
present state of the invention is “imperfect,” “crude,” 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 appellant’s presumptively correct assertion of utility. In re Swartz, 232
F.3d 862, 864 (Fed. Cir. 2000). “The PTO may establish a reason to doubt
an invention’s asserted utility when the written description ‘suggest[s] an
inherently unbelievable undertaking or involve[s] implausible scientific
principles.”’ 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 Examiner’s 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.
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Therefore, we cannot sustain the Examiner’s 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 Examiner’s 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
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momentum of particles. Therefore, we cannot sustain the Examiner’s
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 Appellant’s 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 Examiner’s 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
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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 “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,” 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 Examiner’s 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.

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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 Examiner’s 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 “bears 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 .
. . .” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). “Section 112 requires that
the patent 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 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
“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
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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 “Wands factors”). 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 “[p]ower requirements for driving the propulsion
system are described in” 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.
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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 (“For simplicity, the reload time was everywhere assumed to be
negligible”); see also Spec. 30 (“ΔtReload is the time required to prepare the
new atomic cloud in the trap for the following cycle”), 31 (“In the limit in
which the reload time vanishes (ΔtReload → 0) . . . In this ideal limit, . . . the
total force on the atomic cloud must be equal to the weight of the entire
vehicle”), and 32 (“We have, in the ideal case in which the reload time
vanishes”). 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
Bohr’s 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
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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 “reactor power
densities in the order of ~ 1- 5 kW/kg are surely possible.” Page 37 also
indicates that a “small 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.” 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 (“it 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”) and Spec. 28
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(stating “we 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[],” “there 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,” and “[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”). 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 “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.” Spec. 28; see also id. (stating “[p]art of the refining work of
the present invention will be to consider in detail the dynamics of the
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evolution of the atoms in the intense radiation field”). Page 26 of the
Specification states that “it 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.” 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 “were generated by making use of a Mathematica
notebook [13] which encoded the equations discussed in this document”).
Also, the Examiner required a working model, and none was provided. Ans.
14-15 (“the 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 experimentation”). Therefore, the disclosure
and the lack of response to the Examiner’s request indicate that there is no
working example.
Regarding the next factor, the nature of the invention, the
Specification states that “[u]nlike conventional propulsion technology, the
propulsion system described in this [S]pecification does not consume fuel
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(although there is an energy requirement)” and that the “illustrative
embodiment is grounded in accepted physics principles, albeit leading-edge,
theoretical, experimental and applied physics.” 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 “leading-edge, theoretical,
experimental and applied physics,” 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 “[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 direction” and that the “illustrative
embodiment is grounded in accepted physics principles, albeit leading-edge,
theoretical, experimental and applied physics.” 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 “[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 direction” and that
the “illustrative embodiment is grounded in accepted physics principles,
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albeit leading-edge, theoretical, experimental and applied physics.” 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 “leading-edge, theoretical,
experimental and applied physics” 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 “almost immediate
ionization of the entire atomic population is highly likely in all
technologically meaningful cases.” Spec. 26 (emphasis added). The
Specification acknowledges that there is 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.” Spec. 28. However, there is no indication that the
“relatively brief time span” is predictable enough or sufficiently long to
make and use the claimed subject matter. The Specification also admits that
“[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.” 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.
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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
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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.
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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 “[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 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
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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)

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