Ex Parte Plews

Patent Trial and Appeal Board

Feb 18, 2014

11514405 (P.T.A.B. Feb. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DENNIS J. PLEWS
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Appeal 2011-012521
Application 11/514,405
Technology Center 3600
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Before MICHAEL W. KIM, GAY ANN SPAHN, and
NINA L. MEDLOCK, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-16 under 35 U.S.C. § 101 “because the disclosed
invention is inoperative and therefore lacks utility.” Ans. 4. An oral hearing
in accordance with 37 C.F.R. § 41.47 was held on Jan. 9, 2014. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to a “device [which] exploits the
inertial mass and rotational energy of . . . radially freely movable masses and
generates linear motion of the . . . device and any object to which the device
is affixed.” Spec. 6, para. [00010], ll. 5-8. Claim 1, reproduced below, is
illustrative of the appealed subject matter.
1. A propulsion device for creating linear motion by
applying a fixed mechanical interference into the path of
counter-rotating inertia thrust masses that translates energy to
an impulse drive plate by absorbing a portion of the kinetic
energy as the momentum of the rotating thrust masses is
diverted by the fixed mechanical interference, within a closed
system, which comprises;
a plurality of capture plates having a plurality of capture
slots equidistantly spaced about the periphery of the capture
plates;
a plurality of capture plate gears;
an impulse drive plate having an first side and a second
side, with the plurality of capture plates being mounted on the
first side of the impulse drive plate and the plurality of capture
plate gears being mounted to the second side of the impulse
drive plate, the plurality of capture plates in rotational
communication with the plurality of capture plate gears by way
of a pair of capture plate shafts;
a plurality of inertial thrust masses positioned within
corresponding capture slots of the plurality of capture plates;
an impulse body being mounted to the first side of the
impulse drive plate and spaced from the plurality of capture
plates, the impulse body having a plurality of impulse ramps
sized for placement between the plurality of capture plates for
engagement of the plurality of inertia thrust masses positioned
within the capture slots of the capture plates; and
wherein a rotating of the plurality of capture plate gears
will in turn rotate the plurality of capture plate shafts to cause
rotation of the capture plates for clockwise and counter-
clockwise rotation of the plurality of inertial thrust masses
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within the capture slots with the rotating plurality of inertial
thrust masses making contact with the impulse ramps.

ANALYSIS
There does not appear to be any dispute that Appellant’s Specification
asserts a specific and substantial utility (i.e., converting rotational energy
into linear motion for propulsion) for the claimed invention. Rather, the
basis of the Examiner’s rejection under 35 U.S.C. § 101 is that the disclosed
invention is wholly inoperative and therefore, lacks credible utility.
As a matter of Patent Office practice, a specification which contains a
disclosure of utility which corresponds in scope to the subject matter sought
to be patented must be taken as sufficient to satisfy the utility requirement of
35 U.S.C. § 101 for the entire claimed subject matter, unless there is reason
for one skilled in the art to question the objective truth of the statement of
utility or its scope. Assuming that sufficient reason to question the statement
of utility and its scope does exist, a rejection for lack of utility under
35 U.S.C. § 101 will be proper on that basis; such a rejection can be
overcome by suitable proofs indicating that the statement of utility and its
scope as found in the specification are true. In re Langer, 503 F.2d 1380,
1391-92 (CCPA 1974).
Thus, “the PTO has the initial burden of challenging a presumptively
correct assertion of utility in the disclosure.” In re Brana, 51 F.3d 1560,
1566 (Fed. Cir. 1995). 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).
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Independent claim 1 is directed to “[a] propulsion device” which is
capable of
creating linear motion by applying a fixed mechanical
interference into the path of counter-rotating inertia thrust
masses that translates energy to an impulse drive plate by
absorbing a portion of the kinetic energy as the momentum of
the rotating thrust masses is diverted by the fixed mechanical
interference.
App. Br., Clms. App’x. Independent claim 10 is directed to “[a]
propulsion system” which is capable of “converting inertial and
rotational energy into linear motion.” Id.
Our threshold inquiry is to determine if 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 In re Swartz,
232 F.3d 862, 864 (Fed. Cir. 2000) (the court found that “the PTO provided
substantial evidence that those skilled in the art would ‘reasonably doubt’
the asserted utility and operability of cold fusion.”).
The Examiner finds that “[t]he device is inoperative since it claims a
propulsive force without an equal and opposite force” in violation of
Newton’s law of conservation of momentum, because “[t]he movement of
the weights will not result in a unidirectional force since momentum will be
conserved.” Ans. 4.
Appellant argues that the Examiner has failed to meet the burden of
establishing inoperability. App. Br. 18. Appellant points out that “[i]n order
to meet this initial burden, the Examiner must present 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. (citing Ex parte Ping-Wha Lin, 2009
WL 3614582, *5 (BPAI 2009)). Appellant also argues that the present
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invention does not violate the law of conservation of momentum. App. Br.
15. More particularly, Appellant notes that “[t]he law of conservation of
momentum provides that the total momentum within a close[d] system
remains unchanged by action within the system,” and “[i]n the present case,
momentum is created in the system comprised of the thrust masses by
spinning them.” App. Br. 14-15. Further, Appellant notes that “[t]he energy
needed to create the momentum in the claimed device (and in the device
shown in the test videos) is obtained from the battery attached to the electric
motor,” wherein “[t]he motor, in turn, spins the capture discs in which the
thrust masses are contained.” App. Br. 15.
In the Response to Argument section of the Answer, the Examiner
notes that Appellant has provided “evidence in the form of dynamic
analysis, affidavits [or declarations], and video.” Ans. 10. The Examiner
responds to Appellant’s dynamic analysis in the Declaration of Dennis J.
Plews (hereinafter “Declaration”) by stating that Appellant’s Propulsion
System’ does not have utility, is inoperable and incapable of providing
propulsion, and therefore lacks patentable utility, because the device
described by Appellant will merely vibrate since a force interaction between
thrust masses 2, 3 and the impulse ramps 17, 30 cannot function in the way
described by Appellant. Ans. 7. The Examiner relies on the faulty premise
that “[t]he analysis of the dynamic system described by [A]ppellant is
flawed in that it treats forces which are internal to a dynamic system as if
they were external to the dynamic system,” and “there are no external
forces capable of providing propulsion.” Id.
We are persuaded by Appellant’s arguments. The Examiner’s
rejection is based on a flawed assumption that there are no external forces
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acting in Appellant’s system. The law of conservation of momentum is
often stated as follows: “[f]or a collision occurring between object 1 and
object 2 in an isolated system . . . , the total momentum of the two objects
before the collision is equal to the total momentum of the two objects after
the collision.” See the Physics Classroom(/) >>Physics Tutorial(/class) >>
Momentum and Its Conservation(/class/momentum) >> Isolated Systems,
available at http://www.physicsclassroom.com/Class/momentum/
U4L2c.cfm (last visited: Feb. 9, 2014). In other words, “[t]otal system
momentum is conserved for collisions occurring in isolated systems.” Id.
However, the present invention does not represent an isolated system.
Indeed, an isolated system is defined as “a system that[] is free from the
influence of a net external force that alters the momentum of the system,”
and “[t]here are two criteria for the presence of a net external force,”
namely, “it must be . . . a force that originates from a source other than the
two objects of the system[;] . . . a force that is not balanced by other forces.”
Id. Thus, as argued by Appellant, the motor 22 of Appellant’s system
provides an external force on the system because (1) it produces a force that
originates from a source other than the two objects of the system and (2) it
produces a force that is not balanced by other forces.
Based upon the Examiner’s original rejection (Ans. 4 (determining the
“device is inoperable”)) and Response to Argument (Ans. 7 (determining
that “there are no external forces capable of providing propulsion”); see
also Ans. 8, 10-12, and 15-17), we conclude that the Examiner has not
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. See
Brana, 51 F.3d at 1566. Thus, the Examiner has not set forth a prima facie
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case that the claimed propulsion device lacks utility because the propulsion
device is inoperable, and the evidentiary burden was never shifted to the
Appellant to submit “evidence of operability that would be sufficient to
overcome reasonable doubt.” See Swartz, 232 F.3d at 862.

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.450(b), we enter a new
ground of rejection against claims 1-9 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to distinctly claim and particularly
point out the subject matter which Appellant regards as the invention.
Independent claim 1 recites “[a] propulsion device” which is capable
of “creating linear motion . . . , within a closed system.” App. Br., Clms.
App’x. Emphasis added. The recitation of “within a closed system” is
indefinite. On Jun. 30, 2009, Appellant filed a response to the Examiner’s
Final Office Action mailed on March 6, 2009 (hereinafter “Response”), and
in that Response, Appellant stated that “contrary to the Examiner’s
interpretation, the invention is not a closed system.” Response 3, ll. 2-4.
For the reasons discussed supra, we agree that the present invention is not
within a closed system, because the motor 22 produces an external force to
the system and therefore, Appellant’s recitation of “within a closed system”
in lines 6-7 of claim 1 as quoted supra is indefinite.

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DECISION
We REVERSE the Examiner’s decision to reject claims 1-16.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we ENTER A
NEW GROUND OF REJECTION against claims 1-9 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.

FINALITY OF DECISION
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. . . .

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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)(1)(iv) (2011).

REVERSED; 37 C.F.R. § 41.50(b)

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