Integrated Systems Excellence CorporationDownload PDFPatent Trials and Appeals BoardApr 9, 202014531069 - (D) (P.T.A.B. Apr. 9, 2020) Copy Citation 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. 14/531,069 11/03/2014 Francis YEE 1182-0001 7470 102492 7590 04/09/2020 Hsuanyeh Law Group, PC 11 Beacon Street Suite 900 Boston, MA 02108 EXAMINER LE, VIET ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 04/09/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): hsuanyeh@gmail.com hsuanyeh@hsuanyeh.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FRANCIS YEE ____________ Appeal 2019-005465 Application 14/531,069 Technology Center 3700 ____________ Before MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1, 6–17, 21, and 25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Integrated Systems Excellence Corporation as the applicant and real party in interest. Appeal Br. 3. Appeal 2019-005465 Application 14/531,069 2 THE INVENTION Appellant’s invention suppresses fire with electromagnetic waves. Spec. ¶¶ 4, 7. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of suppressing fires, the method comprising: identifying a flame using a heat sensor, the flame comprising plasma; transmitting an electromagnetic signal from an antenna to the flame so as to generate a longitudinal magnetohydrodynamic compressing wave within the flame, wherein the electromagnetic signal comprises a pulsed electromagnetic signal having a pulse duration and a pause between neighboring pulses, wherein the pulse duration corresponds to a compression portion of the longitudinal magnetohydrodynamic compressing wave, and the pause corresponds to a rarefaction portion of the longitudinal magnetohydrodynamic compressing wave; monitoring a plasma frequency of the plasma of the flame using a frequency sensor in response to the electromagnetic signal; and varying a plasma dispersion frequency of the electromagnetic signal transmitted to the flame in response to the monitoring such that the flame remains suppressed, wherein the electromagnetic signal is configured to have at least one of a same velocity and a same phase as that of the plasma, and wherein the plasma dispersion frequency of the electromagnetic signal resonates with the plasma frequency of the plasma of the flame thereby having a dispersive effect on the plasma. THE REJECTIONS 1. Claims 1, 6–16, 21, and 25 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Appeal 2019-005465 Application 14/531,069 3 2. Claims 6 and 7 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. 3. Claim 12 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 4. A rejection of claims 1, 6–16, 21, and 25 under 35 U.S.C. § 112, second paragraph, as indefinite has been withdrawn by the Examiner. Final Act. 9–10; Ans. 9. 5. A rejection of claim 17 as non-enabled has been obviated by Appellant cancelling the claim. Ans. 9. OPINION Non-Enablement of Claims 1, 6–16, 21, and 25 Appellant argues claims 1, 6–16, 21, and 25 as a group. Appeal Br. 4–9. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). The enablement requirement is codified in 35 U.S.C. § 112(a), which states: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor . . . of carrying out the invention. Enablement is determined as of the effective filing date of the patent’s application. See Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371– 72 (Fed. Cir. 1999). “To be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech, Inc. v. Appeal 2019-005465 Application 14/531,069 4 Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). Whether undue experimentation would have been required to make and use an invention is a question of law. See Enzo Biochem, 188 F.3d at 1369. Enablement is not precluded where a “reasonable” amount of routine experimentation is required to practice a claimed invention, however, such experimentation must not be “undue.” Id. at 1371. The Federal Circuit lists the following factors to consider when determining if a disclosure requires undue experimentation: (1) the quantity of experimentation necessary, (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. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” Id. In the instant case, the Examiner’s conclusion of non-enablement is informed by a review, analysis, and discussion of the following factors: (1) breadth of the claims; (2) state of the prior art; (3) the level of ordinary skill; and (4) the amount of direction provided by the inventor. Final Act. 2–6. In the foregoing regard, we note that it is not necessary to discuss each Wands factor in an enablement rejection. In re Hillis, 484 F.App’x 491, 495 (Fed. Cir. 2012). The Examiner’s specific observations about the completeness, or lack thereof, of Appellant’s enabling disclosure are reproduced below. Appeal 2019-005465 Application 14/531,069 5 A flame is already known to generate magneto- hydrodynamic wave components (Alfven waves, Slow and fast MHD waves). The applicant fails to describe what is required of the electromagnetic wave to produce more compression waves within the flame and suppress a fire. Currently, the only equations found within the disclosure of the applicant are for determining physical characteristics of a plasma based on given variables and chemical constants. However, nothing is included for determining the electro- magnetic signal required to produce the desired wave within the flame and suppress said flame. One with ordinary skill in the art would therefore require undue experimentation in order to determine the method needed to emit the correct wave properties (frequency, amplitude, etc) to create a compression wave within the flame that is capable of suppressing said flame. The claim states “at least one parameter of the pulsed electromagnetic signal is selected such that the compression waves resonate with a frequency of the plasma.” It is difficult to determine what is desired by the claim. In known physics, the resonance frequency is when a first system oscillates to increase the amplitude of a second system. The resonance frequency would be equivalent to the natural frequency of the second system, where such frequency from the first system would essentially amplify or increase the strength of the frequency of the second system. Claim 5 appears to claim more specifically the resonance frequency, wherein the resonance frequency must have same velocity and phase to be considered a resonance frequency. There is [sic] appears to be no implication of such as described within the disclosure of the application. It is not clear what parameter is to be selected such that the compression wave resonates with the frequency of the plasma. Does this mean to simply transmit a resonance frequency? Final Act. 6–7. Appeal 2019-005465 Application 14/531,069 6 Appellant argues that, although it might require experimentation to practice the invention, such experimentation is not “undue.” Appeal Br. 5.2 With respect to the “breadth of the claims” factor, Appellant argues that one of ordinary skill can initially transmit an electromagnetic wave to a fire that has relatively arbitrary properties commensurate with the particular type of fire to be suppressed and then determine optimal characteristics for such signal using an iterative feedback process to suppress the fire. Id. at 6–7. With respect to the “state of the art” factor, Appellant argues that the Examiner concedes that it is known to use electromagnetic waves to extinguish a flame. Appeal Br. 7. Appellant presents no additional evidence regarding the state of the art. See generally Appeal Br. With respect to the “level of . . . skill” factor, Appellant argues that a person of ordinary skill in the art need only possess “some minimal literary potency” to read and understand Appellant’s claims. Appeal Br. 8. Appellant presents no additional evidence regarding the level of ordinary skill in the art. See generally Appeal Br. With respect to the “amount of direction” factor, Appellant argues that the Specification discloses determining optimal characteristics of an electromagnetic signal using an iterative feedback process. Appeal Br. 8. Appellant further directs our attention to limitations in claim 1 directed to: (1) using a “frequency sensor” that responds to a signal; (2) varying the frequency of the signal in response to monitoring; (3) configuring the signal to have the same velocity or same phase as the flame plasma; and (4) 2 Citations herein to “Appeal Br.” are to the amended Appeal Brief filed by Appellant on March 27, 2020. Appeal 2019-005465 Application 14/531,069 7 causing the signal frequency to resonate with the frequency of the flame plasma. Id. at 8–9. Appellant then concludes that: One of ordinary skill in the art can simply start from an initial frequency of the electromagnetic signal, based at least in part on the measurement of a frequency sensor, and achieve fire suppression as the frequencies resonate. Id. at 9. In response, the Examiner points out that Appellant advances no evidence that it is known in the art how to transmit resonance frequency to a flame that would create a longitudinal magnetohydrodynamic compression wave within the plasma of the flame, and further result in a dispersive effect on a flame. Ans. 11. Having reviewed the Specification, the accompanying Drawings, and the evidence, or lack thereof, presented by Appellant, we agree with the Examiner that claim 1 is not enabled. There is no evidence, whether documentary or testimonial, that the related technology which is the subject matter of the claims is in anything other than its infancy. We are not apprised of any successful commercialization of the underlying related technology. We are not apprised of any literature, whether patent literature or non-patent literature, that provides a reasonably detailed disclosure as to how fire can be suppressed or extinguished by electromagnetic wave transmission. Genentech, 108 F.3d at 1365; see also In re Howarth, 654 F.2d 103, 106 (Fed. Cir. 1981) (providing guidance on the extent to which an applicant can supplement its disclosure with information known to the person of ordinary skill, but that resides outside of the four corners of its patent specification). Appeal 2019-005465 Application 14/531,069 8 Appellant’s response to the Examiner’s discussion regarding the state of the art and the level of ordinary skill in the art renders Appellant’s overall presentation on the merits decidedly unpersuasive. Given the apparent lack of development and commercialization of reasonably related subject matter, we would have expected Appellant to provide more, not less, enabling disclosure. Appellant’s argument that a person of ordinary skill in the art need only possess “at least some minimal literary potency” strikes us as decidedly unrealistic. Indeed, we find it difficult to ascertain the level of “ordinary” skill in the “art,” where Appellant fails to provide any evidence that there is any cognizable, established “art” related to this particular type of fire suppression. Appeal Br. 8. Appellant’s Specification is written at a highly conceptual level with little practical teaching disclosure and nothing that can reasonably be characterized as a “working example.” Wands, 858 F.2d at 737 (recognizing the presence or absence of working examples as a factor in whether experimentation would be undue). Appellant’s argument that experimentation to practice the invention is not “undue” is largely rhetorical and is devoid of evidentiary support. In view of the foregoing, we sustain the Examiner’s Section 112 non- enablement rejection of claims 1, 6–16, 21, and 25. Non-Enablement - Claims 6 and 7 The Examiner also separately rejects claims 6 and 7 under 35 U.S.C. § 112 due to additional non-enabled subject matter recited in claim 6 and incorporated by reference into claim 7. Final Act. 8. Appellant’s arguments in traverse are little more than a naked assertion that experimentation, although admittedly required, is not “undue.” Appeal Br. 9. This argument Appeal 2019-005465 Application 14/531,069 9 is not sufficient to apprise us of Examiner error. We sustain this alternative grounds of rejection adopting, as our own, the Examiner’s findings and conclusions set forth in the Final Rejection. See Final Act. 8. Written Description – Claim 12 Claim 12 depends from claim 8 and adds the limitation: “wherein generating the first and second compression waves comprises generating a set of one or more compression waves using an antenna.” Claims App. The Examiner finds that: The original disclosure fails to describe the use of specifically an antenna. Though broad reaching devices are described, the scope has been narrowed beyond that which is originally disclosed. Final Act. 9. Appellant’s argument in traverse, in its entirety, is that: [T]he original disclosure describes signal generator 305. It is well-known in the art that, in the case of an electromagnetic signal, signal generator 305 includes an antenna. Appeal Br. 10. The word “antenna” does not appear in Appellant’s Specification or Drawings. See generally Spec., Figs. 1–4. Appellant’s Specification teaches that a wide variety of signal generators may be used and, if the transmitted signal produces compression waves, the signal generator 305 may be considered to be a compression wave generator. Spec. ¶ 64. Appellant’s signal generator 305 may be an acoustic “speaker.” Id. The written description requirement is met when the disclosure “allow[s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). The proper inquiry is “whether the Appeal 2019-005465 Application 14/531,069 10 disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Appellant’s naked assertion as to what may be “well-known” is not sufficient to demonstrate possession of the invention. We sustain the Examiner’s Section 112 written description rejection of claim 12. CONCLUSION In summary: Claims Rejected § Bases Aff’d Rev’d 1, 6–16, 21, 25 112 Enablement 1, 6–16, 21, 25 6, 7 112 Enablement 6, 7 12 112 Written Description 12 Overall Outcome 1, 6–16, 21, 25 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). AFFIRMED Copy with citationCopy as parenthetical citation