Mitchell R. Swartz

Patent Trials and Appeals Board

Jun 30, 2020

12154712 - (R) (P.T.A.B. Jun. 30, 2020)

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.
12/154,712 05/28/2008 Mitchell R. Swartz 9642
7590 06/30/2020
Mitchell R. Swartz, ScD, EE, MD
16 Pembroke Road
Weston, MA 02493
EXAMINER
KEITH, JACK W
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
06/30/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MITCHELL R. SWARTZ
____________

Appeal 2014-006093
Application 12/154,712
Technology Center 3600
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
NINA L. MEDLOCK, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
In reply to the Decision on Appeal (hereinafter “Dec.”), Appellant1
filed a Request for Rehearing pursuant to 37 C.F.R. § 41.52 (hereinafter
“Req.”). The Decision: (1) reversed the rejections of claims 1–13 and 21–
27 under 35 U.S.C. § 101 as lacking utility, claims 1–13 and 21–27 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement, and claims 1, 7, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Pons2 (Dec. 9–10); and (2) entered new grounds of
rejection of claims 1–13 and 21–27 under 35 U.S.C. § 112, second

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F .R. § 1.42. Appellant identifies the real party in interest as Mitchell R.
Swartz. Appeal Br. 2.
2 (WO 90/10935, published Sept. 20, 1990).
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paragraph, and claims 2–6, 8–13, and 22–27 under 35 U.S.C. § 112, fourth
paragraph (id. at 3–9).3
A Request for Rehearing must comply with the following provisions
of 37 C.F.R. § 41.52(a)(l):
The request for rehearing must state with particularity the
points [of law or fact] believed to have been misapprehended or
overlooked by the Board. Arguments not raised, and Evidence
not previously relied upon, pursuant to §§ 41.37, 41.41, or
41.47 are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) through (a)(4) of this section.

Appellant contends that the Board misapprehended or overlooked
multiple points in entering the new grounds of rejection in the Decision.
Req. 1. For the reasons discussed below, the Request fails to establish that
the Board misapprehended or overlooked a point of fact or law in the
Decision. Consequently, the Request for Rehearing is denied.

ANALYSIS
Rejection Under 35 U.S.C. § 112, Second Paragraph
As discussed below, Appellant contends that the Board misunderstand
certain claim limitations in the Decision. Req. 58–64.
“Two-dimensional Angle”
Independent claim 1 recites the limitation “a separation distance
between said anode and said cathode set to create a two [dimensional] angle
in the range of 45 to 130 degrees as defined by said anode [between] the

3 As explained in the Decision, the noted rejections were reversed solely
based on the indefiniteness of the claimed subject matter, and our decision
did not reflect on the adequacy of the rejections. Dec. 9–10.
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width spanned by the two sides of said cathode closest to said anode.”
Appeal Br. (Claims App. A) (emphasis added). In the Decision, we
determined that the meaning of the separation distance between the anode
and cathode is “‘set to create’” the claimed two-dimensional angle of the
recited range is unclear. Dec. 3. We also determined that the meaning of
the recited two-dimensional angle “as defined by said anode” is unclear. Id.
at 4.
Independent claim 7 recites the similar limitation “a separation
distance between said anode and said curved cathode such that the angle
defined by said anode and the greatest width spanned by the two sides of
said curved cathode is in the range of 45 to 130 degrees.” Appeal Br.
(Claims App. A) (emphasis added). Independent claim 21 recites the similar
limitation “a separation distance between said anode and said curved
cathode such that the two dimensional angle defined by said anode and the
two sides of the greatest width spanned by said curved cathode is in the
range of 45 to 130 degrees.” Id. (emphasis added).
We noted that Appellant’s Figure 2 shows an angle 100 (drawn inside
cathode 12). Dec. 4 (citing Spec. 22). Appellant appears to indicate that the
depicted angle 100 corresponds to the claimed two-dimensional angle. Req.
59 (“the Decision’s author was able to affirm that it does measure at circa
100 (degrees) in the example shown in the Specification.”). We also noted
that Appellant’s Specification describes “maintaining a distance between the
electrodes, adjusted to create direct loading, and over each portion of the
helical cathode, closest to the anode, over a two dimensional angle of 45 to
130 degrees.” Id. (citing Spec. 25; see also id. at 11, 18, 23, and 28). We
explained that “[t]his description appears to indicate that a distance between
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the electrodes is maintained to create direct loading of the helical cathode
over an angle of the claimed range”; that is, “the angular range appears to
relate to where in the helical cathode the ‘direct loading’ takes place.”
Dec. 4.
However, the recited “two-dimensional angle” (claims 1 and 21) and
“angle” (claim 7) are not a physical structure in, or of, the cathode. Nor are
these angles a material or physical property of the cathode. Further, claims
1, 7, and 21 do not recite, for example, that a portion of the cathode that
corresponds to the two-dimensional angle or angle has a specific “loaded
hydrogen” content or characteristic, an increased flow of loaded hydrogen,
or a specific property or structure. As we explained, “claim 1 . . . does not
recite that ‘direct loading,’ or anything else, occurs in the cathode
corresponding to the claimed angular range as a result of the separation
distance being set, as recited.” Dec. 4 (emphasis added). This same point
also applies to the language of claims 7 and 21.
Appellant contends that “[t]here is an anomalous effect in those
portions of the cathode closest to the anode. In some configurations, this
extends over an angle of circa 45°–130° degrees.” Req. 64 (emphasis
added). However, no “anomalous effect,” or other claim limitation that
expressly conveys the existence of an “anomalous effect” in “those portions
of the cathode closest to the anode,” is recited in claims 1, 7, and 21. As we
noted in the Decision, “‘[i]t is [Appellant’s] burden to precisely define the
invention, not the PTO’s[,],’” in accordance with 35 U.S.C. § 112, second
paragraph. Dec. 4 (citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997)). Here, Appellant has not defined any “anomalous effect” in claims 1,
7, and 21.
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Further in regard to the recited “two-dimensional angle,” Appellant
contends, “there was no problem for the peer-reviewed scientists skilled in
the art to have understood and determined it clarity [sic], allowing
publication by them, who are skilled-in-the-art.” Req. 60. This contention
does not, however, provide persuasive evidence that “the peer-reviewed
scientists skilled in the art” would understand the meaning of all limitations
of claims 1, 7, and 21, or establish that the Board misapprehended or
overlooked any particular point of fact or law in the Decision.
“Direct Loadings”
Appellant also contends, “despite what is purported in the Decision,
the goal of the patent application is to teach NOT ‘direct loading’ but rather
producing ‘increased flow of said loaded hydrogen within in and through
said material[.’”] In fact, Claim 1 states this explicitly in the last line of the
claim.” Req. 60.
As discussed above, we addressed the disclosed “direct loading” in
trying to understand what “occurs in the cathode corresponding to the
claimed angular range as a result of the separation distance being set.” Dec.
4. Even if “direct loading” is not the goal of Appellant’s disclosure,
Appellant’s contention does not further clarify whether a portion of the
cathode corresponding to the claimed two-dimensional angle (claims 1 and
21) or angle (claim 7) has, for example, some specific physical
characteristic, physical property, or electric field that may define or
distinguish that portion of the cathode relative to another portion, or the
remainder, of the cathode.

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“Increased Flow of . . . Loaded Hydrogen Within and Through . . . Material”
The final limitation of claim 1 recites “thereby producing increased
flow of said loaded hydrogen within and through said material.” Appeal Br.
(Appendix A).4 Appellant contends that the Board misunderstood this
limitation. Req. 62. Appellant asserts that Figures 1 and 2 of the application
“demonstrate exactly what the Applicant meant.” Id. Appellant contends
that “Figure 1 begins with the conventional, typical wire-wire system[]” and
“Figure 2 begins with the unusual wire-coil system (and there is more
required) in the present invention.” Id. at 63. Appellant asserts that “[t]hese
figures demonstrate that the 2-Dimensional vector electric field distributions
vary greatly between the wire-wire system (Figure 1) and the wire-Phusor or
wire-cylinder system (Figure 2).” Id.
Based on these contentions, we understand Appellant’s position is that
the final limitation recited in claims 1 and 7 means that the claimed system
produces the increased flow of the loaded hydrogen within and through the
loaded material relative to, or as compared to, a “conventional, typical wire-
wire system,” as depicted in Figure 1. However, claims 1 and 7 do not recite
expressly any comparison to a system having the particular construction
depicted in Figure 1. Furthermore, importing language from the written
description into the claims is generally disfavored. See SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.”). In fact, claims 1 and 7 do not

4 Claim 7 recites the same limitation, but with a minor typographical error.
Appeal Br. (Appendix A).
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recite any comparison to any other system. Accordingly, Appellant’s
contentions do not persuade us that the meaning of the final limitation
recited in claims 1 and 7 is sufficiently clear.
“The Two Sides”
Claim 1 recites “the two sides of said cathode closest to said anode,”
claim 7 recites “the two sides of said curved cathode,” and claim 21 recites
“the two sides of greatest width spanned by said curved cathode.” Appeal
Br. (Appendix A). In the Decision, we determined that the meaning of each
of these recitations is unclear. Dec. 4–5 (paragraph bridging pages 4–5 and
first full paragraph of page 5 discussing claim 1), 6–7 (paragraph bridging
pages 6–7 discussing claim 7), 7–8 (paragraph bridging pages 7–8
discussing claim 21)).
Appellant contends that the Board misunderstood the meaning of “the
two sides.” Req. 64. Appellant asserts, “[t]he details and Figure 2
demonstrate exactly what the Applicant meant.” Id. This assertion does not
address persuasively any of the specific points discussed in the Decision.
For example, we explained that claim 1 recites “‘a cathode . . . in a shape
which is a member of the group consisting of circles, spirals, helices, and
portions of circles, spirals, helices.’” Dec. 5. We determined that “it is
unclear what ‘the two sides of said cathode closest to said anode” means
with respect to each of these shapes of the cathode,” as encompassed by
claim 1. Id. Appellant’s mere reference to Figure 2 does not persuade us
that we misunderstood the meaning of this language in claim 1, or claims 7
and 21.
Appellant also contends that “[a]ttention is also directed to the fact
that the peer-reviewers of the publications had no problem understanding
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what was meant since they are skilled-in-the-art.” Req. 64. Again, however,
this contention does not amount to persuasive evidence that “the peer-
reviewed scientists skilled in the art” would understand the meaning of the
specific language of claims 1, 7, and 21, or establish that the Board
misapprehended or overlooked any particular point of fact or law in the
Decision.
For the foregoing reasons, we sustain the rejection of claims 1–13 and
21–27 as failing to comply with the requirements of 35 U.S.C. § 112, second
paragraph.

Rejection Under 35 U.S.C. § 112, Fourth Paragraph
In the Decision, we explained that each of claims 1 and 7 is directed
to a “system” in which there is a “machine,” and claim 21 is directed to a
“system” in which there is an “apparatus.” Dec. 8. Claims 2–6, which
depend from claim 1, and claims 8–13, which depend from claim 7, are
directed to “a machine,” not to the system, and claims 22–27, which depend
from claim 21, are directed to an “apparatus,” not to the system.
Appellant disagrees with our determination that dependent claims 2–
6; 8–13; and 22–27 do not incorporate by reference all limitations of
independent claims 1, 7, and 21, respectively. Req. 57; Dec. 8. Appellant
states that the terms “system” and “machine” are nearly synonymous.
Req. 57. Based on this statement, Appellant seems to be contending that the
dependent claims do, effectively, also recite a system. However, Appellant
also states, “a machine, which obviously operates in the system described in
claims 7 and 21.” Id. (emphasis added). According to this latter statement,
Appellant is acknowledging that a machine is not the same as the recited
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system, but operates in the system. This statement is consistent with claims
1, 7, and 21 reciting that a machine or apparatus is in a system, and not
expressly reciting any limitation that precludes the “system” from having
additional, non-claimed elements other than the machine or apparatus. We
maintain that dependent claims 2–6, 8–13, and 22–27, which recite a
machine or apparatus, do not incorporate by reference all limitations of
independent claims 1, 7, and 21, respectively, which recite a system.
Thus, we sustain the rejection of claims 2–6, 8–13, and 22–27 as
failing to comply with the requirements of 35 U.S.C. § 112, fourth
paragraph.
“Other Misunderstandings and Errors of the Decision”
Appellant further contends that the Decision includes other
misunderstandings and errors. Req. 64–67. We will address the contentions
made by Appellant that appear to be most relevant to the issues raised by
Appellant in the Request, as discussed above.
Appellant contends, “[w]ith impropriety, the Decision by the Patent
Trial and Appeal Board, does not discuss the previous removal of Evidence,
and failure to docket that Evidence, even though it was discussed and
detailed in the Appeal Brief and Reply Brief.” Req. 65.
In response, the Board is not aware of any removed evidence in regard
to the appeal.
Appellant also contends, “[t]he important peer-reviewed publications
which were submitted, and received many times, are not discussed as to its
content, because it proves definiteness.” Req. 65.
In response, Appellant does not address any specific peer-reviewed
publication in Appellant’s contentions pertaining to the Board’s purported
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misunderstandings in relation to the rejection under 35 U.S.C. § 112, second
paragraph. Req. 58–64. Consequently, it is not apparent what particular
“important peer-reviewed publications” Appellant believes support
Appellant’s position, or how, specifically, Appellant believes the
publications support Appellant’s lack of indefiniteness position.
Appellant contends that the Board ignored “Appendix B” in the
Decision. Req. 65. Appellant also states, “the Appellant filed Amendments
which would have made the claims clearer” (id. (emphasis added)), and
“[t]he Board should have entered them for the reasons given by then
Applicant (now Appellant) rather than misdescribe the claims” (id. at 66).
As noted in the Decision, the claim set listed in Appendix A of the
Appeal Brief corresponds to the claims that were rejected in the Final Office
Action. Dec. 2 n.4. The claims listed in Appendix B of the Appeal Brief
correspond to the amended claim set that Appellant submitted after the Final
Rejection, but which was not entered by the Examiner. Id. Even if the
amended claims “would have made the claims clearer,” as Appellant
contends, the Board lacks authority to enter the claim amendments that were
not entered by the Examiner. Any corresponding amended claims presented
by Appellant that were refused entry are not part of the record in this appeal.
Appellant contends that the Decision ignored both the original
Specification and the claims. Req. 66.
In response, the Board has not ignored either the Specification or
claims in this appeal.
“Other Errors in the Decision”
Appellant further contends that the Decision included or was based on
other errors. Req. 67.
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In response, the asserted “errors” (54) and (55) raised by Appellant do
not persuade us that the Board misapprehended or overlooked any particular
point of fact or law in the Decision.
Lastly, Appellant’s “final arguments” likewise do not persuade us that
the Board misapprehended or overlooked any particular point of fact or law
in the Decision. Req. 68–69.

DECISION SUMMARY
The Board has granted the Request to the extent the Decision has been
reconsidered, but the Request is denied as to making any changes thereto.

Outcome of Decision on Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Denied Granted
1–13, 21–27 112, second
paragraph
Indefiniteness 1–13, 21–27
2–6, 8–13,
22–27
112, fourth
paragraph
Improper
Dependency

2–6, 8–13,
22–27

Overall
Outcome
1–13, 21–
27

Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–13, 21–27 101 Lack of Utility 1–13, 21–27
1–13, 21–27 112, first
paragraph
Non-
enablement
1–13, 21–27
1, 7, 21 103(a) Pons 1, 7, 21
1–13, 21–27 112, second
paragraph
Indefiniteness 1–13, 21–27
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Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
2–6, 8–13,
22–27
112, fourth
paragraph
Improper
Dependency

2–6, 8–13,
22–27

Overall
Outcome
1–13, 21–
27

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).

DENIED