Angelo Mascia et al.

Patent Trials and Appeals Board

Sep 29, 2020

15018364 - (D) (P.T.A.B. Sep. 29, 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.
15/018,364 02/08/2016 Angelo E. Mascia 7557
7590 09/29/2020
Angelo E. Mascia
1 Malvern Road
Scarsdale, NY 10583
EXAMINER
GRANT, ROBERT J
ART UNIT PAPER NUMBER
2859
MAIL DATE DELIVERY MODE
09/29/2020 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 ANGELO E. MASCIA and JOSEPH A. MASCIA
Appeal 2020-001758
Application 15/018,364
Technology Center 2800
BEFORE JASON V. MORGAN, JEREMY J. CURCURI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject Appellant’s claim (“Claim 1”). 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 the real party in interest as Angelo E. Mascia
and Joseph A. Mascia. Appeal Br. 3 (Sept. 20, 2019) (all references to
“Appeal Br.” are to the appeal brief filed on this date).
Appeal 2020-001758
Application 15/018,364
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CLAIMED SUBJECT MATTER
The claim is directed to “[a] self-charging all electric vehicle.”
Abstract. Claim 1, reproduced below with key recitations emphasized, is
illustrative of the claimed subject matter:
1. We claim a self-charging all electric vehicle,
comprising:
a. three banks of batteries to power in rotation, one at a
time, the prime mover, or
b. four banks of batteries to power in rotation, two at a
time connected in series, the prime mover,
c. a prime mover which is a permanent magnet brushless
direct current motor that drives the three-wire direct current
generator,
d. a three-wire direct current generator which provides
two 125 voltages from either side of the neutral wire to charge
simultaneously two banks of batteries and 250 volts to power
the traction motors,
e. front and front and rear traction motors for producing
rotational energy, and
f. means for controllably coupling rotational energy from
the traction motors to the wheels, whereby the vehicle will be
self-propelled to roll along a surface,
g. the floating charge method for charging the banks of
batteries two at a time,
h. the constant potential method for charging the banks
batteries two at a time.
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Application 15/018,364
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Floyd US 2002/0063549 A1 May 30, 2002
Howard US 2010/0006351 A1 Jan. 14, 2010
Peterson US 2011/0215641 A1 Sept. 8, 2011
Sadler US 2012/0330488 A1 Dec. 27, 2012

REJECTIONS
Claim 1 is rejected under 35 U.S.C. § 101 as lacking utility. Final
Office Action mailed June 4, 2018 (“Final Act.”) 7–8.
Claim 1 is rejected under U.S.C. § 112(a) as lacking enablement.
Final Act. 9–11.
Claim 1 is rejected under 35 U.S.C. § 103 as obvious over Sadler,
Peterson, and Howard. Final Act. 12–14.
Claim 1 is rejected under 35 U.S.C. § 103 as obvious over Sadler,
Peterson, Howard, and Floyd. Final Act. 14–17.
OPINION
The Enablement Rejection of Claim 1
The Examiner rejects Claim 1 as lacking enablement. Final Act. 9–11.
Among other related determinations, the Examiner determines “one having
ordinary skill would not know how a closed system can provide charging to
itself.” Final Act. 10.
Appellant does not persuasively dispute the Examiner’s
characterization of the purported utility of the claimed self-charging all
electric vehicle as being directed to “a closed system [that] can provide
charging to itself.” Rather, Claim 1 recites “a self-charging all electric
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Application 15/018,364
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vehicle” comprising a “generator which provides two 125 voltages from
either side of the neutral wire to charge simultaneously two banks of
batteries and 250 volts to power the traction motors.” Appellant argues that
with this claim, “[t]he power losses in the vehicle will not gradually reduce
its speed and bring it to a stop” and that “the driving range will not be
limited and no range anxiety problem will exist.” Appeal Br. 4. Appellant
emphasizes that with the claimed invention “no outside source of power is
necessary.” Id. Thus, Appellant argues that Claim 1 is capable of powering
the motors while simultaneously keeping the batteries fully charged.
The Examiner’s and Appellant’s characterization of Claim 1 further
accords with the Specification, which discloses that the purported
advantages of Claim 1 include obviating the need for fossil-fuel fill-ups,
public charging stations, power from a standard household outlet, expensive
high-voltage circuit battery chargers, or battery-swapping stations. Spec. 2
(Feb. 8, 2016) (unless otherwise noted, all citations to the “Spec.” are to the
originally-filed specification). The Specification repeatedly suggests that
“[t]wo banks [of batteries] at a time will be maintained at full charge . . .
while the third bank provides power to the prime mover” and to the other
two banks of batteries. Spec. 6; see also id. at 7 (similar for four banks of
batteries).
Appellant nominally concedes that the claimed “vehicle will operate
. . . until the banks of batteries have become depleted and have to be
replaced,” and thus Appellant submits that the claimed vehicle is not a
“perpetual motion machine . . . that can continuously produce work with no
energy input, or that can continuously convert heat completely into work.”
Appeal Br. 5; see also Spec. 6 (proposing “lead-acid batteries” and “lithium-
iron phosphate batteries” because they “can typically be charged in excess of
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Application 15/018,364
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2000 times”). But Appellant further submits that “heat will not affect the
mechanical energy or work” because “[t]he banks of batteries can be either
air-cooled or liquid-cooled and the prime mover, the three-wire direct
current generator, and the traction motors can be water cooled,” while “[a]ll
auxiliary functions such as[] water pump, air conditioning, lighting and
power steering system are electrically powered.” Appeal Br. 4 (citing Spec.
15 (Apr. 12, 2016)). That is, Appellant submits that unclaimed cooling
mechanisms would somehow prevent the batteries from depleting.
Appellant further argues that the claimed “SYSTEM CREATES
NEW ENERGY FROM THE CHEMICAL ACTION IN THE BATTERIES
AND THUS IT DOES NOT NEED ANY EXTERNAL SOURCE OF
ENERGY TO BE INPUTTED INTO IT.” Id. (emphasis added). But
batteries do not create new energy. Rather, they release stored chemical
energy. Moreover, transferring released energy from one bank of a vehicle’s
batteries to another bank of the vehicle’s batteries does not make the vehicle
self-charging. No additional energy is being stored in batteries in the
aggregate as a result of such transfers.
For these reasons, the claimed vehicle does not produce the claimed
result of being self-charging and simultaneously both powering the motor
and charging the other banks of batteries, and thus the enablement
requirement is not met. Newman v. Quigg, 877 F.2d 1575, 1582 (Fed. Cir.).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112(a) rejection of
claim 1.
The Utility Rejection of Claim 1
The Examiner also rejects Claim 1 as lacking utility. Final Act. 7–8.
In particular, the Examiner determines
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[i]t is not clear from the specification, or from knowledge that
one having ordinary skill in the art would have, how the battery
banks are capable of charging each other, back and forth, using
the components described and not have a net power loss from the
operation of the vehicle and the conversion losses which all of
these components are known to exhibit.
Final Act. 8.
A claimed invention must “have a specific and substantial utility to
satisfy § 101.” In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). Here, the
“substantial utility” purportedly claimed is that the vehicle is “self-charging”
in that it can simultaneously power the motors while charging the other
banks of batteries and it does not need external sources of energy such as
chargers or battery swaps to enable “longer drives” without “range anxiety
problems.” Spec. 2. As discussed above, the claimed invention does not
operate to produce this result. Therefore, claim 1 lacks the utility required
under 35 U.S.C. § 101. Newman, 877 F.2d at 1581–82. Accordingly, we
sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 1.
The Obviousness Rejection of Claim 1 over Sadler, Peterson, and Howard
The Examiner finds Sadler, Peterson, and Howard teach all limitations
of Claim 1. Final Act. 12–14.
The Examiner finds Sadler teaches the following elements recited in
Claim 1:
a. three banks of batteries to power in rotation, one at a time, the
prime mover, or
b. four banks of batteries to power in rotation, two at a time
connected in series, the prime mover,
c. a prime mover which is a permanent magnet brushless direct
current motor that drives the three-wire direct current generator,
. . .
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f. means for controllably coupling rotational energy from the
traction motors to the wheels, whereby the vehicle will be self-
propelled to roll along a surface, . . .
h. the constant potential method for charging the banks batteries
two at a time.
See Final Act. 12–13 (citing Sadler ¶¶ 6–7, 10, 14, 30–31, 42, 59; Fig. 4).
The Examiner finds Peterson teaches the following elements recited in
Claim 1:
d. a three-wire direct current generator which provides two 125
voltages from either side of the neutral wire to charge
simultaneously two banks of batteries and 250 volts to power the
traction motors,
. . .
g. the floating charge method for charging the banks of batteries
two at a time.
See Final Act. 13 (citing Peterson ¶¶ 27, 33; Fig. 2, element 34).
The Examiner reasons
it would have been obvious to one having ordinary skill in the art
at the time the invention was made to select a generator with
those values as it is close to the standard household power in the
United States, which would allow the vehicle to have receptacles
which can be used to power devices, since it has been held that
discovering an optimum value of a result effective variable
involves only routine skill in the art.
Final Act. 13–14 (citing In re Boesch, 617 F.2d 272, 205 (CCPA 1980)).
The Examiner further finds Howard teaches the following element
recited in Claim 1: “e. front and front and rear traction motors for producing
rotational energy.” See Final Act. 14 (citing Howard Fig. 1, element 3).
The Examiner further reasons
[i]t would have been obvious to one having ordinary skill in the
art at the time of this invention to take the teaching of
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Peterson[’]s generator and floating charge method, and use it
with the vehicle of Sadler in order to provide charge to the
batteries, and further take the teaching of Howard and have
multiple motors in order to have greater control of the rotational
power provided to each of the wheels.
Final Act. 14.
We have reviewed the record, and to the extent Claim 1 permits
merely recovering energy or moving energy around within a system rather
than creating energy, we determine the evidence supports the Examiner’s
fact findings and reasons.
In reviewing the record, we observe Appellant has not presented
particularized arguments with respect to the Examiner’s fact findings based
on Sadler, Peterson, and Howard; with respect to the Examiner’s reasoning
to combine Sadler’s teachings with Peterson’s teachings; or with respect to
the Examiner’s reasoning to combine Howard’s teachings with the combined
teachings of Sadler and Peterson. For example, in a response to the Final
Action, Appellant argued the following:
Claim 1 was rejected under 35 U.S.C. 103 as being
unpatentable over Sadler (USPUB201 20330448) in view of
Peterson et al. (USPUB 2011/0215641) in view of Howard
(USPUB2010/0006351) and in view of Floyd (2002/0063549). I
do not consider this rejection to be valid since I do not recognize
the above mentioned applications to be “Prior Art” and,
therefore, they do not present any rationale to support the
rejection of my application. My invention application must be
approved on its own merits since it is complete in every detail
and has no relation to the applications of Sadler, Peterson,
Howard, and Floyd that expressly do not disclose all the steps
and components necessary for a self-charging all electric vehicle
to properly operate. Floyd reports perpetually self-chargeable
batteries which would constitute a perpetual motion device.
Appellant’s Response After Final Action filed July 25, 2018 (“Response”) 3.
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Application 15/018,364
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Appellant argues that Sadler, Peterson, Howard, and Floyd “expressly
do not disclose all the steps and components necessary for a self-charging all
electric vehicle to properly operate” and Floyd describes “perpetually self-
chargeable batteries.” Response 3. However, Appellant does not offer any
further explanation as to why the references applied by the Examiner do not
teach the subject matter of Claim 1. On the other hand, the Examiner has
given us explanation to support the Examiner’s position, and we are
persuaded by the Examiner’s explanation.
In summary, we have considered the positions of both Appellant and
the Examiner, and the Examiner has persuaded us that Claim 1 is obvious
over Sadler, Peterson, and Howard.
We, therefore, sustain the Examiner’s rejection of Claim 1 as obvious
over Sadler, Peterson, and Howard.

The Obviousness Rejection of Claim 1 over Sadler, Peterson, Howard, and
Floyd
The Examiner finds Sadler, Peterson, Howard, and Floyd teach all
limitations of Claim 1. Final Act. 14–17.
The Examiner makes fact findings based on Sadler, Peterson, and
Howard for this ground of rejection that are the same as the fact findings
based on Sadler, Peterson, and Howard for the ground of rejection discussed
immediately above. See Final Act. 14–16.
In adding Floyd to the combination, the Examiner finds the following:
Although not expressly stated in the claim, the application
makes it clear that the power which is providing charge to the
battery bank, is being provided by the other battery bank through
the three-wire direct current generator. The cited references do
not expressly disclose charging one bank of batteries in the
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vehicle from another bank of batteries in the same vehicle
without an outside source of power (i.e. engine, utility power,
solar, renewable, etc. . . ). Floyd discloses using a first battery in
a vehicle to charge a second battery in a vehicle, and then charge
the first battery with power from the second battery.
Final Act. 16 (citing Floyd ¶¶ 30, 33).
The Examiner reasons
[i]t would have been obvious to one having ordinary skill in the
art at the time of this invention to take the teaching of
Peterson[’]s generator and floating charge method, and use it
with the vehicle of Sadler in order to provide charge to the
batteries, and further take the teaching of Howard and have
multiple motors in order to have greater control of the rotational
power provided to each of the wheels, and further take the
teachings of Floyd and perpetually exchange charge between two
sets of batteries in order to keep the batteries charged without the
requirement of any other power source.
Final Act. 17 (citing Floyd ¶ 8).
We have reviewed the record, and to the extent Claim 1 permits
merely recovering energy or moving energy around within a system rather
than creating energy, we determine the evidence supports the Examiner’s
fact findings and reasons.
In reviewing the record, we observe Appellant has not presented
particularized arguments with respect to the Examiner’s fact findings based
on Sadler, Peterson, Howard, and Floyd; with respect to the Examiner’s
reasoning to combine Sadler’s teachings with Peterson’s teachings; with
respect to the Examiner’s reasoning to combine Howard’s teachings with the
combined teachings of Sadler and Peterson; or with the Examiner’s
reasoning to combine Floyd’s teachings with the combined teachings of
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Sadler, Peterson, and Howard. For example, in a response to the Final
Action, Appellant argued the following:
Claim 1 was rejected under 35 U.S.C. 103 as being unpatentable
over Sadler (USPUB201 20330448) in view of Peterson et al.
(USPUB 2011/0215641) in view of Howard
(USPUB2010/0006351) and in view of Floyd (2002/0063549). I
do not consider this rejection to be valid since I do not recognize
the above mentioned applications to be “Prior Art” and,
therefore, they do not present any rationale to support the
rejection of my application. My invention application must be
approved on its own merits since it is complete in every detail
and has no relation to the applications of Sadler, Peterson,
Howard, and Floyd that expressly do not disclose all the steps
and components necessary for a self-charging all electric vehicle
to properly operate. Floyd reports perpetually self-chargeable
batteries which would constitute a perpetual motion device.
Response 3.
Appellant argues that Sadler, Peterson, Howard, and Floyd “expressly
do not disclose all the steps and components necessary for a self-charging all
electric vehicle to properly operate” and Floyd describes “perpetually self-
chargeable batteries.” Response 3. However, Appellant does not offer any
further explanation as to why the references applied by the Examiner do not
teach the subject matter of Claim 1. On the other hand, the Examiner has
given us explanation to support the Examiner’s position, and we are
persuaded by the Examiner’s explanation.
In summary, we have considered the positions of both Appellant and
the Examiner, and the Examiner has persuaded us that Claim 1 is obvious
over Sadler, Peterson, Howard, and Floyd.
We, therefore, sustain the Examiner’s rejection of Claim 1 as obvious
over Sadler, Peterson, Howard, and Floyd.
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CONCLUSION
Because we affirm at least one ground of rejection, the Examiner’s
overall decision to reject Claim 1 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1 101 Utility 1
1 112(a) Enablement 1
1 103 Sadler, Peterson,
Howard
1
1 103 Sadler, Peterson,
Howard, Floyd
1
Overall
Outcome
1

TIME PERIOD FOR RESPONSE
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).
AFFIRMED