Christopher, Diana Michaels.

Patent Trials and Appeals Board

Sep 30, 2020

14068478 - (D) (P.T.A.B. Sep. 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.
14/068,478 10/31/2013 Van Michaels Christopher 13-091 1051
7590 09/30/2020
Van Michaels Christopher
Patriarch Eftimy No. 36, ent. 11, Apt. 17
Sofia, 1000
BULGARIA
EXAMINER
CUEVAS, PEDRO J
ART UNIT PAPER NUMBER
2832
MAIL DATE DELIVERY MODE
09/30/2020 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 VAN MICHAELS CHRISTOPHER (deceased), as represented by
DIANA MICHAELS CHRISTOPHER
____________

Appeal 2019-006843
Application 14/068,478
Technology Center 2800
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 19–35, which are all of the claims pending in this
application.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision refers to the Specification filed Oct. 31, 2013 (“Spec.”);
Non-Final Office Action dated Mar. 9, 2017 (“Non-Final Act.”); Appeal
Brief filed Jan. 2, 2018 (“Appeal Br.”); Examiner’s Answer dated Aug. 31,
2018 (“Ans.”); and Reply Brief filed Oct. 26, 2018 (“Reply Br. “).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to the first page of the Appeal Brief, Diana
Michaels-Christopher, the legal representative of the deceased Inventor and
the Assignee, appears to be identified as the real party in interest.
3 Claims 1–18 are cancelled. Spec. 19.
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CLAIMED SUBJECT MATTER
The invention relates to power generation by converting a gas to
mechanical work and, more specifically, to improving power generation by
kinetically ordering the flow of the gas. Spec. ¶ 2. The Specification
describes an apparatus that includes a convergent-divergent (CD) nozzle
having an extended divergent end. Id. ¶ 9; Abstract. According to
Appellant’s disclosure, when attached to spiral channels of a bladeless
turbine, the apparatus minimizes entropic losses and therefore results in an
extremely efficient conversion of gas flow to work. Spec. ¶ 9.
Claim 19 illustrates the subject matter on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief (key disputed claim
language italicized and bolded):
19. Apparatus for generating mechanical work from a
working fluid, the apparatus comprising:
a stator;
a rotor mounted within the stator having at least one
working-fluid in-feed opening;
an output shaft that is rotated by the working fluid flowing
through the rotor;
a plurality of Archimedean spiral channels mounted
within the rotor and wound around the output shaft, each
Archimedean spiral channel having a channel opening; and
a CD nozzle for receiving the working fluid, the CD nozzle
having converging nozzle inlet and a diverging nozzle exit, the
nozzle exit having a shape that corresponds with a shape of the
channel opening;
wherein the exit opening of the CD nozzle and the
working-fluid in-feed opening are in close proximity to each
other and the working fluid is ejected from the nozzle exit as a
supersonic, flow having a mono-directional molecular order of
the working fluid and injected through the working-fluid in-feed
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opening on the rotor into the plurality of Archimedean spiral
channels;
wherein the CD nozzle and the Archimedean spiral
channels together ensure that the mono-directional molecular
order of the working fluid is maintained, thereby reducing
entropic losses in the working fluid to a minimum.
REFERENCE
The Examiner relies on the following prior art reference as evidence
in rejecting the claims on appeal:
Name Reference Date
Hicks US 6,973,792 B2 Dec. 13, 2005
REJECTIONS
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 19–28, 32, 33, and 35 are rejected under pre-AIA 35
U.S.C. § 102(b) as being anticipated by Hicks (“Rejection 1”). Non-Final
Act. 31.
2. Claims 29–31 and 34 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Hicks (“Rejection 2”). Non-Final Act.
36.
3. Claims 19–35 are rejected under 35 U.S.C. § 112(a) or pre-AIA
35 U.S.C. § 112, first paragraph as failing to disclose the best mode
(“Rejection 3”). Non-Final Act. 26.
4. Claims 19–35 are rejected under 35 U.S.C. § 112(a) or pre-AIA
35 U.S.C. § 112, first paragraph as failing to comply with the enablement
requirement (“Rejection 4”). Non-Final Act. 27.
5. Claims 19–35 are rejected under 35 U.S.C. § 112(a) or pre-AIA
35 U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
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inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention. (“Rejection 5”). Non-Final Act. 28.
6. Claim 19 is rejected under 35 U.S.C. § 112(a) or pre-AIA 35
U.S.C. § 112, second paragraph as being incomplete for omitting essential
elements, such omission amounting to a gap between the elements.
(“Rejection 6”). Non-Final Act. 28, 29.
7. Claims 32–35 are rejected under 35 U.S.C. § 101 as being
inoperative and for lack of utility (“Rejection 7”). Non-Final Act. 29.
OPINION
Rejection 1
The Examiner rejects claims 19–28, 32, 33, and 35 under § 102(b) as
anticipated by Hicks. Non-Final Act. 31–35. Regarding the “plurality of
Archimedean spiral channels mounted within the rotor” recitation of claim
19, the Examiner relies principally on Figure 31 of Hicks for disclosing that
limitation. Id. at 4–5, 7–10, 19–20, 31. The Examiner finds that an
Archimedean spiral is “the locus of points corresponding to the locations
over time of a point moving away from a fixed point with a constant speed
along a line that rotates with constant angular velocity.” Id. at 7.
The Examiner further finds and explains that, because “an
Archimedean spiral channel is merely a channel having a spiral shape that
follows a line comprising the locus of points corresponding to the locations
over time of a point moving away from a fixed point with a constant speed
along a line which rotates with constant angular velocity,” Figure 31 of
Hicks discloses a spiral channel, which satisfies the “plurality of
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Archimedean spiral channels” language of the claim. Ans. 5 (formatting
omitted); see also Non-Final Act. 19–20 (referring to Fig. 1B of Saitoh4).
Appellant argues essentially that the Examiner’s rejection of claim 19
should be reversed because Hicks does not disclose “a plurality of
Archimedean spiral channels,” as recited in the claim. See Appeal Br. 4, 11;
Reply Br. 3.
Appellant’s argument is persuasive because, on this appeal record, we
are not persuaded the Examiner has established by a preponderance of the
evidence that Hicks discloses “a plurality of Archimedean spiral channels,”
as required by the claim. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (“[T]he examiner bears the initial burden, on review of the prior
art . . . of presenting a prima facie case of unpatentability.”).
Anticipation requires a showing that each limitation of a claim is
disclosed in a single reference, either expressly or inherently. Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1369 (Fed. Cir. 2005). To establish
that a prior art reference inherently discloses a limitation, “the examiner
must provide a basis in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Int. 1990) (citation omitted). Inherency “may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”

4 Saitoh, US 2011/0164958 A1, published July 7, 2011. The Examiner refers
to what appears to be an annotated copy of Figure 1B of Saitoh at page 19 of
the Non-Final Action.
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Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed.
Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
During prosecution, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, Appellant’s Specification
does not provide any special definition for the terms “Archimedean spiral”
or “Archimedean spiral channels” beyond the language recited in the claim.
The Saitoh reference, however, does provide an equation for Archimedes’
spiral (i.e., “r = aθ(a>O)”). Saitoh, ¶¶ 68, 151, Fig. 4B. Although the
Examiner proposes definitions for these terms (see Ans. 5; Non-Final
Act. 7), the Examiner does not provide an adequate explanation as to why
one of ordinary skill in the art would have understood the terms as having
those definitions or how the Examiner’s proposed definitions relate or apply
to the equation for Archimedes’ spiral Saitoh discloses.
Even assuming the definitions above that the Examiner proposes for
the terms “Archimedean spiral” and “Archimedean spiral channels” are
consistent with claim 19’s broadest reasonable interpretation and we were to
apply those definitions to the disclosure of Hicks, on this appeal record, the
Examiner has not provided the requisite factual basis and/or technical
reasoning sufficient to support a determination that Hicks, either expressly
or inherently, discloses “a plurality of Archimedean spiral channels,” as
claimed.
Although Figure 31 of Hicks illustrates an embodiment of a multi-port
engine that includes spiral direction flow devices 3170 and flow areas 3150
and shows discs having swirl patterns (Hicks, 11:38–40, 11:57–59,
12:33–35, Fig. 31), the Examiner does not identify or direct us to any
specific description or disclosure in Figure 31 or elsewhere in Hicks
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sufficient to establish that the spiral structures of Hicks correspond to and
would have been understood by one of ordinary skill to be “Archimedean
spiral channels,” as recited in claim 19. Although Hicks depicts and
describes certain elements of Figure 31 as being spiral or having a spiral
direction, there is no disclosure or description in Hicks specifying any of the
elements as being “Archimedean spiral” or “Archimedean spiral channels,”
in the manner claimed, or that otherwise supports the Examiner’s
determination. The portions of Saitoh the Examiner identifies and refers to
in the Non-Final Action (see Non-Final Act. 7–10, 19–20) also do not
support such determination. Indeed, Saitoh discloses several other suitable
spiral configurations such as a logarithmic spiral. Saitoh ¶¶ 149, 150;
Fig. 4A.
The Examiner also does not direct us to any specific disclosure in
Hicks or other persuasive evidence in the record to adequately explain how
or why the structure of Figure 31 of Hicks would fall within the scope of the
definition of Archimedean spiral or Archimedean spiral channel the
Examiner proposes or would have had the specific geometric dimensions to
satisfy the equation Saitoh describes for an Archimedes’ spiral. The
Examiner’s assertions that the definition of an Archimedean spiral is “well
known in the art” (Ans. 5) and “HICKS clearly teach[es] and illustrates each
and every structural element” in the claim (id. at 5) are conclusory and,
without more, insufficient to sustain the Examiner’s rejection. Kahn, 441
F.3d at 988 (explaining that rejections “cannot be sustained by mere
conclusory statements”).
The Examiner’s reliance on Figure 31 of Hicks for disclosing the
claimed “Archimedean spiral channels” is particularly unpersuasive because
there is no indication that Figure 31 is drawn to scale, and no other
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disclosures in Hicks support the Examiner’s rejection and interpretation of
Figure 31 in this regard, particularly in view of the different spiral
configurations disclosed in Saitoh as discussed above. It is well-settled that
“[a]bsent any written description in the specification of quantitative values,
arguments based on measurement of a drawing are of little value.” In re
Wright, 569 F.2d 1124, 1127 (CCPA 1977). Precise proportions should not
be read into patent drawings when the patent does not expressly provide
such proportions. Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1149 (Fed. Cir.
2005). Therefore, such “arguments based on measurement of the drawing
features are of little value.” MPEP 2125(11).
We, therefore, do not sustain the Examiner’s anticipation rejection of
claim 19. Because claims 19–28 depend from claim 19 and claims 32, 33,
and 35 each include language similar to the “Archimedean spiral” recitation
of claim 19, we also do not sustain the Examiner’s rejection of those claims
for the same reasons as claim 19.
Accordingly, we reverse the Examiner’s rejection of claims 19–28,
32, 33, and 35 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Hicks.
Rejection 2
The Examiner rejects claims 29–31 and 34 under § 103(a) as obvious
over Hicks. Non-Final Act. 36. Claims 29–31 depend from claim 19 and
claim 34 includes language similar to the “Archimedean spiral” recitation of
claim 19.
The foregoing deficiencies we discuss above, however, in the
Examiner’s analysis and findings regarding claim 19 and Hicks’ disclosure
are not remedied by the findings and analysis the Examiner provides in
support of this rejection. See Non-Final Act. 36.
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Thus, for principally the same reasons we discuss above in connection
with Rejection 1 and claim 19, we reverse the Examiner’s rejection of claims
29–31 and 34 under pre-AIA 35 U.S.C. § 103(a) as obvious over Hicks.
Rejections 3, 4, 5, 6, and 7
The Examiner rejects claims 19–35 under § 112 for failing to disclose
the best mode (Rejection 3); claims 19–35 under § 112 for non-enablement
(Rejection 4); claims 19–35 under § 112 for indefiniteness (Rejection 5);
claim 19 under § 112 for incompleteness (Rejection 6); and claims 32–35
under § 101 lack of utility (Rejection 7). Non-Final Act. 26–29.
The Examiner maintains each of these rejections in the Answer. See
Ans. 2 (stating “[e]very ground of rejection set forth in the Office action
dated March 9, 2017 from which the appeal is taken is being maintained by
the examiner except for the grounds of rejection (if any) listed under the
subheading ‘WITHDRAWN REJECTIONS’”).5 Appellant does not present
any substantive argument in the Appeal Brief or Reply Brief in response to
these rejections. See generally Appeal Br., Reply Br.
Accordingly, because the Examiner’s rejections under § 112
(Rejections 3, 4, 5, and 6) and the Examiner’s rejection under § 101
(Rejection 7) have not been withdrawn (see Ans. 2) and are not disputed by
Appellant, we summarily affirm each of these rejections. Cf. Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present
arguments on a particular issue — or, more broadly, on a particular rejection

5 We note the Examiner does not identify any of the grounds of rejection as
being withdrawn or list them under any such subheading in the Answer. See
generally Ans.
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— the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection”) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011)).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19–28, 32,
33, 35
102(b) Hicks 19–28,
32, 33, 35
29–31, 34 103(a) Hicks 29–31, 34
19–35 112 best mode 19–35
19–35 112 enablement 19–35
19–35 112 indefiniteness 19–35
19 112 completeness 19
32–35 101 utility 32–35
Overall
Outcome
19–35

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