Ex Parte Aho

Patent Trial and Appeal Board

Nov 14, 2017

12770422 (P.T.A.B. Nov. 14, 2017)

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.
12/770,422 04/29/2010 Richard E. Aho 65296.US 9696
408 7590 11/16/2017
LUEDEKA NEELY GROUP, P.C.
POBOX 1871
KNOXVTT.T.E, TN 37901
EXAMINER
DOUNIS, LAERT
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
docketing @ luedeka.com
LNG.PATENT@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD E. AHO
Appeal 2015-007652
Application 12/770,422
Technology Center 3700
Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claimsl—3, 6, and 7. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
1 Throughout this Opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed Jan. 15, 2015), Reply Brief (“Reply Br.,” filed Aug. 18,
2015), and Specification (“Spec.,” filed Apr. 29, 2010), and to the
Examiner’s Answer (“Ans.,” mailed June 19, 2015) and Final Office Action
(“Final Act.,” mailed Aug. 29, 2014).
2 The real party in interest is the inventor, Richard E. Aho. Appeal Br. 2.
Appeal 2015-007652
Application 12/770,422
STATEMENT OF THE CASE
The Appellant’s invention “relates to power generation device that
supply electrical energy to heaters to heat liquid water in a manner that
substantially instantaneously changes the water from a liquid state to a
gaseous state, which releases more energy than required by the heaters.”
Spec. 12. More particularly, the invention relates to “an apparatus for
recovering energy from water.” Id. 1 5.
Claims 1 and 7 are the independent claims on appeal. Claim 1
(Appeal Br. 16 (Claims App.)) is illustrative of the subject matter on appeal,
and is reproduced below (paragraphing added):
1. Apparatus for recovering energy from water,
comprising:
a source of liquid water consisting essentially of
(1) a cooling radiator,
(2) a high pressure pump; and
(3) a high pressure fluid injector in flow
communication with the radiator and the pump for
receiving the liquid water in the absence of super heating,
the injector including an atomizer for delivering
atomized liquid water at a pressure above the critical
pressure of water for contact with a contact surface of an
impact chamber within the apparatus at a location
subsequent to the injector,
the impact chamber comprising sidewall
surrounding and rising upwardly from the contact surface
and having a plurality of gas flow passages therethrough
and electrical heating elements therein; and
a source of energy for energizing the electrical heating
elements for supplying heat at a desired temperature above
the critical temperature of water,
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Application 12/770,422
wherein
when the injected atomized liquid water contacts
the contact surface of the impact chamber within the
apparatus the atomized liquid water is substantially
instantaneously vaporized to supercritical steam and
travels though the gas flow passages of the impact
chamber,
the supercritical steam having a motive force
including stored energy released from the water,
the motive force enabling generation of
power from the motive force,
the motive force representing energy yielded
by the operation of the apparatus and being greater
than the energy supplied to the electrical heating
elements,
with the supercritical steam thereafter being routed
via a conduit to the radiator to be cooled to provide
the liquid water that is supplied to the injector.
REJECTIONS
Claims 1—3, 6, and 7 stand rejected under 35 U.S.C. § 101 as lacking
utility. Final Act. 2, 17.
Claims 1—3, 6, and 7 stand rejected under pre-AIA 35 U.S.C. § 112,
first paragraph. Id. at 17.
ANALYSIS
New Ground of Rejection
Pursuant to 37 C.F.R. § 41.50(b), independent clams 1 and 7 are
hereby rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite, because the scope and meaning of the limitations of the claims
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Application 12/770,422
cannot be determined. Because the same indefmiteness issue affects
dependent claims 2, 3, and 6, they are also rejected on the same basis.
Independent claim 1 recites an “[ajpparatus for recovering energy
from water, comprising” (a) a source of liquid water consisting of a cooling
radiator, a high pressure pump, and a high pressure fluid injector including
an atomizer, (b) an impact chamber comprising sidewall, a plurality of gas
flow passages, and electrical heating elements, and (c) a source of energy
“energizing the electrical heating elements.” Appeal Br. 16 (Claims App.).
Independent claim 7 recites a similar “[ajpparatus for recovering energy
from water, comprising:” (a) one or more cylinders including a piston and
piston rod, (b) an electric generator, (c) an exhaust valve, (d) a source of
pressurized liquid water consisting of a cooling radiator, a high pressure
pump, and a high pressure fluid injector including an atomizer, (b) an impact
chamber comprising sidewall, a plurality of gas flow passages, and electrical
heating elements, and (c) a battery “for energizing the electrical heating
elements.” Id. at 17 (Claims App.). Both claims further recite “wherein
when the injected atomized liquid water contacts the contact surface of the
impact chamber,” the water is “substantially instantaneously vaporized” to
steam that travels through the passages. Id. at 16, 17 (Claims App.). The
steam has a “motive force including stored energy” that enables generation
of power and “represents] energy yielded by the operation of the apparatus
and being greater than the energy supplied to the electrical heating
elements.” Id.
The independent claims are indefinite because one of ordinary skill in
the art cannot ascertain without considerable speculation what the inventor
regards as the invention nor the scope and meaning of the claims. The
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Application 12/770,422
claims require an apparatus with structural components and some
functionality to vaporize the water and imbues certain characteristics into the
resulting steam. First, it is not clear to one of ordinary skill in the art what is
meant by “representing energy” in the phrase “representing energy yielded.”
The Appellant appears to interpret “representing” as “is,” i.e., that “the
energy yielded is greater than the energy supplied to the electrical heating
elements.” Appeal Br. 11. But the claims recite “representing energy
yielded,” and the term “representing” is a broad one that can mean, in the
context of this case, serving as a sign of, having a specific quality, or
corresponding to. Represent, Dictionary.com, https://www.merriam-
webster.com/dictionary/represent?src=search-dict-hed (last visited Nov. 14,
2017). As such, the limitation can be interpreted as the motive force serving
as a sign of the energy yielded and being greater than the energy supplied,
the motive force having a specific quality of energy yielded and being
greater than the energy supplied, or the force corresponding to the energy
yielded. As such, the scope or meaning of “representing energy” would not
be understood by one of ordinary skill in the art.
It is further not clear to one of ordinary skill in the art from the claims
or the Specification what structural component(s) of the apparatus performs
the function of supplying energy to the heating elements resulting in the
steam yielding or “representing energy yielded by the operation of the
apparatus” such that the represented energy is “greater than the energy
supplied to the electrical heating elements.” There are at least two viable
interpretations.
The Examiner finds that it is not clear what structure achieves the
result of energy release such that the energy output is greater than the energy
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Application 12/770,422
input (id. at 3), but interprets the claims as requiring the pump to “pump[]
water to above the critical pressure,” the atomizer to “atomiz[e] the water,”
and the water contacting the heating elements (id.). Thus, the Examiner
appears to broadly interpret the claims as requiring the pump and energy
source/battery to perform the function of supplying energy to the heating
elements so that the atomized water is heated and converted to gas. See
Final Act. 2—3, 9—10. As such, the Examiner finds that the energy output by
the motive force is greater than that inputted by the pump, atomizer, and
energy source/battery to heat and convert the water to gas. The Examiner’s
interpretations are supported by the Specification. See id. at 2, 3, 6, 7, 9, 10
(citing Spec. H 2-8, 15-18, 22, 26-33, 37-40, 42).
The Appellant acknowledges that it is not known how the structure
works so that “the energy obtained is greater than the energy supplied to the
heaters” (Appeal Br. 13), and does not further specify what structure
achieves the result of the energy output being greater than the energy input.
The Appellant appears to disagree with the Examiner and interprets the
claims as requiring only the energy source/battery, exclusive of the pump
and atomizer, supplying energy to the heating elements to achieve the result.
See Appeal Br. 13. As such, the Appellant argues that operation of the
device results in the energy output by the motive force is greater than that
inputted only by the energy source/battery, and does not include that of the
the pump and atomizer. See id. at 11—13. The Appellant’s interpretations
are also supported by the Specification. See id. at 12—13 (citing Spec. 117).
Thus, there are at least two conflicting interpretations of the claimed
limitation “the motive force representing energy yielded by the operation of
the apparatus and being greater than the energy supplied to the electrical
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Application 12/770,422
heating elements.” One is the Examiner’s interpretation — that the energy
supplied to achieve the resulting motive force is by the pump, atomizer, and
energy source/battery and, thus, the energy yielded must be greater than the
total energy input by those elements to convert and heat the water to gas.
The other is the Appellant’s interpretation — that the energy supplied to the
heater is by the energy source/battery alone and that the operation of the
device results in a motive force with energy yielded greater than the energy
input by the energy source/battery. As such, one of ordinary skill in the art
would not understand the metes and bounds of the claimed invention in that
one would not understand with what the energy yielded is compared, i.e.,
what structure(s) supplies energy to achieve the resulting motive force that
yields energy greater than that supplied by that structure.
Therefore, independent claims 1 and 7, and also dependent claims 2,
3, and 6, have ambiguities such that they are unclear, and are thus indefinite.
See In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014).
35 U.S.C.§§ 101 and 112
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a
rejection of the claims must be reversed as impermissibly involving
speculative assumptions as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862—63 (C.C.P.A. 1962). Here, the issues regarding utility
and inoperability with respect to the rejections under 35 U.S.C. § 101, for
statutory subject matter, and § 112, for enablement by the Specification,
depend on the interpretation of the limitation of the energy yielded being
greater than the energy supplied. Because we are unable to determine the
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metes and bounds of that limitation, any analysis regarding those rejections
would involve considerable speculation. As such, we are unable to ascertain
whether these indefinite claims recite statutory subject matter under 35
U.S.C. § 101 and whether the indefinite claims fail to satisfy the
requirements under 35 U.S.C. § 112, first paragraph. Therefore, the
rejections under 35 U.S.C. §§ 101 and 112 of claims 1—3, 6, and 7 are not
sustained, pro forma.
DECISION
The Examiner’s rejections under 35 U.S.C. §§ 101 and 112 of claims
1—3, 6, and 7 are REVERSED pro forma.
A NEW GROUND OF REJECTION has been entered for claims 1-3,
6, and 7 under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise on the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims.
When the Board enters such a non-final decision, the 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
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Application 12/770,422
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. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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