Ex Parte Hoffmann et al

Board of Patent Appeals and Interferences

Sep 9, 2010

11504474 (B.P.A.I. Sep. 9, 2010)

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.
11/504,474 08/14/2006 Eugene J. Hoffmann 4L091-010 2814
7590 11/01/2010
David E Lund
115 Cashire Drive
Heartford, NC 27944
EXAMINER
BOECKMANN, JASON J
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
11/01/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EUGENE J. HOFFMANN and
DAVID E. LUND
____________________

Appeal 2010-002699
Application 11/504,474
Technology Center 3700
____________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-002699
Application 11/504,474

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Application 11/504,474

STATEMENT OF THE CASE
Eugene J. Hoffmann and David E. Lund (Appellants) seek our review
under 35 U.S.C. § 134 of the final rejection of claims 36-42. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention pertains to a method to control and
minimize the threat of tropical cyclones. Spec. 3. Claim 36, reproduced
below, is representative of the subject matter on appeal.
Claim 36. A process for disrupting a formed or forming
tropical cyclone eye wall or eye or center of lowest pressure
comprising: Introduction of a super coolant chemical agent
sprayed with force (the super coolant is stored in a vessel under
pressure) and or released from pre-measured containers from an
appropriate number of large aircraft to reduce the temperature
within the eye wall (top to bottom at sea level), thereby
circulating the super coolant throughout the eye wall by the
centrifugal force of the eye wall, alternatively into the eye or
center of lowest pressure to reduce the temperature in the eye
or center of lowest pressure and the water beneath, thereby
reducing the wind and storm surge of the eye wall or raising the
pressure in the eye or center of lowest pressure and converting
it back to a tropical rainstorm.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 36-42 are rejected under 35 U.S.C. § 101 because the
claimed invention is inoperative and therefore lacks utility;
2. Claims 36-42 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement;
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3. Claims 36-42 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement;
and
4. Claims 36-42 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as their
invention.

OPINION
In this decision, Appeal Brief citations are to the document dated
July 19, 2009, and bearing a USPTO Central Fax Center date of July 20,
2009. That document, filed in response to a notice of a defective brief,
contains, among other things, a supplementation to the previously submitted
appeal brief and which bears page numbers 1 through 7 and an “Update[d]”
appeal brief originally dated May 7, 2009, bearing page numbers 1 through
12B (the signature page). In order to minimize confusion, our pinpoint
citations are to both the page number in the respective supplementation or
appeal brief and to the page number shown in the facsimile header.

1. Claims 36-42 are rejected under 35 U.S.C. § 101 because the claimed
invention is inoperative and therefore lacks utility
The Examiner has the initial burden of setting forth a reason to doubt
Appellants’ presumptively correct assertion of utility. In re Swartz, 232
F.3d 862, 864 (Fed. Cir. 2000). “The PTO may establish a reason to doubt
an invention's asserted utility when the written description ‘suggest[s] an
inherently unbelievable undertaking or involve[s] implausible scientific
principles.’” In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (quoting
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In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)) (alterations in original).
The burden of coming forward with evidence of utility shifts to Appellants
“[i]f the [Examiner] provides evidence showing that one of ordinary skill in
the art would reasonably doubt the asserted utility[.]” Id.
Appellants contend that the Examiner has failed to provide evidence
and reasoning to show reasonable doubt as to the utility of their invention,
and therefore has not satisfied the initial burden. Reply Br. 3; see also App.
Br. 4 (facsimile page 6) (asserting that the Examiner “has not provided
specific evidence that the Pending Patent will not work.”) We agree. The
Examiner has not presented any evidence to show that one of ordinary
skill would reasonably doubt the utility of Appellants’ claimed invention.
Ans. 3 (“No evidence is relied upon by the examiner in the rejection of the
claims under appeal.”) Likewise, the Examiner has not persuaded us that
Appellants’ cyclone disruption process involves an inherently unbelievable
undertaking or implausible scientific principles. Contra Ans. 4-5. As such,
we cannot find by a preponderance of the evidence that the claimed subject
matter is inoperative, and we cannot sustain the rejection of claims 36-42 as
lacking utility.

2. Claims 36-42 are rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the enablement requirement
When rejecting a claim for lack of enablement, “the [Examiner] bears
an initial burden of setting forth a reasonable explanation as to why [the
Examiner] believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
specification of the application ….” In re Wright, 999 F.2d 1557, 1561-62
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(Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA
1971)).
In this case, the Examiner concluded that the enablement requirement
is not satisfied because the invention lacks credible utility and because
undue experimentation would be required. Ans. 5, 6. As discussed above,
we have determined that the Examiner has not established that the invention
lacks utility, and therefore we cannot affirm the enablement rejection on that
basis.
As to undue experimentation, the Examiner tersely sets forth five
bulleted findings. Id. at 6-7. One finding is that “[t]he application is devoid
of working examples and/or models.” Id. at 7. However, as Appellants note
(App. Br. 11 (facsimile page 20)), the Specification does include prophetic
examples with calculations concerning the necessary quantities of coolant,
containers, and aircraft. See Spec. 15-18. The Examiner does not explain
why those calculations are incorrect or why the examples otherwise fail to
provide enough guidance to one of ordinary skill attempting to practice the
claimed invention. Most of the remaining undue experimentation findings
lack adequate specific reasoning and are too conclusory to support a
determination that any experimentation would be undue. See, e.g., Ans. 7
(“The amount of experimentation needed to use the invention based on the
content of the disclosure is far too extensive.”)
Lastly, the Examiner states that the claimed invention “is not feasibly
supported by the specification in exact terms.” Ans. 6 (emphasis added).
The Examiner’s articulation of the rejection suggests that the Examiner has
set an inappropriately high disclosure requirement. The test for compliance
with the enablement requirement is not whether the disclosure supports the
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claimed invention in “exact terms” but rather whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to
make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
We conclude that the Examiner has not satisfied the initial burden of
explaining why claims 36-42 fail to satisfy the enablement requirement of
§ 112, first paragraph. As such, we cannot sustain that rejection.

3. Claims 36-42 are rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement
The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
The Examiner maintains that:
There appears to be no support for the process of raising the
pressure of the eye or center of lowest pressure as claimed in
line 9 of claim 36. The specification refers to reducing the
temperature of the eye wall with the super coolant, but is silent
about raising the pressure.
Ans. 7. Appellants’ arguments suggest that they contend that reducing the
temperature inherently results in a pressure increase. See App. Br. 8-9
(facsimile pages 17-18); Reply Br. 16-17.
The claimed subject matter need not be described in haec verba in the
original specification in order to satisfy the written description requirement.
In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, the test for
compliance with the written description requirement is “whether the
disclosure of the application relied upon reasonably conveys to those skilled
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in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (citations omitted). In this case, even if the
Specification does not explicitly disclose raising the pressure, the Examiner
has not adequately explained why one of ordinary skill would fail to
recognize an implicit or inherent disclosure of that subject matter. We
cannot sustain the written description rejection.

4. Claims 36-42 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellants regard as their invention
The Examiner offers at least four different bases for the indefiniteness
rejection. Ans. 7-9. The first basis concerns the recitation in claim 36 of
“disrupting a formed or forming tropical cyclone eye wall or eye or center
of lowest pressure.” Ans. 8. Specifically, the Examiner concludes that the
magnitude of the required disruption is unclear, and that “disrupt” could
mean anything from slightly altering the course of one particle of the
cyclone to dissipating the entire cyclone. Id. We do not agree with the
Examiner’s conclusion. In light of the last phrase in claim 36 – “thereby …
converting it back to a tropical rainstorm” – we conclude that one of
ordinary skill in the art would understand the magnitude of disruption to be
that necessary to downgrade a tropical cyclone having an eye or center of
lowest pressure, e.g., a hurricane, to a tropical rainstorm.
As to the second basis, the Examiner maintains that it is unclear as to
how many vessels or pre-measured containers are needed or how many
aircraft constitute an “appropriate number.” Id. This reasoning seems to be
more appropriately directed towards enablement rather than indefiniteness.
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As discussed above, we cannot conclude that, in light of the prophetic
examples in the Specification, the determination of the number of vessels,
containers, or aircraft would require undue experimentation. Similarly, we
cannot conclude that one of ordinary skill reading the claims in light of the
Specification would be unable to discern the boundaries of the claims due to
the lack of a recitation of specific quantities. Therefore, we cannot sustain
the indefiniteness rejection on this basis.
The third basis concerns the recitation of “converting it back to a
tropical rainstorm.” Id. The Examiner maintains that the distinction
between a tropical cyclone and a tropical rainstorm is not “entirely clear.”
Id. However, the Examiner has given us no reason to conclude that “tropical
rainstorm” lacks a reasonably definitive meaning in the art. In other words,
on the record before us, we cannot conclude that one having ordinary skill
in the art would be unable to determine whether a given set of weather
conditions constitutes a tropical rainstorm.
Lastly, the Examiner rejected claim 42, which depends directly from
claim 36 and recites: “wherein should the eye wall or eye or center of
lowest pressure starts to reform; it will be hit again as required as specified
above.” The Examiner maintains, inter alia, that:
[I]t is not clear what “specified above” is referring to. Is that
appellant referring to any particular claim, all the claims, just
claim 36, or the entire specification?
Ans. 9. We agree with the Examiner’s sentiment. While Appellants may
have intended that the “required” process be that of claim 36, the phrase “as
specified above” injects enough ambiguity to merit an indefiniteness
rejection. Cf. Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (BPAI 2008)
(During prosecution, the threshold standard of ambiguity for indefiniteness
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is lower than it might be during litigation of an issued patent.) We sustain
the rejection of claim 42 under the second paragraph of § 112.
In summary, we can only sustain the indefiniteness rejection of
dependent claim 42, but not of claim 36 or the other dependent claims.

DECISION
The decision of the Examiner to reject claims 36-41 is reversed. The
decision of the Examiner to reject claim 42 is affirmed.
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-IN-PART
JRG

David E. Lund
115 Cashire Drive
Heartford, NC 27944
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