Ex Parte Kissane

Patent Trial and Appeal Board

Nov 20, 2018

13507120 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/507, 120
7590
John Kissane
FILING DATE
06/06/2012
11/21/2018
18-B Ashington Club Rd.
Far Hills, NJ 07931
FIRST NAMED INVENTOR
John Kissane
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8482
EXAMINER
AMAYA, CARLOS DAVID
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
11/21/2018 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 JOHN KISSANE
Appeal 2018-003469
Application 13/507, 120
Technology Center 2800
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claim 13 under 35 U.S.C. § 112, first paragraph for lack
1 Our decision refers to the Specification ("Spec.") filed June 6, 2012, the
Examiner's Non-Final Office Action (''Non-Final Act.") dated May 27,
2016, Appellant' Appeal Brief ("Appeal Br.") filed January 26, 2017, the
Examiner's Answer ("Ans.") dated February 1, 2018, and Appellant's Reply
Brief ("Reply Br.") filed February 5, 2018.
2 Appellant is the Applicant and Inventor, John Kissane, which we presume
is the real party in interest because the Appeal Brief does not identify
another entity.
3 Because Appellant presents only a single claim during prosecution, the
Examiner referred to this single claim as claim 1. We likewise do so here.
Appeal2018-003469
Application 13/507,120
ofenablement, and second paragraph for indefiniteness, and§ 101 as
inoperable. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a capacitive transformer for powering an
electric car, wherein a capacitor is powered with a coil of wire receiving
inductance by the capacitor, such that electricity induced in the coil of wire
powers the electric car (Spec. ,r,r 1, 9). Appellant discloses that an electric
car would have long range capabilities because the only load on the battery
would be that of a capacitor (id. ,r 8). Appellant's invention is illustrated in
Figure 1, reproduced below.
Fig. 1, showing the capacitive transformer of the invention
Figure 1 shows two circuits, CiR 1 and CiR 2, wherein CiR 1
comprises a battery and a capacitor, and CiR 2 comprises a coil of wire
disposed between the plates of the capacitor, a rheostat, and an electric car
(Spec. ,r 10). According to Appellant, CiR 1 induces current in CiR 2
through inductance when the capacitor is charged by the battery so as to
power the electric car (id. ,r 11 ).
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Application 13/507,120
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is the sole claim before us in this appeal and is illustrative of the
subject matter on appeal.
1. Unique circuitry composed of two circuits that allows for
current to be induced in a coil of wire by a capacitor that
surrounds it that is charged by a battery, this current then goes
on to power an electric car through a rheostat, because the
only load on the battery is that of a capacitor its duration of
life is much longer and is thereby maximized, this battery
technology shows how to get the most out of a battery, and is
done by indirectly inducing current in a coil of wire that is
surrounded by a capacitor, this current then goes on to power
an electric car, furthermore I claim that the use of this
technology as applied to an electric car is new and unique.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections.")). Failing to raise any
argument with respect to a rejection amounts to a waiver with regard to that
rejection. See In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011) ("a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art" waives any
argument with respect to those claim elements).
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Appeal2018-003469
Application 13/507,120
Rejection under 35 USC§ 112, second paragraph
During prosecution, a claim is examined for compliance with
35 U.S.C. § 112, ,r 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting M.P.E.P. § 2173.02).
The Examiner determines that the claim is narrative in form and
replete with indefinite language, and notes that the subject of the claim must
be clearly and positively recited, as well as organized and correlated so as to
present a complete operative device (Ans. 3--4). For assistance, the
Examiner directed Appellant's attention to claims set forth in a number of
patents cited in the record (id. at 4).
During prosecution before the Examiner, Appellant did not attempt to
amend the claim in response to this rejection. Nor does Appellant argue or
otherwise address this rejection in this appeal. While a pro se applicant is
generally afforded more latitude than an applicant represented by counsel,
even pro se applicants must state their claims in an understandable and
precise manner so as to provide adequate notice to the public of the scope of
protection sought by those claims.
Therefore, we affirm the Examiner's rejection of claim 1 under 35
U.S.C. § 112, second paragraph.
Rejections under 35 USC§ 112,firstparagraph and§ 101
"A claimed invention having an inoperable or impossible claim
limitation may lack utility under 35 U.S.C. § 101 and certainly lacks an
enabling disclosure under 35 U.S.C. § 112." EM! Group North America,
Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1348 (Fed. Cir. 2001)
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Appeal2018-003469
Application 13/507,120
(citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983)).
"When a claim itself recites incorrect science in one limitation, the entire
claim is invalid, regardless of the combinations of the other limitations
recited in the claim." EM!, 268 F.3d at 1349.
We start with claim construction. Raytheon, 724 F.2d at 956 ("Utility
is a fact question .... In determining utility, however, the claims must first
be interpreted to define the invention to be tested for utility") ( citations
omitted).
Appellant discloses a pair of circuits, CiR 1 and CiR 2, which interact
via a coil of wire in CiR 2 which is disposed between the capacitor plates of
a capacitor of CiR 1 (see Fig. 1 ). The capacitor of CiR 1 is charged by a
battery in CiR 1 (id.). CiR 2 includes a rheostat, R, and an electric car (id.).
Appellant discloses that CiR 2 powers the electric car via inductance from
CiR 1 because of the placement of the coil within the capacitor (Spec. ,r 10-
11 ). Appellant further discloses that electricity in CiR 2 at point A is
attracted to point B, which sets up current in the coil (id.).
Claim 1 recites circuitry composed of two circuits that allow for
current to be induced in a coil of wire by a capacitor that is charged by a
battery. This recitation does not specifically require that the circuits include
the coil of wire, the capacitor, or the battery. For purposes of our review, we
construe the invention to be two circuits as disclosed wherein the first circuit
includes a battery and capacitor and the second circuit includes a coil of wire
disposed within the capacitor and electrically connected to an electric car.
The Examiner determines that claim 1 both fails to comply with the
enablement requirement of 35 U.S.C. § 112, first paragraph, and fails to
comply with the utility requirement of 35 U.S.C. § 101 for essentially the
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Appeal2018-003469
Application 13/507,120
same reason-that the invention, as disclosed and claimed, will not induce a
current into the coil and, therefore, will not work (Ans. 2-3). Specifically,
the Examiner determines that claim 1 recites "a current to be induced in a
coil by a capacitor that surrounds it" (id.). The Examiner finds, however,
that 1) in order for current to be induced in a coil, it must be within a varying
electric field; and 2) once a capacitor is fully charged, it produces a fixed,
rather than a varying, electric field between the capacitor plates (id.). The
Examiner concludes, therefore, that the capacitor cannot induce a current in
the coil once the capacitor is fully charged (id.).
Appellant argues that an electric car has an electric motor having a
magnet (Appeal Br. 3). Appellant, as an example, contends that when the
electric motor is an alternating current (AC) motor, "[a]s the battery
increases in charge the motor begins to spin" (id.). Appellant asserts that the
spinning of the magnet in this motor will induce a "Sine wave current in the
wire that goes back to the coil of wire surrounded by the capacitor" (id. at 3-
4 ). According to Appellant, it is this sine wave current produced by the
motor that produces a varying magnetic field which interacts with the
electric field produced by the capacitor (id. at 4). Appellant argues that this
field to field interaction weakens the capacitor slightly, which recharges
quickly from the battery, and drives the current (id.). Also, Appellant urges
that magnets today are stronger than when the "'fixed field' science was
discovered," and that even stronger magnets might make the invention
possible (id. at 5).
Appellant's arguments are not persuasive of reversible error in the
Examiner's enablement and inoperability rejections. Jung, 637 F.3d at
1365. Initially, we note, as the Examiner correctly finds (Ans. 2),
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Application 13/507,120
Appellant's arguments regarding the motor of the electric car and a sine
wave current produced by spinning magnets therein lack support in
Appellant's Specification and as we further observe, are not directed to
limitations appearing in the claim. 4 We also note that Appellant does not
challenge the validity of the Examiner's findings that induction in a coil
requires a varying electric field and that a capacitor produces a fixed field
when fully charged. As such, Appellant's arguments lack persuasive merit.
In addition, we note that because the battery charges the capacitor, not
the motor, Appellant fails to explain how an increase in charge of the battery
will cause the motor to begin to spin. Also, Appellant fails to explain how
the battery and capacitor induce current in the coil of wire if it is the motor
that generates the sine wave current to the coil of wire, as Appellant
contends. Moreover, Appellant fails to explain how the strength of the
magnets in the motor affect the operability of Appellant's invention,
especially with regard to producing induced current in the second circuit
using the battery and capacitor.
Appellant contends that there is somehow a field to field interaction
between the current in the coil of wire produced by the motor and the
electric field produced in the capacitor by the battery that "drives the
current." However, Appellant fails to account for the fact that, in this
contention, the current in the coil of wire allegedly is produced by the motor,
not the battery or capacitor. As such, the current produced by the motor is
not the induced current Appellant desires to create from the battery and
4 Appellant also argues that the battery may be a battery and oscillator
combination (Reply Br. 2). Appellant fails to direct attention to written
descriptive support in the Specification for such an oscillating battery, nor
do we find any.
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Application 13/507,120
capacitor. Indeed, a motor, in contrast with a generator, consumes current,
rather than generates current.
Accordingly, for the reasons given above and in the Examiner's
Answer, we are not persuaded that the Examiner reversibly erred in
concluding that the claimed invention is inoperable and that the disclosure
fails to enable those skilled in the art to make and use the invention.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claim 1
under 35 U.S.C. § 112, first paragraph for lack of enablement and second
paragraph for indefiniteness, and§ 101 as inoperable, 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)(l ).
AFFIRMED
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