Ex Parte Noninski

Patent Trial and Appeal Board

Dec 17, 2018

13730870 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/730,870
111804 7590
Vesselin C. Noninski
149 West 12rh Street
Apt,# 3 - 4
New York, NY 10011
12/29/2012
12/18/2018
FIRST NAMED INVENTOR
Vesselin C. Noninski
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.
9283
EXAMINER
FLEMING, FRITZ M
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
12/18/2018 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 VESSELIN C. NONINSKI
Appeal 2018-002116
Application 13/730,870
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant1 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1 and 4.
We have jurisdiction under 35 U.S.C. § 6(b). 2
We AFFIRM.
1 Appellant is the inventor and represents himself as a pro se applicant.
2 Our Decision refers to the Specification (Spec.) filed December 29, 2012,
the Final Office Action (Final Act.) dated June 23, 2015, the Appeal Brief
filed December 21, 2015 (Appeal Br.), the Examiner's Answer (Ans.) dated
November 15, 2017, and the Reply Brief (Reply Br.) filed December 15,
2017.
Appeal 2018-002116
Application 13/730,870
The subject matter on appeal relates to an apparatus and a method that
produce more power than power spent (see Appeal Br. 94, claims 1 and 4).
The claimed invention involves a circuit including a reactive element, such
as a capacitor or inductor, and applying an alternating voltage with a
constant voltage offset to the circuit that, according to Appellant, results in
the production of more power than power spent. Id. As stated in paragraph
1 of the Specification, "[ t ]he present invention relates generally to a method
and a device which find application for the production of more energy than
the input energy and/or for the production of energy without spending
energy, in genuine violation of the principle of conservation of energy
(CoE)."
Independent claim 1 and 4 3 are the only pending claims and are
reproduced below from the Claims Appendix of the Appeal Brief.
1. An apparatus for producing energy comprising an electric
circuit containing at the same time:
a) at least one reactive element, such as, capacitor or
inductor
b) having alternating voltage with constant voltage offset
applied to said electric circuit, all these elements and
conditions, in their togetherness always leading to CoE
violation specifically, leading to production of more power than
power spent, if any.
4. A method of producing more power than the power
spent, if any, requiring the application of alternating voltage
with constant voltage offset to an electric circuit containing at
least one reactive element such as, capacitor or inductor.
3 Due to issues with claim amendments and the renumbering of claims, the
claims were listed as claims 1 and 2 in the rejections of the Final Office
Action. The claims have been renumbered as claims 1 and 4 in the Appeal
Brief with claims 2 and 3 canceled. Appeal Br. 94. Therefore, we refer to
the claims as 1 and 4 herein.
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Application 13/730,870
REJECTIONS ON APPEAL
I. Claims 1 and 4 under 35 U.S.C. § 101 as lacking
patentable utility and being inoperative and under 35
U.S.C. § 112, first paragraph, because the claimed
invention is not supported by a credible asserted utility or
a well-established utility;
II. Claims 1 and 4 under 35 U.S.C. § 101 as being directed
to patent ineligible subject matter; and
III. Claims 1 and 4 under 35 U.S.C. § 112, second paragraph,
as being indefinite.
B. DISCUSSION
Objection to the Specification
The Final Office Action includes an objection to the Specification for
including new matter via amendment. Final Act. 5. Appellant argues there
is no new matter in the Specification. Appeal Br. 10-11. However, as
indicated by the Examiner (Ans. 7-8), this is a matter that should have been
raised by a timely-filed petition under 3 7 C.F .R. § 1.181. See 3 7 C.F .R.
§ 1.113. Petitionable matters are not appealable to the Patent Trial and
Appeal Board. In re Berger, 279 F.3d 975, 984--985 (Fed. Cir. 2002) (citing
In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)); see also MPEP §
1201. Therefore, we do not address this objection.
Rejection I
Claims 1 and 4 are rejected under 35 U.S.C. § 101 as lacking
patentable utility and being inoperative and under 35 U.S.C. § 112, first
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Application 13/730,870
paragraph, because the claimed invention is not supported by a credible
asserted utility or a well-established utility.
As explained by the guidance set forth in l'v1PEP § 2107 .(H II, cases in
which an invention lacks utility due to the utility being incredible and thus
inoperative are rare1 fact specific1 and shou1d not be applied as a per se rule.
Specifically, J\ifPEP § 2107.01 II cautions ''in view of the rare nature of such
cases, Office personnel should not label an asserted utility 'incredible/
'speculative' or otherwise unless it is dear that a rejection based on 'lack of
utiliti is proper."
The record fi.1r this application, however, clearly supports a finding
that the claimed inventions are directed to an incredible utilitv. As stated by ., .
the Examiner (Final Act 7), claims 1 and 4 respectively recite an apparatus
and method that, according to the claims~ violate the law of the conservation
of energy (i.e.~ produce more power than power spent). ln other words~ the
utility for the claimed invention is inconsistent ,vith a known scientific
principle and contemporary knowledge (i.e., that energy can neither be
created nor destroyed). l)~ee Nevvrnan v. Quigg, 877 F.2d 1575, 1580 (Fed.
Cir. 1989) ("This court ... believes that the laws of thermodynamics do not
brook contradiction.'') Appellant repeatedly asserts this uti1Hy (Spec. ii 1:
Appea1 Br. 15----42, 63----64) and acknowledges the asserted utility of the
claimed invention violates a known scientific principle. Reply Br. 9----10
("Appellant has indeed claimed subject matter that could only be tn1e if it
violated a thus far known scientific principle (i.e. the conservation of
energy) and that is indeed wholly inconsistent with contemporary knowledge
in the mi").
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Appeal 2018-002116
Application 13/730,870
Therefore, the Examiner has set forth a prima facie case that claims 1
and 4 lack a patentable utility and are inoperative under § 101. This
deficiency also creates one under 35 U.S.C. § l 12~ first paragraph:
The how to use prong of section 112 incorporates as a matter of
law the requirement of 35 U.S.C. § 101 that the specification
disclose as a matter of fact a practical utility for the invention ...
If the application fails as a matter of fact to satisfy 35 U.S.C.
§ 101, then the application also fails as a matter of law to enable
one of ordinarv skill in the aii to use the invention under 35
.;
U.S.C. § 112.
In re Ziegler, 992 F.2d 1197, 1200-01 (Fed. Cir. 1993).
Because a prima facie case has been set forth, the burden has been
shifted to Appe11ant to identify a reversible error in the Examiner~s rejection.
"[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case ofunpatentability. If that
burden is met, the burden of coming forward with evidence or argument
shifts to the applicant" In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[W]here an applicant predicates utility for the claimed invention on
allegations of the sort here which are or border on the incredible in light of
contemporary knowledge of the particular art, those allegations must be
substantiated by acceptable evidence." In re Ferens, 417 F.2d 1072, 1074
(CCPA 1969).
\Ve have considered Appellanfs numerous arb:ruments in both the
Appeal Brief and Reply Brief but find them unpersuasive. 4 AppeHant
4 Curiously, in response to the Examiner's comments on whether a structure
disclosed by a prior art reference (Gallavan, US 2008/0129279 Al,
published June 5, 2008 ("Gallavan")) would also produce more energy than
spent (Ans. 4--5, 10), Appellant states "Gallavan's experiment also produces
excess energy and violates CoE." Reply Br. 12. Due to the incredible
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Application 13/730,870
contends his calculations of power, based upon experimentally obtained
values for voltage and current, demonstrate that the claimed invention
produces more povver than spent and thus violates the law of conservation of
energy. Appeal Br. 20-26, 33-34, 38-43; Reply Br. 16-19, \Ve appreciate
Appellant's explanations that power is cakulated from values such as
voltage and cunenL However, such calculations alone are insufficient to
demonstrate that the scientific principle for the conservation of energy is
inconect. As noted by the Examiner (_Ans. 7), experimental evidence 5
definitively showing that more energy is produced than spent is required, not
calculations, which may contain an error or be based upon an incorrect
premise. Ferens, 417 F.2d at 1074 ("The amount of evidence which is
acceptab1e and the character of such evidence required wm obvious1y vary
depending on the facts of each case . , .''); In re ()a::.ave, 379 F.2d 973, 978
(CCPA 1967) (''[I]f the alleged operation seems clearly to conflict with a
recognized scientific principle as, for example, where an applicant purpmis
to have discovered a machine producing perpetual motion, the presumption
of inoperativeness is so strong that very clear evidence is required to
overcome it.'1 Though Appellant asserts it would have been unreasonable
to expect such evidence (Rep1y Br. 21), that type of evidence is necessary in
this case to demonstrate that a widely accepted, contemporary knowledge
nature of the utility asserted for the claimed invention, however, we decide
not to exercise our discretion to make a new ground of rejection over
Gallavan.
5 We note that such evidence would need to be in the correct form (i.e., in
the form of a declaration or affidavit under 37 C.F.R. § 1.132). Arguments
set forth in a brief cannot take the place of evidence. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
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Application 13/730,870
regarding a law of nature is inc01Tect and the claimed invention has a
credible utility. See In re Neivman, 782 F2d 971, 973 (Fed. Cir. 1986) ("the
PTO is entitled to reject an application fbr insufficient proof when a device
by its nature occasions reasonable skepticism as to its operativeness under
§tor}
Furthermore, the Examiner proposes a source of enor in Appellant's
ca1cu1ations that could cause an indication that conservation of energy is
violated, citing several references for suppmi. Final Act 7----8. Appellant
responds by arguing the calculations cited by the Examiner are incorrect but
again relies upon calculations that resuh in more power produced than spent
to prove the law of conservation of energy is violated. Appeal Br. 44-51;
Reply Br. 24-25, 62. As discussed above, such calculations alone are
insufficient to prove that this scientific principle1 the law of conservation of
energy, is false. As a result, Appellant bas not identified a reversible enor in
the Examiner's rejection.
A preponderance of the evidence in the record supports the
Examiner's finding that claims 1 and 4 1ack utility because the asserted
utility is of an incredible nature. For these reasons and those set forth in the
Examiner's Answer, we sustain the Examiner's§ 101 rejection of claims 1
and 4 as lacking patentable utility and being inoperative and the Examiner's
§ 112, ,r 1, rejection of claims 1 and 4 because the claimed invention is not
supported by a credible asserted utility or a well-established utility.
Re} ection II
Claims 1 and 4 are also rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. In view of the incredible nature
of the utility for the claimed invention, we do not reach the Examiner's
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Application 13/730,870
rejection under § 101 for lack of patent eligible subject matter.
Rejection III
Claims 1 and 4 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
The Examiner concludes claims 1 and 4 are indefinite because they
recite that conservation of energy is violated but this cannot be possible
given what is accepted as known science. Final Act. 9. Appellant's
arguments do not persuasively identify a reversible error in the § 101
rejection based on an incredible utility or this rejection under§ 112.
Therefore, we sustain this rejection for the reasons discussed above with
regard to the lack of utility rejection under § 101.
The Examiner also rejects claims 1 and 4 as indefinite because the
terms "such as," "specifically," "if any," and "and conditions" render the
scope of the claims unclear. Id. This rejection presents a different matter
than the utility issue discussed above. 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---69 (Fed. Cir. 2009) (quoting MPEP
§ 2173.02). The issue here is whether one skilled in the art would
understand the scope of what is claimed. In other words, would the public
be provided with adequate notice about what the claimed inventions
encompass?
For example, would one of ordinary skill in the art understand that the
apparatus of claim 1 encompasses all reactive elements or would such a
person understand that the reactive element is limited to a capacitor or an
inductor? The term "such as" renders the answer to this inquiry unclear.
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Application 13/730,870
The terms "specifically" and "if any" cause similar problems and it is
unclear what the term "and conditions" refers to. As a result, claims 1 and 4
are indefinite under§ 112, ,r 2.
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, for these reasons and those set forth in the Examiner's Answer,
we sustain the rejection of claims 1 and 4 under 35 U.S.C. § 112, second
paragraph.
C. DECISION
The decision of the Examiner 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).
AFFIRMED
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