King Abdulaziz University

Patent Trials and Appeals Board

Feb 7, 2022

2021003323 (P.T.A.B. Feb. 7, 2022)

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. 16/048,916 07/30/2018 Hussain Mohammad BASSI 508324US 7357 22850 7590 02/07/2022 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER NGUYEN, HOANG M ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 02/07/2022 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HUSSAIN MOHAMMAD BASSI and MUHAMMAD ADNAN BASHA Appeal 2021-003323 Application 16/048,916 Technology Center 3700 Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s September 4, 2020 Non-Final Action rejecting claims 1-6, 8, 10-16, 18, and 21-24. Appeal Br. 2. Claims 7, 9, 17, 19, and 20 have been canceled. Id. at 26-29 (Claims App.) We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as King Abdulaziz University. Appeal Br. 1. Appeal 2021-003323 Application 16/048,916 2 THE DISCLOSED AND CLAIMED SUBJECT MATTER The Specification describes a system that generates electricity based on the operation of a Lava Lamp®. Spec. ¶¶ 5, 16. Figure 2 of the Specification depicts a front view of the disclosed invention, and is reproduced below: As depicted in Figure 2 above, the system comprises tank 100 that is meant to contain “globules” of one substance, e.g., wax, suspended in a liquid, e.g., water or oil. Id. ¶¶ 16, 18. Tank 100 also encloses, on the left side, a vertical inner wall or metal plate 120, and on the right side, a pair of vertically offset rollers 111a and 111b joined by continuous belt 109. Id. ¶¶ 16, 18, Figs. 1, 2. “At room temperature, a solidified globule of the wax resides at a lower side of an inclined sheet at the bottom of the tank 100,” whereas at “an operating temperature,” the wax “becomes fluid and the globule begins to ascend as a liquid wax globule.” Id. ¶ 18. A heat source, such as solar concentrator 200 as depicted in Figure 2, is used to heat the Appeal 2021-003323 Application 16/048,916 3 wax. Id. ¶ 21, Fig. 2. The Specification asserts that the heated wax ascends pathway 103 to the left of inner wall/metal plate 120, and then “moves toward a cooler side of the tank and makes its way over the top of the inner wall 120.” Id. ¶ 18. “As the liquid wax cools, it “falls into collecting cups 107” attached to continuous belt 109; the subsequent rotation of belt 109 causes roller 111b (as well as roller 111a) to rotate, which in turn rotates a pulley system attached to generator 400. Id. Claims 1 and 11 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A convective power generation system, comprising: a tank containing: a continuous belt with collecting cups, wherein the continuous belt is held taut by at least one pair of rotating devices, including a top rotating device near a top of the tank and a bottom rotating device near a bottom of the tank; and a metal plate arranged vertically inside the tank between a vertical side wall of the tank and the top rotating device and the bottom rotating device and is substantially parallel to the vertical side wall and forms a pathway between the metal plate and the vertical side wall of the tank; a heat source that applies heat energy toward a bottom portion of the tank that contains wax and oil; a gearbox having at least one gear driven by a rotation of the continuous belt; and a generator driven by the gearbox, wherein the heat source produces an amount of heat sufficient to melt at least a portion of wax into liquid wax; the pathway is configured to move the liquid wax up through the pathway; a curved portion of the metal plate is configured to allow the liquid wax to slide towards the collecting cups; the continuous belt is configured to rotate as the liquid wax falls into the collecting cups; Appeal 2021-003323 Application 16/048,916 4 the gearbox is configured to be driven by the rotation of the continuous belt; and the generator is connected to the gearbox to produce electrical power. REJECTIONS Claims Rejected 35 U.S.C. § References 1-8, 10-16, 18, 21-24 101 Utility 1-8, 10-16, 18, 21-24 112(a) Enablement 1-8, 10-16, 18, 21-24 112(a) Written Description OPINION Claims 1-8, 10-16, 18, and 21-24-§ 101-Utility Both the Examiner and Appellant discuss the claims subject to this rejection as a group. Non-Final Act. 6-9; Appeal Br. 9-16. We select claim 1 as representative of the group, and decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner first finds that claim 1 lacks utility because it claims “a closed-loop system with a heating source and the specification does not provide any disclosure describing a cooling source.” Non-Final Act. 6-7. According to the Examiner: Without a cooling source, a stable heat-differential cannot be maintained. The cooling source must be at a temperature lower than the medium it cools and positioned to establish a heat- differential. For the sake of arguendo, even if a convection current may be initially generated when heat is initially applied to the lower left hand comer of the tank 100 a cooling source is required in order to maintain said initially generated convection current. After a period of time (relaxation time) any heat- differential set up by the initially generated convection current would eventually go away as the temperature of the fluid within tank 100 becomes more uniform due to the heat from the Appeal 2021-003323 Application 16/048,916 5 heating source spreading through the fluid in the tank I00 in order to establish a lower energy state in the fluid. Id. at 7. In response, Appellant refers to paragraph 18 of the Specification, which “describe[s] the convective motion of the liquid and the liquid wax necessary to operate the claimed system.” Appeal Br. 13. Appellant refers to “cooler regions” above and laterally away from a “hotter” region near the heat source: In the claimed convective system and method, the fluid has both upward and lateral movement where heated fluid moves upwardly and laterally to cooler regions until the wax slides over wall 120 and falls into the collecting cups continuously circulating on the rotatable belt. The heated fluid not only moves upward from a hotter vertical region to a cooler vertical region but also moves laterally from a hotter lateral region to a cooler lateral region. Without lateral movement from a hotter region to a cooler region in the tank, the rising wax would appear to be incapable of falling into the collecting cups and descending via the collecting cups to the bottom of the tank for reheating and upward recirculation. Id. The Examiner does not respond to this discussion in the Examiner’s Answer, but reiterates that the “system is a closed system without a cooling source.” Ans. 10. We disagree with the Examiner that the Specification does not disclose a cooling source. We understand Appellant’s reference to “cooler” regions above and laterally away from the system’s heat source to be an allusion to the Specification’s teaching of heat loss to ambient air through tank 100. See Spec. ¶¶ 36-38 (discussing heat loss through the tank). The Specification discloses that heat loss through tank 100 results in a “heat- Appeal 2021-003323 Application 16/048,916 6 differential between the top and bottom and left and right sides of the reservoir.” Id. ¶ 37.2 According to the Specification, the heat-differential “is the reason for the liquid wax and the oil to move in a current.” Id. The Specification discloses an embodiment in which thermal insulation covers only the left side of the tank, i.e., “a portion of the tank’s wall extending substantially from a vicinity of the bottom edge of the inner wall 120 to the top of the tank 100.” Id. ¶ 38. The apparent purpose of this partial insulation is “to minimize heat loss without undermining the heat- differential in the reservoir.” Id. ¶ 37. Thus, the Examiner’s findings that the Specification does not disclose a cooling source, necessary to create a heat-differential and convection currents in the oil, is not supported by the record. The Examiner also finds that the preferred embodiment, as disclosed in the Specification at paragraphs 18 and 40 and Figures 1 and 2, is inoperative. According to the Examiner: The last sentence of paragraph 18 reads: “It is preferred that the belt 109 in the vicinity of the upper roller 111a be outside the liquid to minimize fluid friction.” And paragraph 40 recites: “It is preferred that only one end of the collector cup belt should be submersed in fluid[.]” If the roller 111a is outside of the liquid (perhaps oil) to minimize fluid friction then the waxy material cannot move over the top portion of the inner wall 120. Furthermore, the disclosure of this application only identifies a single embodiment figs. 1-2. Clearly in figs. 1-2 the inner wall 120 is above the top of the belt 109 connected to element 111a. Therefore, if the fluid level is lower than element 111a and the 2 Here and elsewhere, we quote the amended version of paragraphs 37,38, and 42. See Amend. (Jan. 3, 2020), 7. Appeal 2021-003323 Application 16/048,916 7 top of the inner wall 120 then the wax cannot move over inner wall 120, thus rendering the invention inoperative. Non-Final Act. 8-9. Appellant responds that “[n]o claim on appeal states and the Specification does not teach that the fluid line is below the top of metal plate 120 or that the collecting cups are permanently above above [sic] either the fluid line and the top of metal plate 120.” Appeal Br. 11. Appellant asserts that “[t]he Examiner has ignored the potential operability and utility of the claimed system and method under conditions where the upper end of the continuous belt and the top rotating device are above the fluid level but the top of metal plate 120 and the collecting cups are at or below the fluid level in the tank.” Id. (emphasis added). Appellant cites to its modified version of Figure 2 in support of this contention. Id. at 11-12. Although claim 1 recites that the tank “contains wax and oil,” it does not specify a particular oil level, much less an oil level that is below the top of the vertical metal plate. Nor does the Specification expressly teach that the oil level should be below the top of the metal plate. While the scope of claim 1 may be broad enough to encompass an embodiment in which the oil level is below the top of the metal plate,3 that possibility does not render the claim itself inoperable. See Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984) (“Even if some of the claimed combinations were inoperative, the claims are not necessarily invalid. It is 3 Appellant does not dispute that its system would not work if the oil level is below the top of inner wall/metal plate 120. See, e.g., Appeal Br. 11 (“[T]he top of metal plate 120 and the collector cups must be below the fluid line of the oil in the tank in order to collect the falling wax.”). Appeal 2021-003323 Application 16/048,916 8 not a function of the claims to specifically exclude possible inoperative substances.” (internal quotation marks and alterations omitted)). Further, one of ordinary skill in the art likely would have known that such a configuration would not work. Movement of the wax is caused by a difference in density between the wax and the oil, so movement of the wax occurs only within the oil. Spec. ¶¶ 4-5. If the oil level is below the top of inner wall/metal plate 120, the wax cannot pass over the top of the inner wall/metal plate to fall down into collecting cups 107 to turn belt 109. Therefore, one of ordinary skill in the art likely would not have interpreted the claim to encompass that embodiment. See AIA Eng’g Ltd. V. Magotteaux Int’l S/A, 657 F.3d 1264, 1278 (Fed. Cir. 2011) (“a construction that renders the claimed invention inoperable should be viewed with extreme skepticism”). Therefore, the excerpts from paragraphs 18 and 40 do not persuade us that claim 1 lacks utility. For the above reasons, we do not sustain the Examiner’s rejection of claims 1-8, 10-16, 18, and 21-24 under § 101 as lacking utility. Claims 1-8, 10-16, 18, and 21-24-§ 112(a)-Enablement The Examiner finds that claims 1-8, 10-16, 18, and 21-24 fail to comply with the enablement requirement. Non-Final Act. 10-12. “‘[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.”’ Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). “When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by Appeal 2021-003323 Application 16/048,916 9 that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement.” Wright, 999 F.2d at 1561-62 (internal citation omitted). The Examiner finds that “[t]he specification fails to provide any guidance or description with enough information for a practitioner to make and use the claimed invention” because “[t]he proportions of wax and oil that occupy the tank 100 are not provided.” Non-Final Act. 10. According to the Examiner, “[o]ne of ordinary skill in the art would have to undergo extensive experimentation so as to determine which amount of wax and oil are needed for this invention.” Id. at 10-11. The Examiner has not, however, provided evidence or reasoned explanation supporting the finding that “extensive experimentation” would be necessary to determine the appropriate wax and oil levels. Therefore, this is not persuasive that the claims fail the enablement requirement. The Examiner further finds that “[t]he specification fails to provide any guidance or description regarding how to set up a heat-differential capable to produce a convection current able to facilitate/motivate movement of the waxy material from vertical pathway 103 over and past inner wall 120 to a horizontal position above the collecting cups 107.” Non- Final Act. 11. The Examiner explains: The heat-differential required to create and maintain a stable heat-differential is complex and must be described or explained. A stable heat- differential may require a cooling source and there is no cooling source mentioned in the specification of this application. One of ordinary skill in the art would have to undergo extensive experimentation so as to determine if a Appeal 2021-003323 Application 16/048,916 10 cooling source is needed and how to set up a stable heat-differential needed for generating power with this invention. Id. The Examiner’s analysis is at least in part premised on the finding that the Specification does not disclose a cooling source. As discussed above, however, this finding is not supported by the record. Moreover, the Examiner does not provide evidence or persuasive argument supporting the finding regarding the complexity of maintaining a stable heat-differential. For the above reasons, we are not persuaded that claims 1-8, 10-16, 18, and 21-24 fail to comply with the enablement requirement, and therefore do not sustain this rejection. Claims 1-8, 10-16, 18, and 22-24-§ 112(a)-Written Description The Examiner rejects claims 1-8, 10-16, 18, and 22-24 under 35 U.S.C. § 112(a) for failing to comply with the written-description requirement for the following reason: The disclosure of this application appears to only have support for having 2 collecting cups 107 shown in figures 1-2 on the left side of the belt 109. It is noteworthy to mention that this invention cannot operate without more than only two collecting cups 107 situated in some order along the belt 109. The disclosure of this application appears to demonstrate possession for only two collecting cups 107. Therefore, the specification of this application fails to reasonable convey to one of ordinary skill in the art that the inventor(s) at the time the application was filed had possession of the claimed invention. Non-Final Act. 12-13. The Examiner’s analysis does not specifically identify what limitation in which claim is inadequately described, and therefore fails to support a Appeal 2021-003323 Application 16/048,916 11 written-description rejection. Accordingly, we do not sustain the rejection on this basis. The Examiner separately rejects claims 22-24 for failing to comply with the written-description requirement. Non-Final Act. 10. Appellant added claims 22-24 by amendment dated August 7, 2020. Id. Claim 22 depends from claim 11 and additionally recites “wherein the top rotating device is above a liquid line of the oil in the tank and a top of the metal plate is at the liquid line of the oil in the tank.” Appeal Br. 29 (Claims App.). Claim 22 therefore requires the top rotating device to be above the top of the inner wall/metal plate. Claim 23 depends from claim 1 and adds a similar limitation. Id. Claim 24 depends from claim 23. Id. The Examiner finds that there is no support in the Specification as originally filed for the top rotating device to be above the top of the metal plate. Non-Final Act. 10. Although Appellant addresses this rejection, Appellant does not identify where in the Specification such a configuration is disclosed. Appeal Br. 19- 21. On the contrary, the depictions of the device show the top of the metal plate above the top rotating device. See Spec. Figs. 1, 2. Therefore, we agree with the Examiner that the additional limitations of claims 22-24 are not described in the Specification, and sustain the Examiner’s rejection of these claims under 35 U.S.C. § 112(a). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8, 10-16, 18, 21-24 101 Utility 1-8, 10-16, 18, 21-24 Appeal 2021-003323 Application 16/048,916 12 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8, 10-16, 18, 21-24 112(a) Enablement 1-8, 10-16, 18, 21-24 1-8, 10-16, 18, 21-24 112(a) Written Description 22-24 1-8, 10-16, 18, 21 Overall Outcome 22-24 1-8, 10-16, 18, 21 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