Matthew Lewis

Patent Trials and Appeals Board

Nov 12, 2020

15269004 - (D) (P.T.A.B. Nov. 12, 2020)

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.
15/269,004 09/19/2016 Matthew Laurence Lewis P-575300-US 4447
7590 11/12/2020
Matthew LEWIS
115 8th Avenue, Apt. 7
Brooklyn, NY 11215
EXAMINER
MIKAILOFF, STEFAN
ART UNIT PAPER NUMBER
2832
MAIL DATE DELIVERY MODE
11/12/2020 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 MATTHEW LAURENCE LEWIS
Appeal 2019-005846
Application 15/269,004
Technology Center 2800

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

HEANEY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the inventor,
Matthew Lewis. Appeal Br. 1.
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Application 15/269,004

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CLAIMED SUBJECT MATTER
The claims are directed to an apparatus for converting ocean wave
motion to energy. Spec. ¶ 2.
Claim 1, reproduced below, is the sole independent claim and is
illustrative of the claimed subject matter:
1. An apparatus for extracting power from wave motion in
seawater over a sea floor, comprising:
a three-dimensional lattice structure comprised of a
plurality of modules and a plurality of connecting members, said
plurality of modules arranged into a plurality of layers, including
an upper layer of modules and a lower layer of modules, said
upper layer of modules being buoyant and said lower layer of
modules being negatively buoyant in said seawater, each module
of said plurality of modules being attached by a connecting
member to at least one module vertically and attached by a
connecting member to at least one module horizontally to form
the lattice structure; and
each connecting member of said plurality of connecting
members being connected to respective modules at respective
connection points on said modu1es, and each said connecting
member being adapted for rotation around said respective
connection points;
a mooring anchor attached to the sea floor;
a tether attached between the anchor and the lattice
structure; and
a motion transducer adapted to convert rotational motion
of said connecting members relative to said modules to electrical
energy.

REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1–18 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 8–11.
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2. Claims 1–18 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Id. at 11–13.
3. Claims 1–18 are rejected under 35 U.S.C. § 112(b) as being
incomplete for omitting essential structural cooperative relationships of
elements, such omission amounting to a gap between the necessary
structural connections. Id. at 13–14.
OPINION
Rejection 1
The Examiner finds that the Specification fails to describe claim 1’s
limitation of “a motion transducer adapted to convert rotational motion of
said connecting members relative to said modules to electrical energy” with
sufficient particularity such that one of ordinary skill in the art would
recognize that Appellant had possession of the claimed invention at the time
of filing. Id. at 8. Specifically, the Examiner finds that paragraph 26 of the
Specification describes two methods to convert the motion of ocean waves
into power without sufficient particularity because, “though the ‘lattice
structure’ [and] ‘connecting members’ . . . may be described in general,”
there “is a lack of adequate description of the combination of elements to
perform the claimed function.” Id. at 8–10. The Examiner finds that “the
disclosure fails to describe the essential connection between the elements
which harness and transfer the ‘wave motion’ and the ‘motion transducer’
which is ‘adapted to convert’ the motion to ‘electrical energy.’” Id. at 10.
The Examiner also finds that “no actual reduction to practice of the specific
‘motion transducer’ type and connection to the ‘lattice structure’ has been
shown” and “the disclosure is one that may be substantially complete, but is
not complete.” Id.
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Appellant contends that paragraph 26 of the Specification provides
sufficient disclosure for the claimed motion transducer. Appeal Br. 4.
Appellant’s argument is persuasive.
The test for sufficiency of a written description is whether the
disclosure “‘clearly allow[s] persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.’” Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). The
disclosure must “reasonably convey[] to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. at 1351. Possession means “possession as shown in the disclosure” and
“requires an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art.” Id.
Paragraph 26 of the Specification states “[t]he apparatus includes a
motion transducer adapted to convert rotational motion of the connecting
members relative to the modules to electrical energy.” This describes claim
1’s motion transducer limitation almost verbatim. As the Examiner notes at
page 9 of the Final Office Action, paragraph 26 also describes two methods
for converting the motion of ocean waves (i.e., via an induction generator or
via hydraulic means). Paragraph 26 further discloses that each rotation
connection point between a module and a connecting member may have its
own generator or gearing to sum the motion of all rotation points for a
module to feed a single generator. Therefore, the disclosure reasonably
conveys to one of ordinary skill in the art that Appellant had possession of
claim 1’s apparatus, including its motion transducer, at the time Appellant
filed the application.
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The reasoning behind the Examiner’s rejection appears to be based
more upon enablement than upon a lack of written description. “[W]ritten
description . . . is not about whether the patentee has proven to the skilled
reader that the invention works, or how to make it work, which is an
enablement issue.” Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180,
1191 (Fed. Cir. 2014) (emphasis added). We note that the Examiner has not
set forth an enablement rejection of the claims.
The Examiner rejects claims 2–18 for the same reasons as claim 1.
Final Act. 11. Accordingly, we reverse the Examiner’s § 112(a) rejection of
claims 1–18 as failing to comply with the written description requirement.
Rejection 2
The Examiner concludes that claim 1 is indefinite for multiple
reasons. First, the Examiner concludes that the limitations “being attached
by a connecting member to at least one module vertically” and “[being]
attached by a connecting member to at least one module horizontally” are
indefinite because it is unclear whether “a connecting member” in each
limitation refers to the previously recited “plurality of connecting members”
and because it is unclear whether “at least one module” refers to the
previously recited “plurality of modules.” Final Act. 11–12.
Appellant argues that “the use of the indefinite article is appropriate in
claim 1, because this refers to any connecting member in the lattice
structure, and not a specified connecting member in the lattice.” Appeal
Br. 4. Appellant’s arguments are not persuasive. It is not clear whether “a
connecting member” in each limitation refers to any connecting member, or
one of the “plurality of connecting members” previously recited in claim 1.
Similarly, the phrase “at least one module” in each limitation is indefinite
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because it is unclear whether it refers to the “plurality of modules”
previously recited in claim 1. Therefore, we sustain the rejection of claim 1
as indefinite on this basis.
Second, the Examiner concludes that the limitations “being attached
by a connecting member to at least one module vertically” and “[being]
attached by a connecting member to at least one module horizontally” are
also indefinite because it is unclear if the second “at least one module” refers
to the prior “at least one module” or if they are separate and distinct groups
of modules. Id. at 12. Appellant’s argument regarding the use of the
indefinite article is also unpersuasive here, because it is unclear whether the
second recited “at least one module” is the same as the first “at least one
module.” Therefore, we sustain the rejection claim 1 as indefinite on this
basis.
Third, the Examiner concludes that the limitation “each said
connecting member being adapted for rotation” is indefinite because there
are multiple “connecting member” limitations and it is unclear to which
member the limitation refers. Id. We do not sustain this rejection because
the limitation recites “each connecting member of said plurality of
connecting members . . . and each said connecting member being adapted for
rotation around said respective connection points.” Thus, not only does
claim 1 recite that each connecting member is adapted for rotation around a
respective connection point but also that each connecting member is one of
the plurality of connecting members. As a result, we do not sustain the
rejection of claim 1 as indefinite on this basis.
Finally, the Examiner concludes that the limitation “a motion
transducer adapted to convert rotational motion of said connecting members
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relative to said modules to electrical energy” is indefinite because claim 1
appears to require a single motion transducer to convert rotational motion
from a plurality of connecting members and a plurality of modules but “it is
unclear how a single ‘transducer’ may be able to perform such a conversion
of a plurality of both ‘connecting members’ and ‘modules.’” Id. We do not
sustain the rejection of claim 1 on this basis, because the rejection fails to set
forth a prima facie case sufficiently explaining why the meaning or scope of
this limitation is unclear. Instead, this rejection appears to be based upon
enablement. We further note that although claim 1 recites “a motion
transducer,” claim 1 uses “comprising” language and, therefore, is not
limited to a single motion transducer.
For the reasons explained above, we affirm the indefiniteness
rejection of claim 1. The Examiner rejects dependent claims 2–18 for the
same reasons as claim 1. Id. We affirm the rejection of claims 2–18 for the
same reasons that we affirm the rejection of claim 1. The Examiner also
rejects claims 7, 8, 12, and 14 as indefinite based upon their added
limitations, which we address below.
The Examiner further rejects claim 7 because it is unclear whether the
recited “a plurality of connection points” refers to the “respective connection
points” previously recited in claim 1. Id. at 13. Similarly, the Examiner
rejects claim 8 because it is unclear whether the recited “four connection
points” refer to the “respective connection points” previously recited in
claim 1. Id. We agree that it is unclear whether claims 7 and 8 refer to the
“respective connection points” set forth in claim 1 and affirm the rejection of
claims 7 and 8.
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The Examiner rejects claim 12, which depends from claim 10 and,
ultimately, from claim 1, because the limitation “the second tether” lacks
antecedent basis. Id. There is no previous recitation of a “second tether” in
claims 1, 10, or 12. Thus, we sustain the rejection of claim 12.
The Examiner also concludes that claim 14’s limitation of “the
connecting members have an adjustable length adapted to adjust a vertical
distance between the upper layer and the lower layer of the lattice in
accordance with wave conditions” is indefinite because “the claim fails to
make clear the manner by which the ‘connecting members’ are ‘adapted to
adjust a vertical distance [. . .] in accordance with wave conditions.’” Id.
This rejection does not set forth a prima facie case that sufficiently explains
why the meaning or scope of the limitation is unclear. Instead, this rejection
also appears to be based upon enablement rather than indefiniteness.
Accordingly, we affirm the Examiner’s rejection of claims 1–18 under
§ 112(b) as indefinite.
Rejection 3
Citing MPEP § 2172.01, the Examiner concludes that claim 1 omits
structural cooperative relationships because “the claim omits the essential
structural cooperative relationship(s) which may allow the ‘connecting
members’ to transfer motion of the ‘modules’ to the ‘motion transducer’ to
allow it to ‘convert rotational motion [. . .] to electrical energy.’” Id. at 13–
14. The Examiner rejects claims 2–18 for the same reasons as claim 1. Id.
MPEP § 2172.01 (9th Ed., Rev. 10.2019, June 2020) states (emphasis
added):
a claim which omits matter disclosed to be essential to the
invention as described in the specification or in other statements
of record may be rejected . . . under 35 U.S.C. 112(b) or pre-AIA
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35 U.S.C. 112, second paragraph, as indefinite (see, e.g., In re
Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976)); or under
35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph,
as failing to claim the subject matter that the inventor . . . regards
as the invention (see, e.g., In re Collier, 397 F.2d 1003, 158
USPQ 266 (CCPA 1968)).
As stated in MPEP § 2172.01, essential matter may be “missing elements,
steps or necessary structural cooperative relationships of elements described
by the applicant(s) as necessary to practice the invention.” Id. (emphasis
added). Here, the Examiner does not set forth a prima facie case under
§ 112(b) because the Examiner does not identify where in Appellant’s
Specification or in the prosecution history Appellant described the omitted
matter as essential to the invention. MPEP § 2172.01.
Accordingly, we reverse the Examiner’s rejection of claims 1–18
under § 112(b) as being incomplete for omitting essential structural
cooperative relationships of elements, such omission amounting to a gap
between the necessary structural connections.
CONCLUSION
The Examiner’s rejection of claims 1–18 is affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 112(a) Written Description 1–18
1–18 112(b) Indefiniteness 1–18
1–18 112(b) Indefiniteness 1–18
Overall
Outcome

1–18

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TIME PERIOD FOR RESPONSE
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) (2018).
AFFIRMED