UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
Frank R. Bonczyk v. United States Patent Office
No. 01-1061
Informal Brief of Appellant
Read the Guide for Pro Se Petitioners and Appellants before completing this form, Attach a copy of the final decision or order of the Board or Commission. Answer the following questions as best you can. Your answers should refer to the decision or order you are appealing where possible. Use extra sheets if needed.
1. Have you ever had another case in this court? ___Yes X NO. If so, state the name and the number of each case.
2. Did the Board or Commission incorrectly decide or fail to take into account any facts? X Yes ___No. If so, what facts? (Refer to paragraph 7 of the Guide.)
Argumentum ad judicium
(a) The reason given by the examiner for rejecting the claims, See Item 2, Decision by Board Page 4, " In the instant case the examiner rejected claims 1. 9. 11. 12 and 14 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because they are directed to a theoretical energy model."
(b) The reason given by the examiner for rejecting the claims, See Item 6 Final Rejection, page 2, "…, the claims are directed to a new way of describing something which already exists in nature. To grant a patent on such a description would allow the patent owner to exclude others from using the naturally occurring structure….Such
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exclusion would constitute the removal of the naturally occurring structure from the public domain.".
The reasons the examiner gives to reject the claims, (a) and (b) above, declare double syllogism. Therefore, PTO's rejection of the claimed invention is without cause.
(c) See Item 2 Decision by Board, page 4, "…In response to appellant's principle brief, the examiner states that he 'was mistaken in understanding this invention as a model of naturally occurring article; however, the invention is still claimed as a conceptual model completely divorced from any physical structure."
The out-of-hand remark, "was mistaken" made by the examiner, attempts to restore its own defeated argument. The examiner's remark likens to a bombardier, who by simply saying, "I 'was mistaken' to have dropped the bomb!" - restores the city.
Notwithstanding the PTO's untenable position, the principle brief would act irrational to argue against the already defeated argument of the PTO. Instead, in light of the claims presented, the brief's focus points out that the criteria required by the PTO to reject the claims, are not in its possession. Evidenced by (a) and (b) statements above.
With respect to this court, the appellant wishes to note in this one place issues, to show the Board erred to affirm of the examiner decision. The Board: Without just cause reject's the claims; displayed obvious uncanny treatment to context of the statements extracted from the principle brief's argument, which overshadowed any effort they may have made to reference the specification in the right light; assigned the nature of the appellant with subtle innuendoes, that carries the intent to taint the right of the claims: proclaims innocence, and if allowed to supplant substantial evidence, in
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effect, deny the appellant's Right to Patent Protection is injustice.
In view of the PTO's inconsistency and obvious confusion toward the claims, see Appendix Item 2 Decision by Board, page 5, "we simply do not understand the nature of the invention." Also see, "MPEP (page 1371), A. (last paragraph) " The applicant is in the best position to explain why an invention is believed useful…." carries more weight.
These issues are presented to the court as faux pas by the Patent and Trademark Office. Should the court find injustice prevails, the appellant begs this court to consider review de novo.
(d) See, Item 2 Decision by Board, page 6, "Independent claim 1 recites a "fabricated energy structure "but it is unclear what structure is intended or what "energy" is referenced. The term, "The Unified PO Realm" is undefined and unidentified."
The specifications clearly show these elements. The PO realm is defined and identified in the Description of Preferred Embodiment. See Appendix, Item 7 Application, Page 7, and Appendix, Item 10 Drawings, page 5 Fig. 3, page 6 Fig. 3a, also Item 10 Drawings, page 7 Fig. 4 shows an expanded view. The interrelated combination of elements of the energy structure is explained by the specifications and briefs in detail, see Appendix Item 5 Appeal Brief, page 2 and 3, lines 1 - 5. Also, Appendix Item 9, Drawing page 5 Fig. 3., illustrate the claim.
Did the Board or Commission apply the wrong law? X Yes If so, what law should be applied?
(a) Ref: citing In re Donaldson, 29 USPQ2d 1845 The court said that a claim directed to a combination of interrelated elements' recites a specific machine, not a disembodied
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concept. A correct interpretation of the mean-plus-function elements in light of the specifications show claims 1,9,11 and 12 recite a statutory apparatus under §101.
(b) See Appendix, Item7 Application (Amended), page 16, Claims 14 and 15 recite structures that corresponds to the means in the specifications.
Ref: Atmel Corporation, 99-1082: "Section §112, 6…All one needs to do in order to obtain the benefit of that claiming device is to recite some structure corresponding to the means in the specification, as the statute states, so that one can readily ascertain what the claim means and comply with the particularity requirements of 2. The requirement of specific structure in § 112, 6 thus does not raise the specter of an unending disclosure of what everyone in the field knows that such a requirement in 112, 1 would entail."
(c) See Appendix Item 7, Application (Amended), page 17, "19. A structure as claimed in any one of the preceding claims, which consist of fixed and or variable Symbols, Alpha /Numeric, Electronic/Biotic, Audio/Visual, however structured for the purpose of interpretation, substitution or reproduction of each or any combination of each description and function of said invention to alter the intent and focus of said invention."
Claim 19 preserves the right of the appellant to define the terms and definitions in order to maintain the integrity of "what the claim means" as expressed in Section §112, 6.
Did the Board or Commission fail to consider important grounds for relief? X Yes If so, what grounds?
(a) The Board failed to consider the following, see Appendix, Item 7 Application (Amended), page 13, last paragraph of
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Description of Preferred Embodiment, "The correlation of the invention with prior science, (e.g., particle characteristics and their given names) succumb to routine mathematical processes."
Ref: In re Donaldson, 29 USPQ2d 1845 The Court stated that mathematical algorithms were not a type of subject matter expressly prohibited by §101; … Ref: Atmel Corporation, 99-1082, 35 U.S.C. § 112, 1, 2, and 6 (1994) "…Paragraph 1 permits resort to material outside of the specifications in order to satisfy the establishment portion of the statute because it makes no sense to encumber the specification of a patent with all the knowledge of the past concerning how to make and use the claimed invention. One skilled in the art knows how to make and use a bolt, a wheel, a gear, a transistor, or known chemical starting material. The specification would be of enormous and unnecessary length if one had to literally reinvent and describe the wheel."
5. Are there other reasons why the Board's or Commission's decision was wrong? X Yes
(a) The Boards statements were not supported by substantial evidence , see Appendix, Item 2 Decision by Board, pages 5 & 6; " 'life structure' or biogenetic structures' or 'computer timing circuits, computer codes, computer algorithms, and or computer programming…' These recitations clearly do not sound like compositions of matter."
(b) The above statement by the Board mirror the concern of the examiner, see Item 4 Examiner's Answer, page 3, "According to the brief, the claims are intended to cover such desperate articles as subatomic particles, a "programmable primary life form, a programmable primary memory system, or a programmable DNA structure, or a programmable biotic computer." It is not clear what these
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things have in common that they could be claimed in a single invention.
Both the Board and examiner's concerns mentioned in (a) and (b) above are disclosed in public documents, articles and publications, see Item 12 Exhibits, page 2, (circled portion,) "Allen Boyle, "Micro-motors powered by DNA {MSNBC Technology , "NATURAL COMPUTERS…" The claims are in keeping, and proven true to events that have unfolded in various fields since the application was submitted, December 26, 1995
(c) See Appendix, Item 5 Appeal Brief, page 5, "Chakrabarty opinion also reveals, MPEP (page1368), " However, the production of articles for use from raw materials prepared by giving to these materials new forms, qualities, properties, or combinations whether by hand, labor or machinery (emphasis added) is a manufacture under section 101."
(d) Ref: citing In re Donaldson, 29 USPQ2d 1845 . The proper test for determining whether a claim is unpatentable, the court said, is " whether the claimed subject matter as a whole is a disembodied mathematical concept…which in essence represents nothing more than a 'law of nature.', 'natural phenomenon,' or 'abstract idea.'" The court said that a claim directed to a combination of interrelated elements' recites a specific machine, not a disembodied concept.
The claims structured in sequential interrelated detail throughout the specifications correspond to act all inclusive to a means-(or step) plus-function limitation as required by 35 U.S.C. §112 2.. See, Item 10 Drawings, page 3, Fig.3b. The claimed structure, see Appendix, Item 9 Drawings page 5 Fig.3, shows assembly 10 (with incident timing T1 - T0 separating its opposing natures, indicated as +, -) subject to variables shown in, Drawing page 2 Fig. 1a, sequence of particle assembly, (7) of (1) through (10), (these variables are predisposed to the effect of structures
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within its immediate natural environment, see Item 7 Application, page 15, Claims 11. and 12. , and at critical event/time intervals (neutral) are subject to hand/mind and or machine influence) that mutate the claimed structure. The new identity of the structure is preserved in a trivial or non-trivial bundle. see Item 10 Drawings page 5, Fig 3. , (1) & (2), the structures quality control. The industry seeks this quality control feature, see Appendix Item 10 Exhibits, page 3, "…Thus, ways must be found to map out bad circuits and at the same time take advantage of billions of circuits that function correctly." Depending on the structures bind, the claimed structure will then separate, duplicate and precisely reproduce its mutated structure. In the various field of endeavor flawed structures that typically bind non-trivial are commonly referred to as, in the field of; medicine 'malignant growths' (tumors, etc,); biogenetics, DNA, etc., 'markers'; Physics, 'critical mass'. The function of elements as structured in the claimed 'Energy Fabrication' correlate to the mechanism of seeds, (see Item 10 Drawings, page 7, Fig. 4, find 18 inside PO realm 33. Page 13, find 577. Page 8 shows ripening (sic) of PO realm 33.) the most basic stages of genetic structures, and is, as a complete functioning structure readily converted into algorithms for further use in a conventional computer.
A metaphor of an event: All intelligence placed in a single element precisely timed, creates another taken" by the Hubble telescope,' see Item 3 Reply Brief, page 4, "See FIG.3, Of Drawings, NGC 686 corresponds to the inventor's structure at full, to oppose itself, any attempt to rejoin fails, instead an innocence is born, we call, "me".
(e) The appellant, also placed the structure on a galactic scale in the specifications. This was done to show that the interrelated principles of the claims followed true even in large scale assemblies of energy - the energy mechanism of stars. See, Item 2 Decision by Board, page 5 , " The reply
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brief makes statements about the Hubble telescope and of 'the resultant principles of energy utilized in the invention on a Galactic scale "being" indicative of the invention's connection to physical structures" [reply brief-page 4]
In regard to Boards comment (g) above: Rather, the reply brief makes statements "about pictures *L, *R development…NGC 7009 corresponds to the inventor's structure as it divides." Out of billions of stars the appellant chose Two (2), NGC 686 & NGC 7009 as examples to show the principles used in the invention hold true on a large scale energy structures. The mechanics of optics has it so, that, "One's telescope is Another's microscope,…1, etc,…0, etc,…1, etc,… à Lim:"
Without reference to the specification to interpret the means-plus function elements, the Board found that the claims did not recite any physical structure. Doing so without providing reasonable explanation. Instead, appellant suffers comments couched with, see Appendix Item 2, Decision by Board, page 6, "clearly do not sound like", "invention appears to constitute", "sounds like some kind of" (continued) on page 7; "appears to take the invention out…", "invention appears to be conceptual model…", "… are so poor, in our opinion,…" "…, serious questions arise…"
See Item 2 Decision by Board, page 7, "serious questions arise as to the adequacy of the instant disclosure to enable the skilled artisan to make and use the claimed invention…"
With respect to this court, to state there is not one skilled artisan who could make and use the claimed invention simply establishes the high bar world intelligence maintains, no more. The claimed invention, outside of presenting the rosetta-stone, has presented enough sequential detail (with
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examples, e.g., The claimed inventions coupling of photon regions. see, Item 10 Drawings, page, Fig. 9. And Item 7 Application, page 11, paragraph. FIG.9) to not only teach the invention, but also, to those skilled in the field who, with diligent study of the claims be able to use the invention in ways, to date, not even considered or if considered, thought impossible to achieve. The appellant can not afford the high cost to accept the protection such innocence provides - the cost of injustice.
What action do you want this court to take in this case?
The appellant would beg the court to grant the right of patent protection for the claimed invention - REVERSE and REMAND.
The appellant request, if within the court's jurisdiction, to advise/find a proper statutory category for this invention.
Do you want to argue before the court in person? __Yes X No. What are the reasons why argument will aid the court? (Refer to paragraph 15 of the Guide.)
The appellant's words carry no weight in matters placed before this court.
Do you intend to represent yourself? X yes ___ No If you have not filed a notice of appearance, indicate your full name, address, and telephone number.
I certify that a copy of this brief and any attachments was sent to Office of the Solicitor, in care of Ms. Kristen L. Yohannan, the attorney for appellee, at the following address: Office of the Solicitor, P.O. Box
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15667, Arlington, Virginia 22215. (Address is found on the Notice of Appearance served on you by the attorney for the appellee. If you do not send a copy of this brief to the appellee, the court will not file the brief.)
November 24, 2000
Date
Appellant's signature
In addition to mailing a copy to the attorney for the appellee, mail an original and three copies of this informal brief and attachments to:
Clerk, United States Court of Appeals for the Federal Circuit
717 Madison Place, NW
Washington, DC 20439
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