Newman v. Quigg
| Decision Date | 05 July 1989 |
| Docket Number | No. 88-1312,88-1312 |
| Parties | Joseph W. NEWMAN, Plaintiff-Appellant, v. Donald J. QUIGG, Commissioner of Patents and Trademarks, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Joseph W. Newman, Lucedale, Miss., argued pro se.
Fred E. McKelvey, Office of the Sol., Arlington, Va., argued for defendant-appellee.
Before MARKEY, Chief Judge, NEWMAN and MAYER, Circuit Judges.
Joseph W. Newman, pro se, appeals the judgment of the United States District Court for the District of Columbia, holding unpatentable the invention claimed in Mr. Newman's patent application Serial No. 179,474 entitled "Energy Generation System Having Higher Energy Output Than Input". Newman v. Quigg, 681 F.Supp. 16, 5 USPQ2d 1880 (D.D.C.1988). We affirm.
Mr. Newman's application for patent is described by the district court, and we assume general familiarity with that opinion. Claims 38 and 43 are representative of the claims for which Mr. Newman seeks a patent grant:
38. A device which increases the availability of usable electrical energy or usable motion, or both, from a given mass or masses by a device causing a controlled release of, or reaction to, the gyroscopic type energy particles making up or coming from the atoms of the mass or masses, which in turn, by any properly designed system, causes an energy output greater than the energy input.
43. The method of producing usable energy, comprising the following steps:
a. inputting energy into a device from an external source;
b. having electrical current flow within said device; and
c. utilizing the internal electromagnetic energy of at least some of the matter in the device to add to the energy being inputed [sic] into the device from the external source to produce useful energy for use outside of the device having an amount greater than the energy being inputed to the device.
The Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences affirmed the examiner's rejection of all the claims, i.e., claims 15 through 43, for failure to comply with 35 U.S.C. Sec. 112, first paragraph. The Board held that there was insufficient disclosure to support the claimed result of producing more usable energy output than input. The Board stated that the claimed device was a "perpetual motion machine", and that perpetual motion is impossible for it violates either the first or second law of thermodynamics. During oral argument to the Board Mr. Newman presented a model of his device and demonstrated its operation. The Board does not refer to this demonstration.
On appeal to the district court, 35 U.S.C. Sec. 145, the court referred the matter to a special master. The evidence before the master included several reports of tests conducted at universities and elsewhere, showing the apparent output of more electric energy than was input by the battery system. A witness, Dr. Hastings, concluded in a pretrial declaration that The evidence also included an affidavit of Mr. J. Rabinow of the National Bureau of Standards, stating his opinion that Mr. Newman's asserted result was "impossible".
The master reported that the results shown for the Newman device appear to conflict with the laws of thermodynamics, and expressed skepticism concerning Mr. Newman's theory of gyroscopic energy and the conversion of mass to energy. The master stated that "[t]here is no evidence corroborating Newman's scientific theory". However, the master also found that the "[e]vidence before the [PTO] and [the district court] is overwhelming that Newman has built and tested a prototype of his invention in which the output energy exceeds the external input energy; there is no contradictory factual evidence". The master concluded that
Even though the operation of Plaintiff's system seems contrary to recognized scientific principles, Plaintiff has demonstrated the operation of his system by very clear evidence and is therefore entitled to a patent if he otherwise satisfies the requirements of the Patent Statute (35 USC). In re Chilowsky, 229 F.2d 457, 43 C.C.P.A. 775 (1956).
Before the district court, the Commissioner strongly objected to the master's report. The district court ordered, as recommended by the master and requested by the Commissioner, that the application be referred back to the PTO for review by a different patent examiner. The court also ordered, as recommended by the master, that the claims thus reviewed be those in a Rule 116 amendment that had previously been refused entry. This amendment made changes in the claims that had been on appeal to the Board, amending all the claims except claims 38 and 43.
The second examiner entered the Rule 116 amendment and rejected all the claims for failure to comply with 35 U.S.C. Secs. 101, 102, 103 and 112. The examiner ordered Mr. Newman, pursuant to 35 U.S.C. Sec. 114, to submit working models of three embodiments of his invention, based on three drawings in the specification, to the National Bureau of Standards ("NBS") for testing, under penalty of abandonment. Mr. Newman sought relief from this requirement and its penalty, which reached this court by mandamus petition. Mr. Newman pointed out that he had demonstrated a working model to the Board, had invited observation by the PTO of additional demonstrations, and that this new demand for working models was burdensome and unnecessary.
This court held the requested relief to be unnecessary:
Newman has pending in the district court a Sec. 145 action from which an appeal to this court will lie, whether the PTO does or does not treat his application as abandoned. Thus, the PTO's threat [of abandonment] does not require issuance of the writ to aid or preserve our prospective appellate jurisdiction, (or the jurisdiction of the district court). In re Makari, 708 F.2d 709, 218 USPQ 193 (Fed.Cir.1983).
In re Newman, 763 F.2d 407, 410, 226 USPQ 97, 99 (Fed.Cir.1985). This court thus held that a PTO holding of abandonment under these circumstances could not deprive the courts of jurisdiction. In all events, Mr. Newman did not comply with the examiner's order within the time period set by the examiner, and the examiner declared the patent application abandoned.
The district court had followed, through periodic status conferences, these proceedings before the second examiner. When this phase was ended by the examiner's declaration of abandonment, at the district court's suggestion the Commissioner ordered Mr. Newman under Fed.R.Civ.P. 34 to produce a model of his invention for testing by NBS. The Commissioner's order, as modified by the district court and by this court on petition for writ of mandamus, In re Newman, 782 F.2d 971, 228 USPQ 450 (Fed.Cir.1986), reh'g denied mem. (Feb. 12, 1986), in essence required that a normal inter partes test be conducted at NBS, and that the tests be completed and the report issued within thirty days after the device was produced.
Mr. Newman produced a model of his invention within the fourteen days set by the court. After almost two months the district court, at a status conference, gave Mr. Newman's counsel NBS's proposed protocol for testing the device, ordered the NBS to commence testing, and granted an extension as requested by the Commissioner to allow NBS to complete the testing.
NBS received no response on Mr. Newman's behalf to the proposed test protocol. The record states that there were two observations of tests on behalf of the Commissioner, and none on behalf of Mr. Newman. The NBS report, issued five months after delivery of the device, concluded that the device did not produce more energy output than input, and that it showed efficiency measured at between 27 and 77 percent. At the subsequent trial the district court held the claimed invention unpatentable for noncompliance with 35 U.S.C. Secs. 101 and 112.
On this appeal Mr. Newman asserts that the district court clearly erred in rejecting the findings of the special master, and that reversal of that error would moot all subsequent proceedings. He also argues that the NBS did not conduct a proper or fair inter partes test, and that patentability is supported by the heavy weight of the evidence.
The Commissioner asserts that the judgment of the district court should be vacated for lack of jurisdiction, on the ground that the patent application became abandoned when, during the referral to the PTO by the district court, Mr. Newman did not produce three working models as the second examiner ordered. The Commissioner argues that the district court lost jurisdiction over Newman's application when the application was held abandoned by the examiner.
We settled this issue in 1985 in In re Newman, 763 F.2d at 410, 226 USPQ at 99, wherein we held, as quoted supra, that "the PTO's threat [of abandonment] does not require issuance of the writ to aid or preserve our prospective appellate jurisdiction, (or the jurisdiction of the district court)." That holding was and is the law of the case. The examiner's order of abandonment could not unilaterally extinguish the court's jurisdiction over the pending Sec. 145 action, and the district court correctly declined to terminate its proceeding.
The Commissioner argues, alternatively, that even if the district court had that jurisdiction it extended only to claims 38 and 43, and judgment should be vacated as to all the other claims, on the theory that all the other claims were not properly before the court.
Claims 38 and 43 were the only claims that were not amended in the Rule 116 amendment that was ordered by the district court to be the basis of examination by the second examiner. The second examiner having rejected these claims and held them abandoned, the Commissioner argues...
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