DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed 2/2/2025 does not place the application in condition for allowance.
The previous rejections under 35 U.S.C. 112(b) are withdrawn due to Applicant’s amendment.
The previous art rejections are withdrawn due to Applicant’s amendment.
New analysis follows.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 8, 15, 27, 29, 30, 32, 40, and 48-50 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks credible utility.
The claims recite a power system comprising reactants, a source of electrical power to deliver current electrical energy to initiate a reaction that produces light. The claimed reaction initiated that forms light is allegedly due to a reaction from “hydrinos” comprised in the reactants.
The light forming reaction is described in the instant specification:
From p. 179, describing the observed light: “The 5800 K blackbody temperature of the Sun and that of the ignition plasma are about the same because the heating mechanism is the same in both cases, the catalysis of H to hydrino. The temperature of high explosives is also as high as 5500 K as expected since the source of the high temperature is the formation of hydrinos.”.
The claims are therefore drawn to a power system which, according to Applicant, requires light emission or reaction by hydrinos. The claimed invention is inoperative and cannot produce light through formation of hydrinos because hydrinos do not and cannot exist based on the current state of accepted science. The examiner refers to previous office actions for more detail on the current state of accepted science.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 8, 15, 27, 29, 30, 32, 40, and 48-50 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
That which does not work cannot be described.
Claims 1, 8, 15, 27, 29, 30, 32, 40, and 48-50 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The specification does not enable one of ordinary skill in the art to make or use a power system that requires a source of electrical power to initiate a light producing reaction from H2O,a metal, and its metal oxide, in that it would require undue experimentation to do so.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” MPEP §2164.01. In examining the claims in light of the supporting disclosure, the Federal Circuit has provided a non-exclusive list of factors to consider in determining whether a disclosure is enabling. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
These factors include, but are not limited to:
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(A) The breadth of the claims;
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(B) The nature of the invention;
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(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The following is a consideration of all factors in light of the Applicant’s claims and disclosure.
(A), (B): the claims recite a power system that initiates a light producing reaction from H-2O, metal and its metal oxide by delivering current electrical energy to the reactants. As claimed, a skilled artisan would understand a power system to be capable of producing an energy output. Further, when read in light of the instant specification, a skilled artisan would understand that the light derives from production of hydrinos.
(C), (D), (E): Production of energy by reaction of metal, vapor, and electrical energy is known (see US PGPub 2011/0305961). A skilled artisan would understand from at least that reference that light may be a result of such a reaction. Outside of Applicant’s own work product, only US Patent 9,994,450 discusses hydrinos at the time of filing. Applicant’s specification recites that hydrinos are a new form of matter: hydrogen atoms and molecules having electrons of lower energy than the conventional “ground state”, where each energy level corresponds to a fractional principal quantum number. Accepted quantum theory forbids the existence of hydrinos.
(F), (G): The light forming reaction is described in the instant specification:
From p. 179, describing the observed light: “The 5800 K blackbody temperature of the Sun and that of the ignition plasma are about the same because the heating mechanism is the same in both cases, the catalysis of H to hydrino. The temperature of high explosives is also as high as 5500 K as expected since the source of the high temperature is the formation of hydrinos.”.
The claims are therefore drawn to a power system which, according to Applicant, requires light emission or reaction by hydrinos. The claimed invention is inoperative and cannot produce light through formation of hydrinos because hydrinos do not and cannot exist based on the current state of accepted science. The examiner refers to previous office actions for more detail on the current state of accepted science.
(H): To realize the claimed invention, a person having ordinary skill in the art would have to effect a reaction that produces hydrinos. Hydrinos cannot and do not exist, therefore one skilled in the art could not make and/or use the claimed invention without undue experimentation.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 8, 15, 17, 27, 29, 30, 32, 40, and 48-50 have been considered but are not found persuasive.
The claimed invention recites “a source of electrical power connected to the electrodes and to deliver current electrical energy to the reactant mixture to initiate a reaction which converts the metal to an oxide reaction product and produces light output from the reaction mixture”. The claim recites structure (source of electrical power connected to the electrodes, and the preceding reaction mixture, etc.) and functional limitations. Effectively, the reaction which converts the metal to an oxide reaction product and produces light output from the reaction mixture is being claimed; the claim is not infringed if the structure cannot initiate the claimed reaction. If a skilled artisan attempts to make and use the claimed invention, and cannot initiate the claimed reaction, that person will necessarily investigate the disclosure to attempt to reproduce the invention. The specification gives no explanation of the reaction except one that requires the production of hydrinos. Since hydrinos cannot be realized, the invention cannot be realized, and therefore lacks utility and is not enabled.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan S Cannon whose telephone number is (571)270-7186. The examiner can normally be reached M-F, 8:30am-5:30pm PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Barton can be reached on (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Ryan S. Cannon
Primary Examiner
Art Unit 1726
/RYAN S CANNON/ Primary Examiner, Art Unit 1726