DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1–6, 8, 10–11, and 22 are under examination.
Response to Amendment
The amendments involve minor re-wording of the claims and do not overcome the pending rejections.
Response to Arguments and Affidavit
Applicant's arguments, see Remarks dated 5/25/2026, have been fully considered, but they are not persuasive for the following reasons: most of Applicant’s arguments appear to be substantially identical to those arguments previously of record, to which Examiner has already submitted detailed responses (see the Final Rejection dated 11/24/2025). Examiner does not find it useful to copy and paste the arguments and their responses herein.
Regarding the 101 rejections for lack of utility, the asserted utility is based on the disclosure, not the claims. The asserted utility is to a fusion reactor that generates useful amounts of energy for practical applications, e.g., “direct electric conversion,” Specification, page 32, line 31, at low temperatures: as explained in the Specification at pages 22–23, a low-energy hydrogen beam incident a lithium target causes exothermic nuclear fusion. Applicant’s invention is therefore directed to a cold fusion device, an inoperable invention under 35 USC § 1011. Accordingly, the 101 rejections are maintained.
Regarding the 112(a) rejections, a deficiency under 35 U.S.C. 101 also creates a deficiency under 35 U.S.C. 112, first paragraph. See In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). Citing In re Brana, the Federal Circuit noted,
“Obviously, if a claimed invention does not have utility, the specification cannot enable one to use it.”
Accordingly, the 112(a) rejections are maintained.
Applicant offers newly cited NPL documents in the file (5/25/2026) and discusses them in the attached Affidavit. Examiner acknowledges and appreciates the submissions. After review, Examiner has determined that none of the newly submitted documents in the file 5/25/2026 provides third-party, adequate support for Applicant’s particular alleged mechanism for cold fusion that involves a low-energy hydrogen beam on a lithium target causing exothermic nuclear fusion, which leads to TeraHz-magnitude phonon release, which then leads to MeV-energy-producing radioactive decay of said lithium target. Initially, the Czerski paper and the Karahadian paper were published at arXiv.org, whose website2 states: “arXiv is a free distribution service and an open-access archive … Materials on this site are not peer-reviewed by arXiv.” Among Examiner’s evidence that Applicant’s invention is not accepted by mainstream science is the lack of published papers in legitimate scientific journals; unfortunately, the submission of these papers, only able to be published in “alternative” journals, is further evidence to this fact. The DARPA paper was not published in a journal at all, and appears to be a government agency solicitation for funding for room temperature fusion (see top of page 3).
The Dubey paper has inadequate overlap with the claimed invention. It does not mention phonons or phonon modes, which form the fundamental mechanism of Applicant’s invention. Dubey is directed towards DD fusion; Applicant’s invention is not. Dubey is concerned with a new potential channel for DD fusion at low energies that “might have major implications” and “could also enable research on metal hydride fusion” [emphases added]. The author Dubey subsequently cited this paper in a more recent paper (the Czerski paper, addressed below) that states “A direct observation of the deuteron-deuteron (DD) fusion reaction at thermal meV energies, although theoretically possible, is not succeeded up to now.” This later paper was published in 2024, which appears to support Examiner’s rejection under 112(a) that Applicant did not have possession of the claimed invention at the time of filing (2017). Thus, Dubey fails as support for the invention because it has insufficient overlap with the claimed invention and because it is prophetic in nature, clearly not having yet been reduced to any practical use at least at the time of Applicant’s invention.
The Czerski paper concludes (page 9) that its own findings are “very convincing” despite the admission that “The uncertainty in this estimate is relatively large and amounts to one to two orders of magnitude.” These statements, when viewed in perspective of the rest of the paper, indicate that the possibly hopeful findings are, at best, a starting point for future research. A forward search of the Czerski paper found zero papers confirming the speculations of the Czerski paper, further indicating a lack of mainstream science acceptance.
The Karahadian paper states that their own observations are “surprising” (see Discussion), and their conclusion (see Conclusion) admits that the observations simply pave the way for future research: “This work establishes a new experimental regime … [the fusion observed] defies the expected … The fusion enhancements observed here … provid[e] a foundation for systematic exploration … Future experiments can help … More broadly, this work opens a path …”. Moreover, like the Czerski paper, a forward search of the Karahadian paper found zero papers confirming the speculations of the Czerski paper, further indicating a lack of mainstream science acceptance.
The DARPA paper has inadequate overlap with the claimed invention. It does not mention phonons or phonon modes, which form the fundamental mechanism of Applicant’s invention. DARPA is a solicitation for funding for cold fusion (top of page 3). Other than being generally cold fusion, Examiner was not able to find anything pertinent to Applicant’s invention in DARPA.
Per the above, Examiner reminds Applicant that the Patent Office is not the proper place to make scientific announcements, e.g., an inventor has performed an experiment in which some anomalous, not well-understood effect was observed. The Patent Office cannot test inventors’ scientific discoveries. Only the scientific community can do that. The Patent Office would take the scientific community’s work on the topic as a responsible evaluation. But at the Patent Office, the applied standard is what the PHOSITA (person having ordinary skill in the art) would understand to be operable. And, for the reasons noted in great detail below, the PHOSITA would have cause to doubt the operability of the disclosed cold fusion device.
Objection to the Specification
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 Specification is objected to under 35 U.S.C. 112(a) as failing to provide an adequate written description of the invention and further for failing to provide an enabling disclosure.
As stated in MPEP § 2164.03, the amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. For the below reasons, one of ordinary skill in the art would have significant cause to doubt the operability of the alleged device.
The invention that one skilled in the art must be enabled to make and use is that defined by the claims of the particular application (in this case, 1–6, 8, 10, 11, and 22). A patent claim is invalid if it is not supported by an enabling disclosure.
There is no reputable evidence of record to support the claim that the present invention involves cold nuclear fusion. Nor does the Specification provide acceptable evidence that the invention is capable of operating as indicated or capable of providing a useful output.
The Specification does not enable the skilled artisan to produce useful amounts of energy (Specification, page 32, lines 29–31) from nuclear fusion without the currently observed downside of undesirable radiation (Specification, page 10, lines 24–27).
Applicant discloses “failure of present-day nuclear structure models” and “incompleteness of present-day knowledge”:
“Despite their significance, many aspects of atomic nuclei remain insufficiently understood. This includes the detailed structure of nuclei as well as the range of interactions between nuclei and their environment. The incompleteness of present-day knowledge on atomic nuclei is reflected in the failure of present-day nuclear structure models to predict with high accuracy empirically known radiative decay rates across a wide range of nuclear species,” Specification, page 2, lines 13–21.
In the field and background (Specification, pages 2–4), Applicant details how all previous attempts at achieving said nuclear fusion reactions have failed:
“This approach bears a number of constraints: producing photons at sufficient energy levels to excite atomic nuclei tends to require the use of large particle accelerators with associated cost and low efficiency precluding the scalability of many nuclear processes and applications of interest. Similarly, the production of neutrons at appropriate energy levels is often elaborate and inefficient. Additionally, high energy photons and neutrons can be difficult to shield and can thus represent hazards to humans as well as lead to unwanted irradiation of surroundings,” page 2, line 31 – page 3, line 3.
Despite the failure of all others hitherto, Applicant asserts the utility of the claimed device to be a low-energy nuclear fusion system:
“The ion beam has energy in the range of 100 eV to 2000 eV… the first nuclear reaction comprises fusion of the H-2 and H-1 nuclei resulting in the release of 5.5 MeV of nuclear binding energy,” Specification page 3, lines 24-33.
“Whereas the incoming energetic particles (the hydrogen ions, such as nucleus 604) have kinetic energies in the keV and sub-keV range, the resulting energetic particles (such as nuclei 609) have energies in the MeV range (due to the release of nuclear binding energy in the process),” Specification page 15, line 34 – page 16, line 3.
“In the case of the H-2 + H-2 [Wingdings font/0xE0] He-4 fusion reaction, this energy quantum amounts to approximately 24 MeV,” Specification page 16, lines 7-8.
“As the ion source 504 is operated and bombards the sample 508 with hydrogen and deuterium nuclei, some of those nuclei get implanted in the metal foil. As the result of the implantation and subsequent bombardment with energetic ions, some of the incoming H-2 and H-1 projectiles fuse with some of the H-2 and H-1 ions implanted in the metal foil lattice in accordance with respective low-energy fusion reaction cross sections. Additionally, the ion beam bombardment generates high-frequency phonons in the lattice of the metal foil 508 -- including phonons in the THz regime…,” page 22, lines 23–29.
Therefore, the Specification purports to disclose a nuclear fusion device that generates useful amounts of energy for practical applications, e.g., “direct electric conversion,” Specification, page 32, line 31.
Overcoming the Coulomb barrier to achieve critical ignition for nuclear fusion is only known to occur at extremely high kinetic energies, i.e., extremely high temperatures, such as those present on the sun. Georgia State University3 explains:
“The temperatures required to overcome the coulomb barrier for fusion to occur are so high as to require extraordinary means for their achievement. Such thermally initiated reactions are commonly called thermonuclear fusion. With particle energies in the range of 1-10keV, the temperatures are in the range of 107-108 K.”
The system for producing nuclear fusion reactions claimed by Applicant is not capable of producing or sustaining such reactions. The device provides no mechanism for achieving and maintaining the temperatures of hundreds of millions of degrees Kelvin known to be required to achieve nuclear fusion ignition.
Instead, Applicant takes a different track, and the present invention is directed to cold fusion, also known as low energy nuclear reactions (LENR). The Specification describes “low-energy fusion reaction cross sections” on page 22, lines 27-28, when describing the reaction in claim 1 recited as “wherein the ion beam comprises energy in the range of 100eV to 2000eV … to release a first energy.” This “first” reaction is a low-energy nuclear reaction, formerly known as cold fusion. Specifically, the particular alleged mechanism for cold fusion (see Specification at pages 22–23) requires a low-energy hydrogen beam on a lithium target causing exothermic nuclear fusion, which leads to THz-magnitude phonon release, which then leads to MeV-energy-producing radioactive decay of said lithium target.
The claimed beam energies of 100eV to 2000eV fail to meet the ion beam energies required to achieve nuclear fusion as necessitated by the accepted standards within the industry, and as discussed in the Journal of Physics of Plasmas article from Honrubia and Murakami4 and the Journal of Instruments and Methods article from Maglich5:
“The beam temperatures are Tp = 7 MeV and TC = 200 MeV,” Honrubia and Murakami pg. 6 (and see Fig. 4)
“For low temperatures, ions do not penetrate enough in the target to deposit a significant fraction of their energy,” Honrubia and Murakami pg. 8
“the optimal ion temperatures are Tp = 6 MeV and TC = 150 MeV … Note also that even for the optimal ion temperatures, the ignition energies are, roughly, 30% higher for the imploded target due to the energy deposition,” Honrubia and Murakami pg. 8
“assuming a laser-to-ion conversion efficiency of 15% similar to that obtained recently in proton acceleration experiments and close to the 12% found by Snavely et al., 15 the laser beam energy requirements are around 100 kJ,” Honrubia and Murakami pg. 8
“The fuel is a 2 MeV deuteron beam which is injected, … the d-d reaction breeds a 3He-d self-colliding mixture ("migma") which is the main source of fusion power,” Maglich p. 213
Examiner cannot find, and Applicant has not supplied, any reputable third-party and peer-reviewed papers published in which the Applicant’s theory for producing THz-level phonons via a low-energy nuclear reaction initiated with low energy ion beams, on the order of magnitude in the eV-keV range, is substantiated. Accordingly, a skilled artisan would doubt that the present invention possesses a credible utility based on the prevailing scientific community view of LENR (low-energy nuclear reactions):
A 2004 review conducted by the Department of Energy6 found "the occurrence of low energy nuclear reactions is not conclusively demonstrated by the evidence presented" (p. 4), echoing the conclusions of a similar study conducted in 1989.
Berlinguette7 summarizes this area of research, noting "light-ion fusion does not violate the conservation of energy, so one cannot completely reject the possibility (however remote) that the clever use of chemistry and materials science could access such phenomena... Isolated groups have continued its pursuit, but have yet to produce a credible 'reference experiment' that provides unambiguous evidence of anomalous heat or nuclear reaction products that can be independently verified and advanced," (p. 45).
The original earthbound fusion reactions were created by a device at the Cavendish Laboratory at Cambridge University8. In 1934, Mark Oliphant, Paul Harteck and Ernest Rutherford used a new type of power supply to power a device not unlike an electron gun to shoot deuterium nuclei into a metal foil infused with deuterium, lithium or other light elements. This apparatus allowed them to study the nuclear cross section of the various reactions. From their work it was concluded that the energy levels needed to overcome the coulomb barrier is about 100 keV for D-T fuel.
Applicant’s disclosure lacks adequate teachings to enable the skilled artisan to build a device that can produce sequence of events in which an incoming beam of low energy can create the useful amounts of energy required for practical applications (e.g., “direct energy conversion,” Specification, page 32, line 31).
Undue Experimentation
It is the Examiner’s position that an undue amount of experimentation would be required to produce an operative embodiment of Applicant’s invention. To determine whether a given claim is supported in sufficient detail (by combining the information provided in the disclosure with information known in the art) such that any person skilled in the art could make and use the invention as of the filing date of the application without undue experimentation, at least the following factors should be included:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
This standard is applied in accordance with the U.S. Federal Court of Appeals decision In re Wands, 858 F.2d at 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). See also United States v. Telectronics Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied, 490 U.S. 1046 (1989).
Reviewing the aforementioned Wands factors, Examiner summarizes the above-elaborated explanations as to why Applicant’s invention fails to satisfy the enablement requirement:
(A) The breadth of the claims: Applicant’s claim to release energy from a low-energy ion beam “directed to bombard a surface of the sample…wherein subsequent bombardment of the sample with the ion beam causes already implanted atomic nuclei of the first group to release a first energy” (claim 1) is extremely broad, followed by an unlikely result (“the first energy comprises 5.5 MeV” claim 1) as well as the fact that this process necessarily abandons modern nuclear physics, such that the outcomes of the recited method cannot be reasonably predicted and measured.
See MPEP § 2164.08.
(B) The nature of the invention: The nature of the invention, i.e., the subject matter to which the claimed invention pertains, revolves around the viability of low-energy nuclear fusion as a substantial source of practically useful energy; as currently disclosed by Applicant, such viability involves a complete departure from the accepted and well-tested theories that comprise known nuclear and plasma physics, chemistry, and electromagnetism. As such, the subject matter to which the invention pertains lies outside the realm of working science.
See MPEP § 2164.05(a).
(C) The state of the prior art: The effects claimed by Applicant have not been verified by the existing body of scientific work and are, in fact, incompatible with it.
See MPEP § 2164.05(a).
(D) The level of one of ordinary skill: The level of ordinary skill in the art cannot be ascertained because the art encompassing low-temperature nuclear fusion research lies within the realm of fringe science and subsequently does not possess a recognizable standard level of associated skill.
See MPEP § 2164.05(b).
(E) The level of predictability in the art: Low-temperature nuclear fusion experiments are predictably unable to produce expected, reproducible, or meaningful empirical data.
See MPEP § 2164.03.
(F) The amount of direction provided by the inventor: Applicant's underlying theory is not supported by a scientific consensus, and no third party experimental results is provided for the record. Applicant’s disclosed sequence of events relies upon the primary reaction which comprises fusion and a secondary reaction which comprises decay (which Applicant also calls “asymmetric fission”) per the Specification at pages 22–23. Numerous theories of nuclear excitation transfer are provided. However, the necessary specifics for inducing the fusion reaction and its subsequent THz-level phonons is lacking, implying that the skilled artisan would need to figure out the specifics on their own. Instead, the Specification simply states that “In regions of the metal foil sample 508 where the phonon-nuclear coupling strength is sufficiently high, the binding energy released from the fusion reaction transfers…,” Specification at page 23, lines 1–3.
See MPEP § 2164.03.
(G) The existence of working examples: Examples are defined as and explained by high-level setups and that do not possess the level of detail to be reliably reproduced.
See MPEP § 2164.02.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The quantity of experimentation needed is infinite, as the practical guidance provided is insufficient to enable one to build or operate a working prototype of the invention, and the provided theoretical guidance is insufficient to enable one to understand the underlying sequence of phenomena required to attempt such an endeavor. See MPEP § 2164.06.
Working Example
It is noted that the specification need not contain an example if the invention is otherwise disclosed in such a manner that one skilled in the art would be able to practice it without an undue amount of experimentation. See In re Borkowski, 422 F.2d 904, 908, 164 USPQ 642, 645 (CCPA 1970). In this case, because Applicant has not disclosed the invention in such a manner that a skilled artisan would be able to practice it without undue experimentation (as evidenced by Examiner in the preceding analysis), Applicant may therefore opt to provide a sufficient working example of an embodiment of the invention. See MPEP § 2164.02 for more on the working example requirement.
Applicant’s disclosure, however, does not contain the requisite example. There is no adequate description or enabling disclosure of the parameters of a specific operative or experimental embodiment of the invention. Applicant’s disclosure is largely speculative, e.g., “A summary of the general system design process leading to the desired system outcomes is laid out…” Specification, page 35, lines 18-19. Additionally, the necessary specifics for inducing the fusion reaction and its subsequent THz-level phonons is lacking, implying that the skilled artisan would need to figure out the specifics on their own. Instead, the Specification simply states that “In regions of the metal foil sample 508 where the phonon-nuclear coupling strength is sufficiently high, the binding energy released from the fusion reaction transfers…,” Specification at page 23, lines 1–3. It is unclear how to make the “phonon-nuclear coupling strength” to become “sufficiently high.”
It is thus considered that the Examiner has set forth a reasonable and sufficient basis for challenging the adequacy of the disclosure. The statute requires the application itself to inform, not to direct others to find out for themselves. In re Gardner et al., 427 F.2d 786 (CCPA 1970), 166 U.S.P.Q. 138; In re Scarbrough, 500 F.2d 560, 565, 182 USPQ 298, 301 (CCPA 1974). Note that the disclosure must enable a person skilled in the art to practice the invention without having to design structure not shown to be readily available in the art. In re Hirsch, 295 F.2d 251 (CCPA 1961).
Accordingly, the specification fails to teach a person having ordinary skill in the art how to make and use the invention, and the specification is therefore inadequate.
The disclosed invention is not, as required by 35 U.S.C. 101, an operable invention of any practical use to the public. To be patentable, the claimed invention as a whole must be useful and accomplish a practical application. That is, it must produce a “useful, concrete and tangible result.” See In re Alappat, 33 F.3d 1526, 1544, 31 USPQ2d 1557 (Fed. Cir. 1994) and also State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368, 1373-4, 47 USPQ2d 1596 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 851 (1999). The purpose of this requirement is to limit patent protection to inventions that possess a certain level of “real world” value, as opposed to subject matter that represents nothing more than an idea or hopeful concept, or subject matter that is simply a starting point for future investigation or research. For more examples of this real-world applicability requirement in action, see Brenner v. Manson, 383 U.S. 519, 528-36, 148 USPQ 689, 693-96 (1966); In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005); In re Ziegler, 992 F.2d 1197, 1200-03, 26 USPQ2d 1600, 1603-06 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6, 8, 10, 11, and 22 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks patentable utility for the detailed reasons provided above in the Specification Objection that are accordingly incorporated herein.
Applicant’s claimed invention is directed to a system for producing useful energy for practical applications from a cold fusion reaction in a target. Said production from a cold fusion reaction is considered as being Applicant's specified utility, e.g., for the useful application of “direct electric conversion,” Specification at page 32, line 31.
The claimed “first energy” in the third clause of claim 1 results from nuclear fusion at low energies, as described by the Specification on page 22. The “energetic particles” in the fifth clause of claim 1 results from radioactive decay that follows said nuclear fusion, as described by the Specification on page 23. While radioactive decay is a known and well-understood mechanism, the first reaction of nuclear fusion from a low-energy ion beam that somehow initiates enormously energetic (TeraHertz) phonons is not.
In describing said specified utility, Applicant has set forth the inadequately supported theory that ion beam collisions with a target within a condensed matter medium can generate a cold fusion reaction (e.g., “As the ion source 504 is operated…some of the incoming H-2 and H-1 projectiles fuse with some of the H-2 and H-1 ions implanted in the metal foil lattice in accordance with respective low-energy fusion reaction cross sections,” Specification, page 22 and claim 1, third clause and fifth clause describing the first and second nuclear reactions, respectively). This fact creates a type of deficiency in which an assertion of specific and substantial utility for the claimed invention made by an Applicant is not credible. See MPEP 2107.01(II) for further examples of the Federal courts’ treatment of inventions claiming incredible utility. The Examiner has provided a preponderance of evidence as to why the asserted operation and utility of Applicant's invention is inconsistent with known scientific principles, making it speculative at best as to whether attributes of the invention necessary to impart the asserted utility are actually present in the invention. As set forth in the Objection to the Specification above, there is currently no reputable evidence of record to indicate the invention has been reduced to the point of providing an operative low-temperature nuclear fusion system. See also In re Sichert, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977). Accordingly, the invention as disclosed is deemed inoperable and therefore lacking in utility for its purported purpose of creating the viable amounts of energy disclosed.
Claims 1-6, 8, 10, 11, and 22 are further rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a credible asserted utility or a well-established utility, for the reasons set forth in the above Objection to the Specification as well as in the section just above this one, which are accordingly incorporated herein.
As set forth in MPEP § 2107.01(IV), a deficiency under 35 U.S.C. 101 also creates a deficiency under 35 U.S.C. 112, first paragraph. See In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). Citing In re Brana, the Federal Circuit noted,
“Obviously, if a claimed invention does not have utility, the specification cannot enable one to use it.”
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.
Claims 1-6, 8, 10, 11, and 22 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims 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, for the same reasons set forth in the above Objection to the Specification, which are accordingly incorporated herein.
Claims 1-6, 8, 10, 11, and 22 are further rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims 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 at the time the application was filed, had possession of the claimed invention. Specifically, a person skilled in the art at the time the application was filed would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure for the reasons provided in the above 101 rejections, which are incorporated herein.
Claims 1-6, 8, 10, 11, and 22 are still further rejected under U.S.C. 112(a) because the claimed invention is not supported by either a credible asserted utility or a well-established utility for the same reasons set forth in the above Objection to the Specification as well as in the 101 section above, which are accordingly incorporated herein; as such, one skilled in the art clearly would not know how to use the claimed invention.
Any claim not specifically addressed above that depends on a rejected claim is accordingly also rejected under 35 U.S.C. 112(a).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The ion beam introduced in claim 1 is necessarily charged, thus claim 22 does not further limit claim 1. Examiner notes that an ion is, by definition, charged9. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
A Note from the Examiner about Desired Result-type, Intended Use-type, and Capable-of type Limitations
The claims are replete with statements that are either essentially method limitations or statements of intended or desired use. These include:
“wherein subsequent bombardment of the sample with the ion beam causes already implanted atomic nuclei of the first group of atomic nuclei to release a first energy,” claim 1
“wherein the ion beam further interacts with a lattice of the condensed matter medium and excites one or more high-frequency phonon modes in the condensed matter medium,” claim 1
“wherein the one or more excited phonon modes further interact with the first group and the second group of atomic nuclei and affect nuclear states of the second group of atomic nuclei by mediating transfer of the first energy of the first group of atomic nuclei to the second group of atomic nuclei and causing the second group of atomic nuclei to emit energetic particles” claim 1
“the first energy comprises 5.5 MeV and the emitted energetic particles have an energy of 1.1 MeV,” claim 1
“the emitted charged particles comprise tritium (H-3) and Helium (He-4) nuclei,” claim 8
“wherein subsequent bombardment of the sample with the ion beam causes already implanted atomic nuclei of the first group of atomic nuclei to release a first energy,” claim 10
“wherein the ion beam further interacts with a lattice of the condensed matter medium and to excite one or more high-frequency phonon modes in the condensed matter medium,” claim 10
“wherein the one or more excited phonon modes further interact with the first group and the second group of atomic nuclei and affect nuclear states of the second group of atomic nuclei by mediating transfer of the first energy of the first group of atomic nuclei to the second group of atomic nuclei and causing the second group of atomic nuclei to emit energetic particles,” claim 10
“the first energy comprises 5.5 MeV and the emitted energetic particles have an energy of 1.1 MeV,” claim 10
“wherein the first group of atomic nuclei further emits energetic particles having an energy lower than the energy of the energetic particles that are generated by the second group of atomic nuclei,” claim 11.
These clauses do not serve to patentably distinguish the claimed structure over that of the applied reference(s), as long as the structure of the cited reference(s) is capable of performing the alleged intended use. See MPEP § 2111–2115. MPEP § 2114(II) states:
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
[A]pparatus claims cover what a device is, not what a device does.”
Additionally, case law dictates that “Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions.” In re Danly, 120 USPQ 528, 531.
As further set forth in MPEP § 2115, a recitation in a claim to the material or article worked upon does not serve to limit an apparatus claim. In this case, the claim is therefore not limited by the ion beams, electric fields, or magnetic fields themselves, which are all (allegedly) producible within the apparatus—only the apparatus itself is limiting. Any one of the systems in the cited references is capable of being used in the same manner and for the alleged intended or desired use as the claimed invention. Note that it is sufficient to show that said alleged capability exists, which is the case for the cited references.
The claim is further being interpreted under MPEP 2111.04, in which the “whereby,” “thereby,” and “such that”-type clauses are not given patentable weight because they simply suggest intended results that may allegedly follow naturally from the claimed structures.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code 102 not included in this action can be found in a prior Office action.
Claims 1–5, 8, 10–11, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Stubbers (US 2011/0091000) in view of Chambers10 (“Evidence for MeV Particle Emission from Ti Charged with Low Energy Deuterium Ions”).
The language being treated as intended result-type language in accordance with the above Note is shown inside brackets […].
Regarding claim 1, Stubbers discloses a system for generating energetic particles (Fig. 1) comprising:
a device (Fig. 8: ion source 809) for generating an ion beam comprising a first group of atomic nuclei (Fig. 8: particle beam 808 may comprise deuterium, which are hydrogen nuclei, ¶ 118);
a sample assembly (Fig. 8: target layer 806) comprising a vacuum chamber (Fig. 8: enclosure 803 forming a vacuum vessel) and a sample supported on a sample holder within the vacuum chamber (a target positioned at a target location located within the enclosure, see claim 1), wherein the sample comprises a condensed matter medium (lithium is a condensed material [0057]) comprising a second group of atomic nuclei (lithium nuclei); wherein the ion beam is directed to bombard a surface of the sample and to implant some atomic nuclei of the first group of atomic nuclei into the condensed matter medium (particle beam 808 implants deuterium atoms in the target layer 806 [0118]) and wherein subsequent bombardment of the sample with the ion beam causes already implanted atomic nuclei of the first group of atomic nuclei to release a first energy (fusion reaction releases neutrons [0111]);
wherein the first group of atomic nuclei comprises deuterium (H-2) and protium (H-1) nuclei (Fig. 8: particle beam 808; the beam includes hydrogen isotopes: protium, deuterium and/or tritium ions [0027]), the second group of atomic nuclei comprises Li-6 nuclei (target material is substantially comprised of lithium [0142]) and the first energy comprises 5.5 MeV and the emitted energetic particles have an energy of 1.1 MeV (Examiner notes that, since all the structure of the claimed invention is present in Stubbers, then if the deuterium and protium of the claimed invention are capable of releasing a first energy of 5.5 MeV, and the lithium of the claimed invention is capable of emitting energetic particles having an energy of 1.1 MeV, then so are the deuterium/protium and lithium nuclei of Stubbers).
Stubbers does not explicitly teach the claimed ion beam energy range.
Chambers, in the context of generating energetic particles (see abstract), teaches an ion beam (low energy ion beams to charge metal lattices with deuterium, page 2) that comprises energy in the range of 100 eV to 2000 eV (low energy deuterium [350 eV] ions produced by an ECR microwave source, page 2). It would have been obvious to one of ordinary skill in the art before the effect filing date of the claimed invention to modify the system of Stubbers to use the ion beam energy taught by Chambers, in order to allegedly monitor short-range emissions (“We have used the approach of employing low energy ion beams…so that we can monitor the emission of energetic charged particle reaction products, such as helium or isotopes of hydrogen, that have extremely short ranges in air or water,” page 2).
Moreover, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum value or workable ranges involves only routine skill in the art. The skilled artisan is able to modify the beam energy and reasonably predict outcomes.
Stubbers remains silent regarding phonons. However, Examiner notes that, since all the structure of the claimed invention is present in Stubbers, then if the claimed ion beam is capable of exciting high frequency phonon modes in the target, then so is the ion current of Stubbers. Thus, Stubbers is capable of producing the following intended results:
[wherein the ion current further interacts with a lattice of the condensed matter medium and excites one or more high-frequency phonon modes]; and
[wherein the one or more excited phonon modes further interact with the first group and the second group of atomic nuclei and affect nuclear states of the second group of atomic nuclei by mediating transfer of the first energy of the first group of atomic nuclei to the second group of atomic nuclei and causing the second group of atomic nuclei to emit energetic particles].
Regarding claim 2, Stubbers in view of Chambers makes obvious all of the elements of the parent claim, above.
Stubbers further discloses a sample attached to a sample holder (a target positioned at a target location located within the enclosure, see claim 1). However, the apparatus is not limited by the process by which the sample was attached (i.e., via mechanical pressure). See MPEP 2113.
Regarding claim 3, Stubbers in view of Chambers makes obvious all of the elements of the parent claim, above.
Stubbers further discloses the ion beam comprises a beam current (the beam current is 1mA to 50 µA [0103]). Examiner notes that 50 µA is equivalent to 0.05 mA, which falls within the claimed range. Even so, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify this range to be within the range of 0.01mA to 10mA, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 4, Stubbers in view of Chambers makes obvious all of the elements of the parent claim, above.
Stubbers remains silent regarding a particle detector.
Chambers further teaches a particle detector (Fig. 1: Si Detector) for detecting the emitted energetic particles.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Stubbers to include the particle detector, as taught by Chambers, in order to detect charged particles produced by the reactions (see abstract) with advantageous intrinsic and geometric efficiency (page 4).
Regarding claim 5, Stubbers in view of Chambers makes obvious all of the elements of the parent claim, above.
Stubbers further discloses the surface of the sample and the ion beam form a 45-degree angle (Fig. 8: particle beam 808 has at least some particles make a 45-degree angle with the target layer 806 – the target layer is forming an angle with the horizontal and the beam is in the direction of the horizontal).
Regarding claim 8, Stubbers in view of Chambers makes obvious all of the elements of the parent claim, above.
Examiner notes that, since all the structure of the claimed invention is present in Stubbers as modified by Chambers, then if emitted particles include the claimed species, then so are those of Stubbers in view of Chambers.
Stubbers further discloses the emitted charged particles comprise tritium and Helium-4 (products of the fusion reactions and radioactive decay products are helium-3, helium-4, and tritium [0119]).
Regarding claim 11, Stubbers in view of Chambers makes obvious all of the elements of the parent claim, above.
Examiner notes that, since all the structure of the claimed invention is present in Stubbers as modified by Chambers, then if the first group of nuclei is capable of having a lower energy than that of the second group, then so are those of Stubbers in view of Chambers.
Regarding claim 10, Stubbers discloses a system for generating energetic particles (Fig. 1) comprising:
a device (Fig. 8: ion source 809) for generating an ion beam comprising a first group of atomic nuclei (Fig. 8: particle beam 808 comprises deuterium);
a sample assembly (Fig. 8: target layer 806) comprising a vacuum chamber (Fig. 8: enclosure 803 forming a vacuum vessel) and a sample supported on a sample holder within the vacuum chamber (a target positioned at a target location located within the enclosure, see claim 1), wherein the sample comprises a condensed matter medium (lithium is a condensed material [0057]) comprising a second group of nuclei (lithium); wherein the ion beam is directed to bombard a surface of the sample and to implant some atomic nuclei of the first group of atomic nuclei into the condensed matter medium (particle beam 808 implants deuterium atoms in the target layer 806 [0118]) and wherein subsequent bombardment of the sample with the ion beam causes already implanted atomic nuclei of the first group of atomic nuclei to release a first energy (fusion reaction releases neutrons [0111]);
wherein the first group of atomic nuclei comprises deuterium (H-2) and protium (H-1) nuclei (Fig. 8: particle beam 808; the beam includes hydrogen isotopes: protium, deuterium and/or tritium ions [0027]), the second group of atomic nuclei comprises Pb-204 nuclei (adding Pb to the target material may produce additional neutrons [0052]) and the first energy comprises 5.5 MeV and the emitted energetic particles have an energy of 1.1 MeV (Examiner notes that, since all the structure of the claimed invention is present in Stubbers, then if the deuterium and protium of the claimed invention are capable of releasing a first energy of 5.5 MeV, and the lithium of the claimed invention is capable of emitting energetic particles having an energy of 1.1 MeV, then so are the deuterium/protium and lithium nuclei of Stubbers).
Stubbers does not explicitly teach the claim ion beam energy range.
Chambers, in the context of generating energetic particles (see abstract), teaches an ion beam (low energy ion beams to charge metal lattices with deuterium, page 2) that comprises energy in the range of 100 eV to 2000 eV (low energy deuterium [350 eV] ions produced by an ECR microwave source, page 2). As applied above, it would have been obvious to one of ordinary skill in the art before the effect filing date of the claimed invention to modify the system of Stubbers to use the ion beam energy taught by Chambers, in order to allegedly monitor short-range emissions (“We have used the approach of employing low energy ion beams…so that we can monitor the emission of energetic charged particle reaction products, such as helium or isotopes of hydrogen, that have extremely short ranges in air or water,” page 2).
Moreover, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum value or workable ranges involves only routine skill in the art. The skilled artisan is able to modify the beam energy and reasonably predict outcomes.
Stubbers remains silent regarding phonons. However, Examiner notes that, since all the structure of the claimed invention is present in Stubbers, then if the claimed ion beam is capable of exciting high-frequency phonon modes, then so is the ion current of Stubbers. Thus, Stubbers is capable of producing the following intended results:
[wherein the ion current further interacts with a lattice of the condensed matter medium and and to excite one or more high-frequency phonon modes in the condensed matter medium]; and
[wherein the one or more excited phonon modes further interact with the first group and the second group of atomic nuclei and affect nuclear states of the second group of atomic nuclei by mediating transfer of the first energy of the first group of atomic nuclei to the second group of atomic nuclei and causing the second group of atomic nuclei to emit energetic particles].
Regarding claim 22, Stubbers in view of Chambers makes obvious all of the elements of the parent claim, above.
Stubbers further discloses the energetic particles comprise charged particles (the deuterium ions of [0118] are charged by definition).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Stubbers and Chambers, as combined above, further in view of Lipinski (US 2009/0274256).
Regarding claim 6, Stubbers in view of Chambers makes obvious all of the elements of the parent claim, as described above.
Stubbers discloses the condensed matter medium comprises lithium, but does not explicitly state this is a lithium foil. Chambers teaches using targets in the form of foils (nickel foils, see page 5), but remains silent regarding lithium foil.
Lipinski, in the context of nuclear fusion using a hydrogen beam ([0011]), teaches the condensed matter medium comprises a lithium foil (Fig. 1: lithium target material 14, the lithium target material is lithium foil [0058]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the system of Stubbers as previously modified by Chambers so that the condensed matter medium comprises a lithium foil as taught by Lipinski, in order to obtain high fusion efficiency and the advantageous ability for the energetic fusion particles to exit the target without transferring significant fusion energy to the target as heat (see [0010]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY C GARNER whose telephone number is (571)272-9587. The examiner can normally be reached 9-5 CT.
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LILY CRABTREE GARNER
Primary Examiner
Art Unit 3646
/LILY C GARNER/Primary Examiner, Art Unit 3646
1 Cold fusion devices have been to the federal circuit and lost twice. In re Swartz, 232 F.3d 862 (Fed. Cir. 2000) and In re Dash, No. 04-1145, 08/439,712 (Fed. Cir. 2004).
2 https://arxiv.org/
3 Temperatures for Fusion, Department of Physics and Astronomy, Georgia State University: http://hyperphysics.phy-astr.gsu.edu/hbase/NucEne/coubar.html
4 Honrubia, J. J., and M. Murakami. "Ion beam requirements for fast ignition of inertial fusion targets." Physics of Plasmas 22.1 (2015).
5 Maglich, Bogdan (1973). "The Migma principle of controlled fusion". Nuclear Instruments and Methods. 111 (2): 213–235.
6 US DOE "Report of the Review of Low Energy Nuclear Reactions.” US Department of Energy, Office of Science, April 29 (2004).
7 Revisiting the cold case of cold fusion. Berlinguette, Curtis P., et al. Nature 570.7759 (2019): 45-51.
8 Oliphant et al. "Transmutation effects observed with heavy hydrogen." Proceedings of the Royal Society of London. Series A, Containing Papers of a Mathematical and Physical Character 144.853 (1934): 692-703.
9 ion:
1: an atom or group of atoms that carries a positive or negative electric charge as a result of having lost or gained one or more electrons
2: a charged subatomic particle (such as a free electron)
< merriam-webster.com/dictionary/ion >
10 See the 33-page NPL reference in the file 8/25/2022.
Prosecution Insights