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 .
Status of Claims
Claims 1–4, 9–12, 14–16, 28–31, 35–36, 39–40, 42, and 46–50 are under examination.
Note from the Examiner: claim 11 includes a typographical error that was not present in the previously examined claim set. None of the previously examined claims, including amended claim 11, have a header of “Currently Amended.” Therefore, outside of claim 11, Examiner assumes all previously examined claims 1–4, 9–12, 14–16, 28–31, 35–36, 39–40, 42, and 46–48 are un-amended. If Applicant has amended claims other than claim 11, Examiner asks that Applicant update the header of these claims to reflect the amendments so that Examiner may respond to said amendments.
Response to Amendment
Applicant’s amendments do not overcome the 112(a) or 101 rejections, which are maintained.
Applicant’s amendments do not overcome the 102 or 103 rejections, which are maintained.
Applicant’s addition of claims 49 and 50 necessitated an updated search, the results of which are presented below in the prior art rejection sections.
Response to Arguments
Applicant's arguments, see Remarks dated 11/14/2025, have been fully considered but they are not persuasive for the reasons detailed below.
An initial matter, Applicant states on page 7 that this application is a continuation of application 13/089,896. This is incorrect. This application is a continuation of 12/258,568 and a continuation-in-part of 12/898,807. Application 13/089,986 is also a continuation-in-part of 12/898,807, making ‘986 and the instant application “cousins,” but the instant application is not a continuation of application 13/089,896.
Regarding the 101 rejections, the asserted utility is producing useful energy by fusing deuterons inside a carbon nanotube, e.g., see Specification at ¶¶ 51–54 and also claim 1, at cold temperatures, e.g., “at 0°C,” see claim 2. Applicant’s invention is therefore directed to a cold fusion method, an inoperable invention under 35 USC § 1011. See the MPEP discussion of “a ‘cold fusion’ process for producing energy,” 2107.01(I)(C)(II) as an example of an “invention that is ‘inoperative’ (i.e., it does not operate to produce the results claimed by the patent applicant) and is not a ‘useful’ invention in the meaning of the patent law.”
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.
Regarding the 102 and 103 rejections, Applicant argues that the Examiner’s prior art rejections are improper because the claimed method was rejected as inoperable under 35 U.S.C. 101 (see Remarks at pages 17+). Applicant makes a reverse-type argument wherein, if a 102 or 103 rejection can be made, the instant application rejected under said statute must be enabled. In response, the MPEP at 2121.01 explains that “‘Even if a reference discloses an inoperative device, it is prior art for all that it teaches.’ Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989). Therefore, ‘a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103.’ Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991).” In this case, the Examiner agrees that Arata’s invention is not enabled. Indeed, Arata’s invention (U.S. application 10/530,982) was rejected by the U.S. Examiner as non-enabled, and the application was abandoned. Arata still discloses the claimed method, as cited by the Examiner in the below 102 and 103 rejection sections. Arata qualifies as prior art even though it discloses an inoperative method. Accordingly, the 102 and 103 rejections are maintained.
Claim Objections
Claim 11 is objected to because of the following informalities: in line 3, “mom temperature” should be “room temperature”. Appropriate correction is required.
Specification Objections
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: New claim 50 uses the term “infiltrating.” Examiner cannot find this term, or a clear synonym thereof, in the Specification.
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 1–4, 9–12, 14–16, 28–31, 35–36, 39–40, 42, and 46–50 are rejected under 35 U.S.C. 101 because the claimed invention is not supported by a well-established utility or a substantial and credible asserted utility.
In Brenner v. Manson, the Supreme Court stated that “[t]he basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until a process is refined and developed to this point—where specific benefit exists in currently available form—the is insufficient justification for permitting an applicant to engross what may prove to be a broad field.” 383 U.S. 519, 534-35 (1966). The Manual of Patent Examining Procedure (MPEP) accordingly explains that the purpose of the utility 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 concept, or is simply a starting point for future investigation or research.” MPEP § 2103, A., I.
Thus, the USPTO has the initial burden of setting forth a reason to doubt an Appellant's presumptively correct assertion of utility. In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000). “The PTO may establish a reason to doubt an invention's asserted utility when the written description ‘suggest[s] an inherently unbelievable undertaking or involve[s] implausible scientific principles.”’ In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (quoting In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)).
Here, the claims are directed to an approach to cold nuclear fusion. Claim 1, for example, recites
[a] method of generating 4He atoms and energy, said method comprising: contacting three-dimensional nanostructured carbon material with deuterium; and transmuting the deuterium to 4He atoms and energy.
Dependent claim 2 further delineates that the method is performed at 0°C, claim 10 recites a temperature range between 30 and 300°C, claim 11 recites “at or below room temperature,” claim 12 recites between 20 and -100°C, and claims 14-15 recite low energies of below 1 keV or below 100 eV.
Independent claims 39, 46, and 50 recite substantially similar methods to claim 1.
Independent claim 28 recites
[a] method of generating radiation, said method comprising: contacting three-dimensional nanostructured carbon material with deuterium; and placing said three-dimensional nanostructured carbon material in said deuterium for a time sufficient to generate radiation.
Dependent claims 35-36 further delineate that the method is performed at low energies of below 1 keV or below 100 eV.
The energy generating and element transmuting methods of claims 1, 39, 46, and 50 and the radiation generating method of claim 28 all operate via cold fusion nuclear reactions, e.g., “The results presented herein are, in general, consistent with other reported low-energy nuclear reaction (LENR) experimental results,” Specification at ¶ 57.
In the introduction paragraphs of the Specification (¶¶ 2–4), Applicant asserts that the present invention is for “producing commercially valuable non-ionizing radiation and isotopes” but acknowledges how all previous attempts at achieving said nuclear fusion reactions have failed:
“While nuclear energy remains a valuable alternative, various types of damaging ionizing radiation may be produced by radioactive decay, nuclear fission and nuclear fusion. For example, it is known that the negatively-charged electrons and positively charged ions created by ionizing radiation may cause damage in living tissue. If the dose is sufficient, the effect may be seen almost immediately, in the form of radiation poisoning,” ¶ 3
However, despite the failure of all others hitherto, Applicant claims to have overcome the tremendous barriers known in the art and invented a method for producing important isotopes “in an environmentally friendly way,” Specification at ¶ 4. The claimed energy- and isotope-generating methods require nuclear fusion without meeting the accepted and established conditions necessary for fusion to occur, known as the Lawson criterion2. For one, fusion on Earth requires temperatures several orders magnitude greater than 15 million degrees Celsius temperature at the sun’s core3. Mainstream nuclear science reckons that the requisite temperature for fusion on Earth is 100 million degrees Celsius or more4. The claimed method when read in light of the Specification, by contrast, operates as significantly lower temperatures than would be needed for nuclear fusion to occur. Specifically, claims 1-2 recite generating energy at 0 degrees Celsius, and the Specification makes it clear that the generated energy is the result of “inducing local nuclear fusion,” “Fusion of two deuterons,” “deuteron fusions were catalyzed by the carbon nanotubes,” and “the following reaction was dominate [sic]: D + D -> 4He + 23.8 MeV,” at ¶¶ 17, 49, 54, and 80, respectively.
Applicants envisage that the invention fulfills “a need to generate new sources of energy not based on fossil fuels,” Specification at ¶ 3. In addition to generating energy, the disclosed and asserted utilities include “producing commercially valuable non-ionizing radiation and isotopes, namely 4He, in an environmentally friendly way,” Specification at ¶ 4.
The Specification describes fusion activity observed in experimental settings (see the Specification at ¶¶ 59+), but does not demonstrate a release of energy greater than the amount of energy input, i.e., a net positive energy such as would be needed for the stated goal of “meeting current and future energy needs,” as stated in the Specification at ¶ 4. Nor is there a disclosure of the specific mechanisms, operational parameters, etc. that an ordinarily skilled artisan would recognize as capable of sustaining a fusion reaction on the scale needed to currently achieve the benefits noted above. The exceptionally modest conclusion of Applicant’s experiments, e.g., as presented in Table 2 in the disclosure, weighs in favor of finding that the claimed subject matter, if even operative, lacks the real-world value required by 35 U.S.C. 101.
Other publications and documents evidence a consensus in the scientific community that there is yet to be a fusion technique—thermonuclear (hot) or cold—capable producing an energy gain sufficient for practical applications. As noted Dylla5, as recently as 2020, the largest nuclear fusion project in the world—the International Thermonuclear Experimental Reactor (ITER)—aspired to achieve a successful fusion demonstration “for several minutes duration” by 2026 at the absolute earliest. This is with a projected cost of “greater than $10 billion.”
Further according to the official ITER6 webpage:
“The world record for fusion power in a magnetic confinement fusion device is held by the European tokamak JET. In 1997, JET produced 16 MW of fusion power from a total input heating power of 24 MW (Q=0.67). ITER is designed to yield in its plasma a ten-fold return on power (Q=10), or 500 MW of fusion power from 50 MW of input heating power. ITER will not convert the heating power it produces as electricity, but — as the first of all magnetic confinement fusion experiments in history to produce net energy gain across the plasma (crossing the threshold of Q≥1) — it will prepare the way for the machines that can.”
There currently exist no nuclear fusion reactors, hot or cold, capable of producing useful energy gain for practical applications. The National Ignition Facility (NIF) is the largest operational fusion system in the US to date that operates at extreme temperatures. In December 2022, the NIF reportedly achieved a “nuclear fusion breakthrough,” producing 3.15 MJ of fusion energy from 2.05 MJ of laser light. This was the first ever demonstration in the world of a target producing more energy than was delivered to the target. However, the laser system7 itself required 322 MJ of energy to create these fusion reactions, multiple orders of magnitude greater than the energy produced. Thus, while an achievement in fusion, the experiment is far from a demonstration of practical energy production—as stated by experts in the fusion community8,9.
When the most advanced thermonuclear fusion reactors in the world have yet to create more energy than they consume (“net” energy gain), Applicant’s claims (a) to be in possession of a nuclear fusion method that operates without the extreme temperatures needed for traditional fusion, and (b) that said method is so efficient as to be suitable for “meeting current and future energy needs,” would be found questionable to a person of ordinary skill in the art.
To accomplish these feats, Applicant’s method relies on the simple “contacting” of a 3-D carbon material with deuterium, per claims 1, 28, 39, 46, and 50 at very low temperatures and energies, per claims 2, 10-12, and 35-36.
However, as is known by those having ordinary skill in the art, 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 University10 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.”
Applicants have failed to sufficiently disclose how the claimed method for contacting carbon with deuterium is capable of producing or sustaining a fusion reaction. The disclosure provides no mechanism for achieving and maintaining the temperatures of hundreds of millions of degrees Celsius/Kelvin known to be required to achieve nuclear fusion ignition.
To the contrary, the methods for generating helium-4, energy, and radiation as recited in the independent claims are repeatedly described as occurring in a relatively cold environment, i.e., at or below room temperature per at least claim 11.
The apparatus of the instant invention operates exclusively at low temperatures:
“at 0°C,” claim 2
“ranges from 30°C to 300°C,” claim 10
“at or below room temperature,” claim 11
“the step of contacting…is performed at a temperature ranging from 20°C to -100°C,” claim 12
“an energy of less than 1 KeV [sic],” claim 14
“an energy of less than 100 eV,” claim 15
“an energy of less than 1 KeV [sic],” claim 35
“an energy of less than 100 eV,” claim 36
about -80°C to 200°C, see results plotted in Figure 2
8°C to 32°C to 200°C, see results in Table 2
“The results presented herein are, in general, consistent with other reported low-energy nuclear reaction (LENR) experimental results,” Specification at ¶ 57
As cited above in the quotation from Georgia State University, the minimum temperature required for nuclear fusion ignition is between 10,000,000 and 100,000,000 Kelvin. Applicant’s range of -100 degrees Celsius to 300 degrees Celsius is equivalent to 173 Kelvin to 573 Kelvin. Therefore, Applicant’s invention fits squarely in the field of low-temperature nuclear reactions (LENR), or cold fusion.
For the present invention, which is directed to a way of attempting nuclear fusion at odds with established scientific principles, evidence and acceptance by the scientific community is of crucial importance because the PTO may meet its burden to establish a prima facie case of lack of utility where the written description suggests an unbelievable undertaking or implausible principles. See In re Cortright, 165 F.3d. at 1357.
A review of the Specification shows that the success of the invention depends largely, if not entirely, on the inherent “unusual electronic structure” of graphene (carbon) materials:
“[I]t has been discovered that the single atomic layer of carbon, characteristic of graphene materials, effectively screens Coulomb interactions,” ¶ 52
Unfortunately, while the disclosure emphasizes the unique structure of 3-D carbon materials, no explanation is provided as to how the skilled artisan would take widely available carbon tubes and imbue them with the ability to cause nuclear fusion merely by being in contact with deuterium, as recited in claim 1. The statement in ¶ 52 that carbon “effectively screens Coulomb interactions” is a speculation made by Applicant, and Examiner cannot find any persuasive evidence supporting this theory. Examiner notes the unique structure of carbon is well-documented and praised for its many uses11, but cold nuclear fusion does not appear to be known to the scientific community as among said uses. In other words, the unique structure of graphene, despite being recognized for its many industrial uses, has not been proven to allow the ordinary skilled artisan to manipulate any possible Coulomb screening capabilities to the point of producing a method capable of causing energy-producing cold nuclear fusion, as claimed by Applicant.
The claimed invention—a cold fusion scheme—for generating and maintaining a cold fusion reaction sufficient to be used as a viable energy source via the contact of carbon materials with deuterium (claim 1) is too undeveloped to be considered to have a body of existing knowledge associated with it, much less reproducibility of results. See In re Swartz, 232 F.3d at 864 (“Here the PTO provided several references showing that results in the area of cold fusion were irreproducible. Thus the PTO provided substantial evidence that those skilled in the art would ‘reasonably doubt’ the asserted utility and operability of cold fusion”). Reproducibility must go beyond one’s own laboratory. One must produce a set of instructions—a recipe—that would enable a skilled artisan to produce and use the invention. If reproducibility occurs only in one’s own laboratory, errors (such as systematic errors) could reasonably be suspected. Applicant’s disclosure is insufficient as to how the embodiments described therein are based upon valid and reproducible methodology.
The Examiner cannot find, and Applicant has not supplied, any reputable and peer-reviewed papers in which the mainstream scientific community (i.e., outside of Applicant’s own laboratory) has replicated or built upon Applicant’s purportedly revolutionary discovery. Therefore, the Examiner must conclude that the claimed invention has not been independently reproduced.
In view of the above, it is more likely than not that an ordinarily skilled artisan would doubt the effective obtention of a fusion reaction, i.e., causing and capability to generate energy as claimed, as well the benefits asserted by Applicants as of the effective date of the claims. Rather, the preponderance of evidence supports a finding that as of the effective date, the claimed method was at most at starting point for future investigation or research. See In re Swartz, 232 F.3d at 864, In re Cortright, 165 F.3d at 1357.
Claims 1–4, 9–12, 14–16, 28–31, 35–36, 39–40, 42, and 46–50 are further rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks patentable utility for the reasons provided in the above 101 rejection, which are incorporated herein. The production of useful energy, commercially valuable non-ionizing radiation, and isotopes from a nuclear fusion reaction is considered as being Applicant's specified utility (see Specification at ¶ 4). Applicant’s invention is claimed as operating at energy ranges (claims 14, 15, 34, and 35) and temperatures (claims 2, 10, 11, and 12) many orders of magnitude below what the scientific community considers conducive to nuclear fusion. The ordinary skilled artisan would find it more likely than not that Applicant’s invention was neither (a) useful-energy-producing hot fusion, nor (b) cold fusion because, as detailed above: regarding (a), net-energy-producing hot nuclear fusion has never yet been observed; and regarding (b), cold fusion is considered unworkable by the scientific community, and the success of the claimed invention requires carbon to exhibit a capability well beyond what is currently considered possible. 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. See In re Sichert, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977). Accordingly, the invention as disclosed is deemed inoperable, i.e., it does not operate to produce the results claimed by the Applicant.
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 1–4, 9–12, 14–16, 28–31, 35–36, 39–40, 42, and 46–50 are rejected under U.S.C. 112(a). Specifically, because the claimed invention is not supported by a well-established utility or a substantial and credible asserted utility for the same reasons set forth in the rejections under 35 U.S.C. 101 (which are incorporated herein), one skilled in the art clearly would not know how to use the claimed invention.
Claims 1–4, 9–12, 14–16, 28–31, 35–36, 39–40, 42, and 46–50 are further rejected under 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 1–4, 9–12, 14–16, 28–31, 35–36, 39–40, 42, and 46–50 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.
To be enabling, the disclosure, as filed, must be sufficiently complete to enable a person of ordinary skill in the art to make and a use the full scope of the claimed invention without undue experimentation. It is the Examiner’s position that an undue amount of experimentation would be required to produce an operative embodiment of the claimed invention.
Applicant admits that previous, well-funded and decades-long attempts at producing viable nuclear fusion reactors have been unsuccessful (Specification, ¶¶ 3–4). Even so, Applicant believes they have produced an operative method for achieving nuclear fusion for useful energy production (“a method of meeting current and future energy needs,” Specification at ¶ 4) in a low-temperature environment (e.g., 0 degrees Celsius, claim 2).
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, the evidence weighs in favor of a finding that undue experimentation would be necessary to make and use the claimed invention, and therefore, a determination that the disclosure fails to satisfy the enablement requirement. Specifically:
(A) The breadth of the claims: Applicant’s claims to provide a low-energy nuclear reactor (LENR) are extremely broad, as evidenced by their lack of detail (e.g., clms. 1, 28, 39, 46, and 50 simply recite “contacting” a carbon material with deuterium) as well as the fact that the alleged result of producing fusion energy necessarily abandons modern nuclear physics, to the extent that the alleged outcomes of said device 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 cold (low-energy) nuclear fusion as a source of commercial energy; as currently disclosed by Applicant, the cold fusion method involves a questionable 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 claims are directed to an assertedly new field subsector of nuclear fusion technology—cold fusion via carbon nanotube absorption of deuterium. Thus, the level of ordinary skill in the art is challenging to ascertain. The claimed technique is explicitly fusion at cold temperatures. Those generally skilled in the art would appreciate the obstacles and repeated failure in achieving/sustaining nuclear fusion when the Lawson criterion is not satisfied—e.g., extreme temperatures. Those skilled in the art would also understand that cold or low-energy nuclear fusion, from which the instant invention is derived, lies within the realm of fringe science and offends generally accepted physics.
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 fails to cite adequate support for the underlying theory (a layer of carbon “effectively screens Coulomb interactions,” ¶ 52), and no rigorous experimental third-party results or other substantial supporting evidence is provided for the record.
See MPEP § 2164.03.
(G) The existence of working examples: A working example is provided (see Spec. ¶¶ 59+), but the person having ordinary skill in the art would find it unlikely that the observed outcomes are the result of nuclear fusion. Nor is there evidence that the provided example has been reliably reproduced or that it enjoys mainstream support. 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 unreasonable because 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.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(a), for its dependency upon an above–rejected claim and for the same reasons.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 50 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 50 recites the term "infiltrating". Examiner cannot find this term, or a clear synonym thereof, in the Specification. Examiner has also checked the applications for which this case has priority (60/741,874; 60/777,577; 11/633,524; 12/258,568; and 12/898,807) and cannot find the use of this term in any of them, either. Examiner is unclear as to how Applicant is intending “infiltrating” to be interpreted. In the context of a technical patent application, this term may reasonably be defined as to pass into or through a substance by filtering or permeating, or to cause (as a liquid) to permeate something by penetrating its pores or interstices, or to enter, permeate or pass through a substance or area by filtering or by insinuating gradually12. Alternatively, in the context more specific to the subject matter of this application (low-energy nuclear reactions or LENR), the “infiltration” or carbon with a hydrogen compound such as deuterium (as recited in claim 50) is more likely to be interpreted as hydrogen loading. Hydrogen loading is a legitimate chemical process (non-nuclear) in which hydrogen penetrates and is trapped inside a metallic material. Alternatively still, to be even more specific to the subject matter of this application, it is possible that Applicant is meaning hydrogen loading that is nuclear in nature (not chemical). Hydrogen loading into a metal lattice to cause nuclear fusion is the subject of much cold fusion research, e.g., lattice confinement fusion (LCF), and it does not enjoy mainstream scientific support as of this writing. Therefore, it is unclear if the claimed infiltration is intended to mean physical permeating, e.g., like water absorption into a sponge, or chemical hydrogen loading, or hydrogen loading leading to nuclear reactions. Or something else entirely. These interpretations all appear to be reasonable in light of the subject matter of this application, but they are mutually exclusive from each other, and thus the intended meaning must be clarified for accurate examination.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(b) for its dependency upon an above–rejected claim and for the same reasons.
Claim Rejections - 35 USC § 102
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, 3, 4, 9–10, 16, 28–31, 39–40, 42, and 46–48 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arata (WO2004034406A1 — US version 2006/0153752 A1 cited herein for convenience).
Regarding claim 1, Arata discloses a method allegedly capable of generating 4He atoms and energy, said method comprising: contacting three-dimensional nanostructured carbon material (“carbon nanotube,” ¶ 63) with deuterium (“deuterium,” ¶ 54); and transmuting the deuterium to 4He atoms and energy (“the at least two hydrogen isotope atoms are reacted with each other to generate a helium molecule in addition to the heat,” ¶ 15).
Regarding claim 3, Arata anticipates all the elements of the parent claim, and further discloses wherein said three-dimensional nanostructured carbon material comprise multilayer graphite, single walled carbon nanotubes, multiwalled carbon nanotubes, buckyballs, carbon onions, and carbon nanohorns (“carbon nanotube,” ¶ 63; Examiner notes that all carbon nanotubes are either single- or multi-walled).
Regarding claim 4, Arata anticipates all the elements of the parent claim, and further discloses wherein said deuterium comprises a liquid or gas (e.g., “hydrogen isotope gas,” ¶ 72).
Regarding claim 9, Arata anticipates all the elements of the parent claim, and further discloses wherein said three-dimensional nanostructured carbon material comprises carbon nanotubes (“carbon nanotube,” ¶ 63), and said method further comprises heating the carbon nanotubes at a temperature and for a time sufficient to promote absorption of the deuterium into or onto the carbon nanotubes (e.g., “The reaction of deuterium generates high-temperature and high-pressure gas and helium gas in the reaction furnace,” ¶ 93).
Regarding claim 10, Arata anticipates all the elements of the parent claim and further discloses a temperature range from 30°C to 300°C and a time from 30 minutes to 8 hours (as shown in Fig. 3, Arata’s temperature and time ranges overlap the recited ones).
Regarding claim 16, Arata anticipates all the elements of the parent claim and further discloses wherein said three-dimensional nanostructured carbon material are placed in deuterium for a time ranging from 30 minutes to 48 hours (as shown in Fig. 3, Arata’s time range overlaps the recited one).
Regarding claim 28, Arata discloses a method allegedly capable of generating radiation, said method comprising: contacting three-dimensional nanostructured carbon material (“carbon nanotube,” ¶ 63) with deuterium (“deuterium,” ¶ 54); and placing said three-dimensional nanostructured carbon material in said deuterium for a time sufficient to generate radiation (e.g., D-D nuclear fusion reaction, ¶ 91, which creates gamma radiation13).
Regarding claim 29, Arata anticipates all the elements of the parent claim, and further discloses wherein said radiation comprises x-rays, visible light, or combinations thereof (e.g., D-D nuclear fusion reaction, ¶ 91, which creates X-rays, as known in the art).
Regarding claim 30, Arata anticipates all the elements of the parent claim, and further discloses wherein said three-dimensional nanostructured carbon material comprise, multilayer graphite, single walled carbon nanotubes, multiwalled carbon nanotubes, buckyballs, carbon onions, carbon nanohorns and combinations thereof (“carbon nanotube,” ¶ 63; Examiner notes that all carbon nanotubes are either single- or multi-walled).
Regarding claim 31, Arata anticipates all the elements of the parent claim, and further discloses wherein the deuterium is in a liquid, gas, plasma, or supercritical phase (e.g., “hydrogen isotope gas,” ¶ 72)..
Regarding claim 39, Arata discloses a method allegedly capable of inducing nuclear transmutation, comprising the steps of: contacting three-dimensional nanostructured carbon material (“carbon nanotube,” ¶ 63) with deuterium (“deuterium,” ¶ 54); and placing said three-dimensional nanostructured carbon in deuterium for a time sufficient to transmute said deuterium and generate primarily a plurality of 4He atoms and energy (“the at least two hydrogen isotope atoms are reacted with each other to generate a helium molecule in addition to the heat,” ¶ 15).
Regarding claim 40, Arata anticipates all the elements of the parent claim, and further discloses wherein said three-dimensional nanostructured carbon material comprises carbon nanotubes (“carbon nanotube,” ¶ 63).
Regarding claim 42, Arata anticipates all the elements of the parent claim, and further discloses wherein said deuterium is a gas (e.g., “hydrogen isotope gas,” ¶ 72).
Regarding claim 46, Arata discloses (e.g., ¶ 40) discloses a method allegedly capable of generating energy, comprising: contacting three-dimensional nanostructured carbon material (“a carbon nanotube,” ¶ 63) with deuterium (“deuterium,” ¶ 54); and transmuting said deuterium to produce a plurality of 4He atoms and energy (“the at least two hydrogen isotope atoms are reacted with each other to generate a helium molecule in addition to the heat,” ¶ 15).
Regarding claim 47, Arata anticipates all the elements of the parent claim, and further discloses wherein said three-dimensional nanostructured carbon material comprises carbon nanotubes (“carbon nanotube,” ¶ 63).
Regarding claim 48, Arata anticipates all the elements of the parent claim, and further discloses wherein said deuterium is a gas (e.g., “hydrogen isotope gas,” ¶ 72).
Claims 46, 47, 49, and 50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rosen (WO 2005/001845 A214).
Regarding claim 46, Rosen discloses a method allegedly capable of generating energy (“nuclear fusion reactions, and generating electrical power or other useful byproducts from the same reactions,” page 40, ll. 9–11), comprising: contacting three-dimensional nanostructured carbon material (in Fig. 9, carbon nanostructures [see page 47, l. 19 – page 49, l. 26] such as bucky-balls [page 47, l. 24] or multi-walled nanotubes [page 49, ll. 10–11] are within the large fiber 602 in the spaces around the smaller fibers 606, page 68, ll. 30–32) with deuterium (deuterium gas/heavy water are also in these spaces, page 41, ll. 1–3); and transmuting said deuterium to produce a plurality of 4He atoms and energy (“…the helium-3 product can further react with the deuterium to produce helium-4,” page 44, ll. 28-29). Further per the recited contact between the carbon and the deuterium, Rosen also discloses that fuel within the hollow fiber includes a mixture of both the gaseous/liquid carbon nanostructures and deuterium, page 68, line 30 – page 69, line 8.
Regarding claim 47, Rosen anticipates all the elements of the parent claim, and further discloses wherein said three-dimensional nanostructured carbon material comprises carbon nanotubes (“carbon nanostructures,” page 68, l. 32, referring back to, among other carbon nanostructures, “multiple multi-walled carbon nanotubes,” page 49, ll. 10–11).
Regarding claim 49, Rosen anticipates all the elements of the parent claim and further discloses wherein said carbon nanotubes consist essentially of multi-wall carbon nanotubes (“carbon nanostructures,” page 68, l. 32, referring back to, among other carbon nanostructures, “multiple multi-walled carbon nanotubes,” page 49, ll. 10–11).
Regarding claim 50, Rosen discloses a method allegedly capable of inducing nuclear fusion (“nuclear fusion reactions,” page 40, ll. 9–10) by infiltrating multi-wall carbon nanotubes (in Fig. 9, carbon nanostructures [see page 47, l. 19 – page 49, l. 26] such as bucky-balls [page 47, l. 24] or multi-walled nanotubes [page 49, ll. 10–11] are within the large fiber 602 in the spaces around the smaller fibers 606, page 68, ll. 30–32) with a material selected from the group consisting of deuterium gas and D2O (deuterium gas/heavy water are also in these spaces, page 41, ll. 1–3). Rosen teaches that fuel within the hollow fiber includes a mixture of both the gaseous/liquid carbon nanostructures and additional deuterium, page 68, line 30 – page 69, line 8.
Claims 46, 47, 49, and 50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zecho (DE 10347237 A115).
In accordance with MPEP 2111.04, the preamble recitation of the intended results of “generating energy” (claim 46) and “inducing nuclear fusion” (claim 50) are not given weight as they simply express the intended result of the process steps positively recited thereafter (in the body of the claims).
Regarding claim 46, Zecho discloses a method allegedly capable of generating energy, comprising: contacting three-dimensional nanostructured carbon material (“The production of … D coated micro materials and/or nanomaterials such as … MWNT [multi-walled carbon nanotube] or the like wherein the micromaterials and/or nanomaterials are exposed to currents of H or D atoms on a suitable substrate,” page 5); and transmuting said deuterium to produce a plurality of 4He atoms and energy: Like the preamble, this recitation is also interpreted as non-limiting under MPEP 2111.04. The transmutation (and subsequent energy and 4He generation) is not a performable step but is instead a result that follows from the forecited contacting step. Because Zecho discloses the claimed steps, then if Applicant’s performance of these steps allegedly leads to nuclear fusion, element transmutation, energy, and 4He generation, then so allegedly should/may/shall/might Zecho’s performance of these same steps.
Regarding claim 47, Zecho anticipates all the elements of the parent claim, and further discloses wherein said three-dimensional nanostructured carbon material comprises carbon nanotubes (“The production of … D coated micro materials and/or nanomaterials such as … MWNT [multi-walled carbon nanotube] or the like wherein the micromaterials and/or nanomaterials are exposed to currents of H or D atoms on a suitable substrate,” page 5).
Regarding claim 49, Zecho anticipates all the elements of the parent claim and further discloses wherein said carbon nanotubes consist essentially of multi-wall carbon nanotubes (“The production of … D coated micro materials and/or nanomaterials such as … MWNT [multi-walled carbon nanotube] or the like wherein the micromaterials and/or nanomaterials are exposed to currents of H or D atoms on a suitable substrate,” page 5).
Regarding claim 50, Zecho discloses a method allegedly capable of inducing nuclear fusion by infiltrating multi-wall carbon nanotubes with a material selected from the group consisting of deuterium gas and D2O (“The production of … D coated micro materials and/or nanomaterials such as … MWNT [multi-walled carbon nanotube] or the like wherein the micromaterials and/or nanomaterials are exposed to currents of H or D atoms on a suitable substrate,” page 5).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code 103 not included in this action can be found in a prior Office action.
Claims 2, 14, 15, 35, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Arata.
Regarding claim 2, Arata anticipates all the elements of the parent claim and further discloses wherein 4He is generated in an amount of said three-dimensional nanostructured carbon material (“the at least two hydrogen isotope atoms are reacted with each other to generate a helium molecule in addition to the heat,” ¶ 15) but does not explicitly recite the claimed rate or the temperature.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to try a production rate of at least ten 4He atoms per hour per microgram and to do so at 0°C, since it has been held that discovering the optimum value of a result-effective variable (this case, production rate and temperature) involves only routine skill in the art.
Regarding claim 14, Arata anticipates all the elements of the parent claim including the production of 4He atoms (“the at least two hydrogen isotope atoms are reacted with each other to generate a helium molecule in addition to the heat,” ¶ 15) but does not explicitly disclose their energy value.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have produced 4He atoms having an energy of less than 1 keV, since it has been held that discovering the optimum value of a result-effective variable (this case, energy value) involves only routine skill in the art. The skilled artisan would have been motivated to perform the method of Arata at low energy levels in order to protect the delicate equipment from damage or because fusion at higher temperatures was known to require a large, complex, and expensive enclosure.
Regarding claim 15, Arata teaches all the elements of the parent claim including the production of 4He atoms (“the at least two hydrogen isotope atoms are reacted with each other to generate a helium molecule in addition to the heat,” ¶ 15) but does not explicitly disclose their energy value. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have produced 4He atoms having an energy of less than 100 eV, since it has been held that discovering the optimum value of a result-effective variable (this case, energy value) involves only routine skill in the art. The skilled artisan would have been motivated to perform the method of Arata at low energy levels in order to protect the delicate equipment from damage or because fusion at higher temperatures was known to require a large, complex, and expensive enclosure.
Regarding claim 35, Arata anticipates all the elements of the parent claim including the production of 4He atoms (“the at least two hydrogen isotope atoms are reacted with each other to generate a helium molecule in addition to the heat,” ¶ 15) but does not explicitly disclose their energy value.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have produced 4He atoms having an energy of less than 1 keV, since it has been held that discovering the optimum value of a result-effective variable (this case, energy value) involves only routine skill in the art. The skilled artisan would have been motivated to perform the method of Arata at low energy levels in order to protect the delicate equipment from damage or because fusion at higher temperatures was known to require a large, complex, and expensive enclosure.
Regarding claim 36, Arata teaches all the elements of the parent claim including the production of 4He atoms (“the at least two hydrogen isotope atoms are reacted with each other to generate a helium molecule in addition to the heat,” ¶ 15) but does not explicitly disclose their energy value. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have produced 4He atoms having an energy of less than 100 eV, since it has been held that discovering the optimum value of a result-effective variable (this case, energy value) involves only routine skill in the art. The skilled artisan would have been motivated to perform the method of Arata at low energy levels in order to protect the delicate equipment from damage or because fusion at higher temperatures was known to require a large, complex, and expensive enclosure.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Arata in view of Dijkhuis (WO 90/0030116).
Regarding claim 11, Arata anticipates all the elements of the parent claim but does not explicitly disclose that the method is performed at or below room temperature.
Dijkhuis does. Dijkhuis is in the same art area of cold fusion reactors and teaches a method for alleged cold fusion (“fusion,” claim 1) using deuterium gas (“the nuclear fusion fuel is deuterium,” claim 2) at or below room temperature (“the gas temperature is below room temperature,” claim 8). The skilled artisan may have been motivated to perform the method of Arata below room temperature in order to protect the delicate equipment from damage or because fusion at higher temperatures was known to require “installations of such enormous size and complexity that only the richest and technologically most advanced nations can afford them,” Dijkhuis, page 1.
Regarding claim 12, the above-described combination of Arata with Dijkhuis teaches all the elements of the parent claim, and Dijkhuis additionally teaches wherein the alleged deuterium-fueled nuclear fusion method is performed at a temperature ranging from 20°C to -100°C (“the gas temperature is below room temperature,” claim 8). The skilled artisan may have been motivated to, prior to the effective filing date of the invention, perform the method of Arata at or below 20°C for the reasons cited above in response to claim 11.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LILY C GARNER whose telephone number is (571)272-9587. The examiner can normally be reached 9-5 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Keith can be reached at (571) 272-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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 “Plasmas must meet three conditions for fusion to occur, including reaching sufficient temperature, density, and [confinement] time.” The Science of Fusion Where triple product reigns supreme” <https://usfusionenergy.org/science-fusion>. Last accessed May 12, 2025.
3 Id.
4 Id.
5 How Long is the Fuse on Fusion? Springer Nature Switzerland AG 2020, pages 85–86.
6 What will ITER do? <iter.org/fusion-energy/what-will-iter-do>. Last accessed May 12, 2025.
7 Achieving Fusion Ignition. <lasers.llnl.gov/science/achieving-fusion-ignition>. Last accessed May 12, 2025.
8 Tollefson, Jeff, and Elizabeth Gibney. "Nuclear-fusion lab achieves ‘ignition’: What does it mean?." Nature 612.7941 (2022): 597-598.
9 Thomas, William. National Ignition Facility Achieves Long-Sought Fusion Goal. Dec 16 2022. AIP News article.
10 Temperatures for Fusion, Department of Physics and Astronomy, Georgia State University webpage.
11 e.g., “Carbon nanotubes (CNTs) have demonstrated extraordinary electronic, optical, and mechanical and integrated into functional devices such as integrated circuits, biomedical imaging and sensing, electromechanical systems, and super-stretchable ropes for three decades” and see Figure 1 from Zhang et al. Emerging Internet of Things driven carbon nanotubes-based devices. <sciopen.com/article/10.1007/s12274-021-3986-7>. Last accessed May 12, 2025.
12 “Infiltrate.” Merriam-Webster’s Collegiate Dictionary, 12th ed., Merriam-Webster, 2026, p. 824.
13 “deuterium atoms fuse and forming helium-4 which has a lot of energy - so much energy that it is unstable, so the atom discharges some of this energy by releasing a neutron, proton, or gamma ray” <undsci.berkeley.edu/teach-resources/products-of-deuterium-fusion>. Last accessed May 12, 2025.
14 See the attached 115-page foreign reference with Examiner highlights.
15 See the attached 22-page foreign reference with Examiner highlights.
16 See the 36-page foreign reference in the file 05/15/2025.