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 36, 38-39, 42-43, and 49-50 are under examination.
Claim 48 and claim 52 each has a header of Previously Presented, but the headers should instead be Withdrawn.
Response to Amendment
Applicant’s amendments overcome the 112(d) rejection, which is withdrawn.
Applicant’s amendments to the claims have provided some clarifications per the indefiniteness issues, to the extent that Examiner was able to somewhat reasonably apply prior art to the dependent claims; however, numerous issues persist, which Examiner has attempted to point out in the below 112(b) rejection section. Examiner notes for Applicant’s sake that the prior art cited herein is applied as best understood by Examiner—in other words, if further amendments/clarifications are needed/made, then the prior art may no longer be applicable.
Response to Affidavit
Applicant's Affidavit dated 3/29/2026 has been fully considered but is not persuasive for the reasons detailed below.
The Affidavit does not demystify the claimed subject matter under scrutiny. The Affidavit states on pages 2–3 that cadmium, lead, and bismuth targets were “reacted with” the “invented transmutation technology,” and the result was effectively nothing for the cadmium and lead, but the bismuth targets displayed alpha radiation activity similar to Ac-225 or Ra-223. Bismuth has an atomic number of 83. Radium and Actinium have atomic numbers of 88 and 89, respectively. It is entirely unclear how the bismuth sample is gaining five or six protons to transmutate into radium or actinium, and it is further entirely unclear what role the mercury compound plays in this conversion. The Affidavit does not mention the inventive mercury compound whatsoever. The Affidavit concludes (page 7) that actually the behavior of the measured radiation is “very unlikely” in the bismuth sample to be from actinium or radium. Therefore, the Affidavit does not shed light on what nuclear reactions are occurring in the bismuth sample, why nothing happened with the cadmium or lead samples, what role the inventive mercury compound plays in the transmutation, or whether or not the suspected Ac-225 or Ra-223 were ever present to begin with. Finally, the Affidavit does not support the operability or enablement of the claimed subject matter because the Affidavit only provides possible support for something unknown occurring with bismuth, but Applicant’s invention does not mention bismuth whatsoever in the disclosure, so the overlap between the experiments described in the Affidavit and the instant invention is inadequate.
Response to Arguments
Applicant's arguments, see Remarks dated 3/29/2026, have been fully considered but they are not persuasive for the reasons detailed below.
Applicant argues on page 10 of the Remarks that the invention could be either fusion or fission. Applicant’s invention creates electricity from the transmutation of a “paramagnetic and excited state mercury-based compound,” claim 1. This compound is fabricated as described in WO2016/181204A1 (hereinafter “WO204”), also by Applicant, as stated in the paragraph bridging pages 6–7 of the instant Specification. WO204 repeatedly states that room temperature nuclear fusion is responsible for the alleged transmutation capabilities of the claimed mercury compound:
“During the production of the mercury based compound and hence during
the reaction of the liquid mercury with the mineral acid, some of the nuclei of
the mercury metal ions are combined with some other nuclei of the mercury metal ions at room temperature. In this way not only the mercury based compound, but also new elements including H, C, N, 0, S, Cl, Nb, Ta, Zr, Ru and Ni are formed as a fusion product,” WO204, page 7
“…a fusion reaction has taken place,” WO204, page 7
“The energy present in the mercury based compound is thus used to react with nuclei of the target element … and generates fusion energy. It is believed that this is due to the binding energy between the incoming and outgoing components of the transmutation of the elements, i.e. a fusion reaction takes place between the mercury based compound and the target material,” WO204, page 8
“Advantageously the mercury based compound is used as a source of energy for transmutation of elements to create many new elements,” WO204, page 9
“This means that through the addition of the mercury based compound to nuclei
having a proton number of less than 28 a fusion process is started which releases energy (exothermic reaction}, i.e. in the form of subatomic particles. This energy can be used for the generation of electricity and many other applications,” WO204, page 11
“The mercury based metal compound can thus be used for the transmutation of elements and the production of energy from fusion reactions alone,” WO204, page 11
WO204 does not suggest fission—rather than fusion—and thus Examiner finds Applicant’s argument to be unsubstantiated.
Applicant’s remaining 101 and 112(a) arguments are directed towards the Affidavit, which was already addressed by Examiner above. Accordingly, the 101 and 112(a) rejections are MAINTAINED.
Regarding the 102 rejections, these arguments are moot because they are directed towards limitations newly added into the claims, which are therefore addressed in the 102 rejection section below.
Priority
This application is treated with a priority date of June 1, 2021 for the reasons explained in the 10/29/2025 Non-Final Rejection.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the converter and x-ray energy converter (claim 36) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. The Figures appear to show a single converter, not two distinct converters.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 36, 38-39, 42-43, and 49-50 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 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 nuclear fusion which Applicants identify as emanating from “a paramagnetic and excited state mercury-based compound.” Claim 36, for example, recites: (emphases added)
an electric power generation system comprising: (i) a reactor for capturing energy released by a conversion of at least one isotope of one element of the periodic table to at least one isotope of another element; (ii) a converter coupled to the reactor that is adapted to convert the captured energy into electrical energy; (iii) a paramagnetic and excited state mercury-based compound as a source of transmutation energy for transmutation of the at least one isotope and generation of the electrical energy captured from the conversion of the energy; and an x-ray energy converter for directly converting x-ray emission into the electrical energy...
Dependent claim 38 further delineates that the alleged reaction comprises contacting the mercury with hydrogen, deuterium, lithium, or boron. Claim 50 adds a list of possible mechanisms for producing the claimed electrical power.
The claimed transmutation occurs via nuclear fusion, as explained in the Specification in the paragraph bridging pages 6–7 when citing WO2016/181204A1 (hereinafter “WO204”), also by Applicant, which details how the claimed transmutative mercury compound allegedly works. Applicant’s invention creates electricity from the transmutation of a “paramagnetic and excited state mercury-based compound,” claim 1. WO204 repeatedly states that room temperature nuclear fusion is responsible for the alleged transmutation capabilities of the claimed mercury compound:
“During the production of the mercury based compound and hence during
the reaction of the liquid mercury with the mineral acid, some of the nuclei of
the mercury metal ions are combined with some other nuclei of the mercury metal ions at room temperature. In this way not only the mercury based compound, but also new elements including H, C, N, 0, S, Cl, Nb, Ta, Zr, Ru and Ni are formed as a fusion product,” WO204, page 7
“…a fusion reaction has taken place,” WO204, page 7
“The energy present in the mercury based compound is thus used to react with nuclei of the target element … and generates fusion energy. It is believed that this is due to the binding energy between the incoming and outgoing components of the transmutation of the elements, i.e. a fusion reaction takes place between the mercury based compound and the target material,” WO204, page 8
“Advantageously the mercury based compound is used as a source of energy for transmutation of elements to create many new elements,” WO204, page 9
“This means that through the addition of the mercury based compound to nuclei
having a proton number of less than 28 a fusion process is started which releases energy (exothermic reaction}, i.e. in the form of subatomic particles. This energy can be used for the generation of electricity and many other applications,” WO204, page 11
“The mercury based metal compound can thus be used for the transmutation of elements and the production of energy from fusion reactions alone,” WO204, page 11
Therefore, Applicant asserts that the present invention is for production of useful electricity from nuclear fusion (“…a source of energy for transmutation of elements and generation of energy…nuclear transmutation…occurs…through nuclear reaction, in which an outside particle reacts with a nucleus,” Specification, pp. 1–2) and acknowledges the failures of previous attempts at doing so (e.g., “[T]he present transmutation reactor solves the problem associated with thermonuclear fusion reactor,” (p. 33).
However, despite the failure of all others hitherto, Applicant claims to have overcome the tremendous barriers known in the art and invented a system for achieving fusion yielding a positive energy output without meeting the accepted and established conditions necessary for fusion to occur, known as the Lawson criterion1. For one, fusion on Earth requires temperatures several orders magnitude greater than 15 million degrees Celsius temperature at the sun’s core2. Mainstream nuclear science reckons that the requisite temperature for fusion on Earth is 100 million degrees Celsius or more. 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, claim 36 describes a process of nuclear transmutation, and the Specification at pp. 4–5 states that this occurs “up to 1700 C.”
Applicants envisage that the invention “will be a huge reduction in costs and will be inexhaustible, Safe, clean and carbon free source of electricity,” Specification, p. 5. Among the disclosed and asserted utilities are the following:
more energy produced than conventional fusion: “Whereas in the present invention there will be energy released…which will be many times [that of conventional] hydrogen fusion energy,” Specification, p. 6;
fulfills “a need for compact and cost effective method, device, apparatus and system that produces charged particles, X-rays and heat” without producing “destructive” neutrons, Specification, p. 8
“Clean, Safe, Carbon free Sustainable, and Zero emission. No greenhouse gases, No fuel spillage, No radioactive waste, No pollution[.] It doesn't emit harmful toxins like carbon dioxide or other greenhouse gases into the atmosphere,” Specification, p. 8;
“Off Grid , Onsite power generation, and not dependent on any weather conditions, Power on-demand using existing grid infrastructure . Power can be made available to remote places, where Grid infrastructure is not available. It is more economical and needs less land than other renewable technologies,” Specification, p. 8
“The method includes using an X-ray energy converter and charged particles converter to capture the X-ray and Charged Particles energy, convert them into electrical energy and store the electric energy in storage devices,” Specification, p. 9
“There will be efficiency of over 80% for conversion of energy into electricity,” Specification, p. 10
massive, Gigawatt amounts of electricity; can be used for everything from water desalination to rockets: “Electricity production device of the present invention can be from kilowatts to Gigawatts, but not limited to it. It will be grid and off grid for all kinds of electricity applications such as for Residentials, Commercials, Industrials, Agricultures, Desalination of water, Office…Sport complex, Entertainment, Medical Hospitals, Engineering, Transportation, Universities, Communication, Outdoors, Spacecraft, Rockets, fuel and so on,” Specification, pp. 10–11
enabling a 30-day trip to Mars: “Transmutation pulse propulsion, power generation, rocket, fuel will just need few grams of paramagnetic and excited state mercury based compound with target elements such as hydrogen or fissionable element to allow a one-way transit time to Mars of 30 days. This reaction releases a tremendous amount of energy, of which some is released as gamma rays and some is transferred as kinetic energy,” Specification, p. 36
The Specification describes radiation activity observed in experimental settings (see Spec. at pages 56–57), but does not demonstrate a release of energy greater than the amount of energy input, i.e., net positive energy such as for producing useful electricity. 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 lack of any serious experimental details, or of any supporting evidence from a third party, also weigh in favor of finding that the claimed subject matter, if even operative, lacks the real-world value required by 35 U.S.C. 101.
Current publications and documents evidence a consensus in the scientific community that there is yet to be a fusion technique—thermonuclear or cold—capable producing an energy gain sufficient for practical applications. As noted Dylla,3 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 ITER4 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, thermonuclear (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 system5 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 community.6,7
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 to (a) already be in possession of a nuclear fusion device that operates without the extreme temperatures needed for traditional fusion, and (b) that such a device achieves a net energy gain would be questionable to a person of ordinary skill in the art.
To accomplish this feat, Applicant’s device relies on “a paramagnetic and excited state mercury-based compound,” claim 36, and specifically its “large internal resting energy,” Specification at page 57, for nuclear fusion-induced element transmutation.
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 University8 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 device for taking advantage of the “resting energy” of “a paramagnetic and excited state mercury-based compound” 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 “a paramagnetic and excited state mercury-based compound” of claim 36 is repeatedly disclosed as posing no radiation risk to the surrounding structure and creating “no radioactive waste” (see Spec. at page 8).
The apparatus of the instant invention operates at low temperatures: “up to 1700 C,” Specification at pages 5, 17, 18, 19, and 21.
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 temperature of 1,700 degrees Celsius is equivalent to 1,973 Kelvin. Therefore, Applicant’s invention appears to fit squarely in the field of low-temperature nuclear reactions (LENR), or cold fusion.
In summary, Applicant’s invention tries to “have it both ways,” citing enormous output energies for solving all the world’s energy woes (e.g., see Spec. at pages 8 and 37) but without any of the consequences (e.g., pollution, radiation, and the necessity of confining an extremely hot nuclear reaction without melting the reactor walls).
Applicant’s cold nuclear fusion allegedly occurs due to the inherent property of a “paramagnetic and excited state mercury based compound having very large resting energy,” Spec. at page 39. However, a review of the scientific literature finds no support whatsoever for such a compound.
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.
The claimed invention for generating and maintaining an exothermic cold fusion reaction sufficient to be used as a viable energy source via the inherent properties of a “paramagnetic and excited state mercury based compound” (claim 36) 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 create useful electricity 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 36, 38-39, 42-43, and 49-50 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 net energy from a nuclear fusion reaction is considered as being Applicant's specified utility (e.g., “in the present invention there will be energy released…which will be many times [that of conventional] hydrogen fusion energy,” Specification, p. 6; for the “generation of the electrical energy,” claim 36). Applicant’s invention is disclosed as operating at energy ranges (“up to 1700 C,” Specification at pp. 4–5) 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) net-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. 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 36, 38-39, 42-43, and 49-50 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 36, 38-39, 42-43, and 49-50 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 36, 38-39, 42-43, and 49-50 are rejected under 35 U.S.C. 112(a) because the best mode contemplated by the inventor(s) has not been disclosed. Evidence of concealment of the best mode is based upon the disclosure of the Parekh (US 2018/0322975 A1) publication cited herein. Parekh discloses a reactor having a paramagnetic and excited state mercury-based compound as a source of cold fusion energy, i.e., Applicant’s claimed invention. However, as shown, this device remains unproven and unworkable for the purposes of useful electricity generation. Accordingly, if Applicant's cold fusion device is operative, while Parekh’s is not, then the Examiner must conclude that some essential information is missing from Applicant's disclosure that makes Applicant's invention operative.
Claims 36, 38-39, 42-43, and 49-50 are further 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 asserts they have produced an operative device for achieving self-sustained nuclear fusion for useful electricity production (claim 36) in a low-temperature environment (“up to 1700 C,” Specification at pp. 4–5).
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 (e.g., see claim 36) are very broad: a mercury compound emanates massive amounts of energy, which is absorbed in a converter, resulting in the world’s first-ever net-positive nuclear fusion device.
(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 substantial source of marketable commercial energy; as currently disclosed by Applicant, cold fusion 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.
(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.
(D) The level of one of ordinary skill: The level of ordinary skill in the art is a skilled artisan who can create and operate nuclear fusion reactors using conventional technology that do not produce net positive energy.
(E) The level of predictability in the art: Low-temperature nuclear fusion experiments are predictably unable to produce expected, reproducible, or meaningful empirical data.
(F) The amount of direction provided by the inventor: Applicant’s disclosure does not provide the necessary step-by-step guide to actually achieve the claimed end goal of self-sustained/breakeven nuclear fusion. The disclosure simply asserts that the invention operates as alleged due to the inherent properties of a mercury substance Applicant has previously fabricated.
(G) The existence of working examples: The Specification describes radiation activity observed in experimental settings (see Spec. at pages 56–57), but does not demonstrate a release of energy greater than the amount of energy input, i.e., net positive energy such as for producing useful electricity. 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. Nor is there evidence that the provided example has been reliably reproduced or that it enjoys mainstream support.
(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.
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(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.
Claims 36, 38-39, 42-43, and 49-50 are 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claim 36 is rejected under 35 U.S.C. 112(b), as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted structures are: the structures that make Applicant’s cold fusion apparatus operative, while all those in the prior art are not operative. This rejection is related to the above 112(a) best mode rejection. The Examiner can only conclude that if Applicant’s apparatus is operative, but Parekh’s (US 2018/0322975 A1) is not, then there must be omitted elements that are critical or essential to the invention.
Claim 36 recites “the at least one isotope” in (iii). There is insufficient antecedent basis for this limitation in the claim. Specifically, (i) introduced two distinct “at least one isotope” phrases, and it is unclear which of these is being referred back to in (iii).
Claim 36 at the end of (iii) recites “generation of the electrical energy captured from the conversion of the energy.” There is insufficient antecedent basis for this limitation in the claim. Specifically, (i) recites that conversion led to capturing energy, and (ii) recites that this captured energy could be converted into electrical energy. Therefore, it does not follow that (iii) instead recites that the electrical energy is what was captured.
In (iv) of claim 36, it is unclear what the subject of “comprising” is. What is comprising the layers—the x-ray energy converter or the electrical energy?
In (iv) of claim 36, the term “adsorb” is repeatedly used. This term does not make sense here. Examiner believes Applicant intends to say “absorb.” Adsorption is a surface-level phenomenon, whereas Applicant appears to be reciting a nuclear phenomenon, which is clearly not surface-level.
Claim 36 recites a “converter” in (ii) and then an “x-ray energy converter” in (iv). The claim therefore recites two distinct converters. It is unclear if this was intentional. The converter in (ii) recites that the captured energy is converted into electrical energy. The converter in (iv) recites that x-rays are converted into the electrical energy. Are these distinct converters that are converting distinct energies into electrical energy? If so, why is “the” electrical energy recited in (iv) if this is different from the electrical energy of (ii)? And if they are not distinct converters, then “captured energy” must be the same as “x-ray emission,” which, if that is the case, then it is improper to use two different terms to describe the same feature.
Claim 43 recites “each…are separated by a voltage.” This limitation is unclear because (a) “each” should be followed by a singular verb, so it is unclear if the claim recites that each one of the layers is separated or if it recites that pluralities of layers are separated, and because (b) it is unclear how a “voltage,” which not a physical structure, can separate physical layers, and further because (c) it is unclear scientifically speaking how a voltage is “separated…between about 15% and about 25%”—what parameter are these percentages defining? It is further unclear how the final term “respectively” is intended to be interpreted; this term typically is used to imply sequence, e.g., the cat and the dog were black and brown, respectively. This would mean the cat was black and the dog was brown. However, claim 43 has no apparent first and second sequential structures or functions.
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 36, 38, 39, 42, 43, 49, and 50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parekh (US 2018/0322975 A1).
Regarding claim 36, Parekh discloses an electric power generation system comprising: (i) a reactor for capturing energy released by a conversion of at least one isotope of one element of the periodic table to at least one isotope of another element (“The mercury based metal compound can thus be used for the transmutation of elements …. This means that the energy from aneutronic fusion can be captured using direct conversion,” ¶ 69); (ii) a converter coupled to the reactor that is adapted to convert the captured energy into electrical energy (“This means that the energy from aneutronic fusion can be captured using direct conversion,” ¶ 69 and “released/generated energy is used for production of electricity,” ¶ 173); (iii) a paramagnetic and excited state mercury-based compound (“In an advantageous embodiment the mercury based compound is paramagnetic,” ¶ 39 and “the mercury is present in a state that is excited,” ¶ 52) as a source of transmutation energy for transmutation of the at least one isotope (“wherein the mercury based compound reacts with the metal target material to transmutate elements,” ¶ 43) and generation of the electrical energy captured from the conversion of the energy (“This energy can be used for the generation of electricity,” ¶ 67); and (iv) an x-ray energy converter for directly converting x-ray emission into the electrical energy (“the energy from aneutronic fusion can be captured using direct conversion,” ¶ 69) comprising: one or more electron emitter layers in electrical communication with one or more electron collector layers, wherein the one or more electron emitter layers adsorbs x-rays and emits electrons that are adsorbed by the one or more electron collector layers (“Direct conversion involves capturing charged particles to create a current,” ¶ 69; Examiner notes that the charged particles include electrons because Parekh’s nuclear fusion implies the presence of plasma, which comprises free electrons9; additionally, proper aneutronic fusion necessarily produces X-rays that may be converted directly to electricity10).
Regarding claim 38, Parekh anticipates all the elements of the parent claim and further discloses wherein the nuclear transmutation energy apparatus comprises a Paramagnetic and excited state mercury-based compound as a source of energy with target elements which allow transmutation (all of this was cited by the Examiner above in response to claim 36), selected from the group consisting of: hydrogen, deuterium, lithium, boron (e.g., “the target element is selected from a group comprising hydrogen,” ¶ 171).
Regarding claim 39, Parekh anticipates all the elements of the parent claim and further discloses that the claimed system is adapted to use any element of the periodic table, its alloy/compound/salts present in liquid, gaseous or solid or molten state (e.g., “the target element is selected from a group comprising hydrogen,” ¶ 171).
Regarding claim 42, Parekh anticipates all the elements of the parent claim and further discloses wherein the x-ray energy converter is nested concentrically (as no object has yet been identified to which the x-ray converter is concentric, Examiner cites the room/building in which the x-ray converter is located as a reasonable exterior chamber to which the recited x-ray converter is interior to, thereby making said x-ray converter concentrically nested within said room/building) to collect x-rays of different energies (as Applicant is aware, the above-cited x-ray conversion-into-electricity system is not discriminatory—X-rays of different energies will be collected if any X-rays are collected at all).
Regarding claim 43, Parekh anticipates all the elements of the parent claim and further discloses wherein each electron collector layer of the one or more electron collector layers are separated by a voltage difference of between about 15% and about 25% relative to the next electron collector layer, respectively (as detailed in the above indefiniteness rejections, the intended structural and functional meaning of this claim is entirely unclear; Examiner would cite the above electron/plasma per claim 36).
Again, as noted in the above indefiniteness rejections, it is unclear what is the subject that evidently has a voltage difference of “between about 15% and about 25%...”. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have optimized the claimed range as recited, 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. In this particular case, due to the indefiniteness of the claim, Examiner is unsure if the skilled artisan would be aware what they were supposed to be optimizing. However, if the feature being optimized is indeed related to a set voltage, i.e., an operator sets the voltages, Examiner notes that this is a feature frequently optimized, often via computer simulations or simple trial-and-error experiments, in systems including plasma systems.
Regarding claim 49, Parekh anticipates all the elements of the parent claim and further discloses wherein the released energy comprises one or more out of the following group of types of energy: the energy of charged particles, electromagnetic waves selected from gamma rays, X-rays, light and/or radio waves, heat, potential energy, resting energy, kinetic energy, energetic particles and packets of energy (“the energy from aneutronic fusion can be captured using direct conversion,” ¶ 69).
Regarding claim 50, Parekh anticipates all the elements of the parent claim and further discloses one or more of the following subsystems for generation of electrical energy: (i) a high-tech transformer which converts the charged particles energy into electric circuit as electricity, (ii) an induction system adapted to convert charged particles energy into electricity, (iii) Electrostatic direct collectors to convert charged particles energy into electricity, (iv) a wiring system to generate a difference in potential or voltage in the wiring used to generate electrical energy, (v) an inductive direct energy conversion system for generation of electricity by the moving charged particles in the magnetic field, (vi) a capacitor to convert the generated charge into electrical energy, (vii) a microwave system, (viii) a direct energy conversion system adapted to capture the captured charged particles to directly convert the energy of the captured charged particles into electric power (“This means that the energy from aneutronic fusion can be captured using direct conversion,” ¶ 69).
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 “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 visited October 27, 2025).
2 Id.
3 How Long is the Fuse on Fusion? Springer Nature Switzerland AG 2020, pages 85–86.
4 What will ITER do? <iter.org/fusion-energy/what-will-iter-do>
5 https://lasers.llnl.gov/science/achieving-fusion-ignition
6 Tollefson, Jeff, and Elizabeth Gibney. "Nuclear-fusion lab achieves ‘ignition’: What does it mean?." Nature 612.7941 (2022): 597-598. <https://www.nature.com/articles/d41586-022-04440-7>.
7 Thomas, William. National Ignition Facility Achieves Long-Sought Fusion Goal. Dec 16 2022. AIP News article. <https://ww2.aip.org/fyi/2022/national-ignition-facility-achieves-long-sought-fusion-goal#>.
8 Temperatures for Fusion, Department of Physics and Astronomy, Georgia State University: <http://hyperphysics.phy-astr.gsu.edu/hbase/NucEne/coubar.html>.
9 “Fusion, the power that drives the sun and stars, combines light elements in the form of plasma — the hot, charged state of matter composed of free electrons and atomic nuclei — that generates massive amounts of energy.” <www.pppl.gov/about/about-plasmas-and-fusion>
10 “Aneutronic fusion produces energy in the form of charged particles … Some of the energy radiated as X-rays may be converted directly to electricity.” <en.wikipedia.org/wiki/Aneutronic_fusion> under the heading “Energy capture”
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