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 .
Election/Restrictions
Applicant's election with traverse of Invention I, Figure 3, and Species A, corresponding to claims 1-11 and 13-17, in the reply filed on 8/5/2025 is acknowledged. The traversal is on the grounds that the three inventions are “fundamentally a single inventive concept” and the Examiner’s restriction requirement does not show “genuine lack of unity of invention.” This is not found persuasive because a single inventive concept and a lack of unity are the standards applied to 371 PCT cases and not to domestic cases. As laid out on pages 2-3 of the restriction requirement in the file 6/6/2025, each Invention is directed towards a product distinct from each other Invention. For example, the nuclear reactor of Invention I is a distinct invention from Invention III, which is a laser system per se. There is a serious search burden at least because the classifications for nuclear reactors and for lasers are almost entirely non-overlapping, with each of these technologies encompassing hundreds if not thousands of their own CPC symbols. Therefore, proper searches for the nuclear reactor and for the laser system would require nearly double the search burden and examination time of one of these individually.
The requirement is still deemed proper and is therefore made FINAL.
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 neutron absorber (e.g., claim 6) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 reactor (e.g., claim 1) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 optical cavity (e.g., claim 1) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 optical path modification device (e.g., claim 1) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 timing device (e.g., claim 1) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 spatial driver device (e.g., claim 1) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 optical element (e.g., claim 2) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 fusion material (e.g., claim 1) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 radiation output body and the material housing (e.g., claim 5) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 power generation unit (e.g., claim 6) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 volume structure (e.g., claim 11) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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 1–11 and 13–18 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—there 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 self-sustaining nuclear fusion.
Claim 1, for example, recites
A reactor system for a space application…a reactor comprising a fusion material; at least one satellite system positioned in an orbit above a geographical location of a planet, the satellite system being operably coupled to the reactor including the fusion material…a laser beam comprising a pulse from a certain of energy…to cause the laser beam…to interact with the fusion material.
Dependent claim 6 further delineates that this laser-fusion material interaction generates electrical power “by a fusion reaction and such that the power generation unit is configured to be able to convert the heat generated into electrical energy.”
The resulting electrical energy as recited in the claims is produced via self-sustaining nuclear fusion, which is known in the art as achieving ignition or breakeven and as meaning net-energy nuclear fusion where more power is output than was input1. Applicant acknowledges this definition in the Specification at ¶ 9: “…sustained fusion reactions with net energy production (meaning the energy produced by the fusion reactions is greater than the energy required to initiate and sustain the reactions) remains a major technical challenge.”
In the background of the Specification (¶¶ 2–11), Applicant acknowledges how all previous attempts at achieving said net-energy and commercially viable fusion reactors have failed:
“However, the [inertial confinement fusion {ICF}] process is still in the experimental stage and there are significant technical challenges to overcome before it can be considered a practical source of energy,” ¶ 6
“However, [magnetic confinement fusion {MCF}] is a more complex and costly process than ICF and there are still significant technical challenges to overcome before it can be considered a practical source of energy,” ¶ 8
“However, achieving sustained fusion reactions with net energy production (meaning the energy produced by the fusion reactions is greater than the energy required to initiate and sustain the reactions) remains a major technical challenge,” ¶ 9
“There are also other approaches to fusion energy being explored, such as magnetized target fusion and muon-catalyzed fusion. However, these approaches are still in the early stages of development and it is not yet clear if they will be viable as a source of energy,” ¶ 10
“[F]usion energy has the potential to be a clean and abundant source of energy, but significant technical challenges must be overcome before it can be considered a practical source of energy,” ¶ 11
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 producing net-energy nuclear fusion: “the high intensity pulse laser system provides enough energy to ignite and sustain fusion energy configured in a space application…the present invention offers advantages of generating fusion power through an efficient size, weight, and cost using the present high intensity lasers in space,” Specification at ¶ 21. Applicant’s specific asserted utility is a method of generating useful electricity from the excess heat (“thermal energy, claim 6”) emanating from the world’s first-ever achievement of breakeven nuclear fusion, see the Specification at ¶¶ 57–59 and ¶ 65:
“the invention can be applied to a variety of applications, including energy generation for power, spaceships, travel, other vehicles for air, land, and water, defense applications (e.g., satellite, aerospace, land and missile defense, submarines, boats), biotechnology, chemical, mechanical, electrical, and communication and/or data applications,” ¶¶ 2, 12, and 39
“The rotation of the turbine in a magnetetic [sic] field generate the electricity, and then it works as an electric generator for use on a power grid for a private or public power system,” ¶ 65
It is evident from the claims (specifically, claims 1, 6, and 7) and the rest of the disclosure that the specific and asserted utility is nuclear fusion ignition where the laser irradiates the “fusion material,” producing neutrons and heat that is absorbed/captured to generate electric power.
The Specification does not detail experiments performed by Applicant or by others. There is no disclosure of the specific mechanisms or operational parameters, that an ordinarily skilled artisan would recognize as capable of creating a self-sustaining fusion reaction on the scale needed to currently achieve the benefits noted above. The disclosure summarily sets forth, as best Examiner can tell, that the invention pertains to an ICF (inertial confinement fusion) device where lasers irradiate a target to initiate fusion. Examiner notes that this type of ICF is well-known in the art, e.g., these types of fusion experiments are regularly performed at the NIF (National Ignition Facility). However, even at NIF, they have failed to achieve net energy gain2. In contrast, the instant application does assert net energy gain.
The scientific consensus per net energy gain via nuclear fusion weighs in favor of finding that the claimed subject matter lacks the real-world value required by 35 U.S.C. 101.
Presently available publications and documents evidence a consensus in the scientific community that there is yet to be a fusion technique capable of producing an energy gain sufficient for practical applications. As noted by Dylla3, 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 capable of producing useful energy gain for practical applications. The NIF has 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 system5,6 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 community7,8.
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 (e.g., claims 1, 6, 8) to be in possession of a nuclear fusion method that operates so efficiently that it has achieved ignition, Specification at ¶ 21, or electricity-producing output energy (claim 6), would be considered highly questionable to a person of 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 University9 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 fusion method is capable of sustaining a fusion reaction to achieve breakeven. The disclosure provides no mechanism for achieving and maintaining the temperatures of hundreds of millions of degrees Kelvin known to be required to achieve nuclear fusion ignition.
For the present invention, which is directed to a fairly conventional ICF device that alleges an astonishing result, 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—a type of nuclear fusion still undergoing research—for generating and maintaining a fusion reaction sufficient to be used as a viable energy source 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 prophecies) 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 fusion ignition, i.e., the causing and the capability to generate 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 device 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 1–11 and 13–18 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. Applicant alleges the production of useful electricity from a self-sustaining—i.e., ignition or breakeven—nuclear fusion system. In order for such a system to exist, clearly, breakeven/ignition must first be achieved, anywhere in the world; independent scientists would then attempt to verify it via reproduction of the experiment(s). As detailed above, no laboratory on Earth has yet achieved net energy gain from a nuclear fusion system.
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 1–11 and 13–18 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 1–11 and 13–18 are 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 1–11 and 13–18 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, ¶¶ 2–11). Even so, Applicant believes they have produced an operative system for achieving nuclear fusion for useful energy production, see Specification at ¶ 21.
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 claims 1, 6, and 8) are very broad: a laser-initiated fusion reaction creates neutrons and heat, resulting in the world’s first-ever net-positive nuclear fusion system. The disclosure does not supply adequate guidance for how the claimed result follows from the recited structures.
(B) The nature of the invention: The nature of the invention, i.e., the subject matter to which the claimed invention pertains, is nuclear fusion.
(C) The state of the prior art: The prior art discloses laser-induced ICF (inertial confinement fusion); all prior art ICF devices and methods require more input energy than they produce.
(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 that do not produce net energy gain.
(E) The level of predictability in the art: Thermonuclear fusion devices have failed to make serious advances towards practical applications after more than half a century of research. The skilled artisan would not predict any major advances or breakthroughs in the near future.
(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 describes manipulating lasers to cause ICF, which is established technology.
(G) The existence of working examples: No working example is provided.
(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 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.
Claims 1–11 and 13–18 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 1 recites, in lines 7-8, “a laser beam comprising a pulse from a certain of energy power intensity to a higher energy power intensity.” It is unclear what is meant by the term “certain” in this context. Intensity is a parameter that is typically measured in Watts/m2 rather than by any type of certainty.
Claim 1 recites, in lines 7-8, “a laser beam comprising a pulse from a certain of energy power intensity to a higher energy power intensity to a higher energy power intensity.” Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “energy power intensity” appears to be used by the claim to mean “laser beam intensity,” while the accepted meaning is that energy, power, and intensity are all distinct terms. Energy is typically measured in Joules, power in Watts, and intensity in Watts/m2. The term is indefinite because the specification does not clearly redefine the term.
Claim 1 recites in line 5 “a vacuum of 300 Torr and less.” This recitation appears to require that the pressure in the optical cavity is set to 300 Torr and then is actively decreased to a value less than 300 Torr. For the purposes of examination, Examiner assumes this is intended to recite “300 Torr or less”.
It is unclear why the “optical cavity” and “optical path modification device” clauses are indented to a greater degree than “a reactor” and “at least one satellite system” but to a lesser degree than “at least a pair of mirror devices” and “a timing device.” Specifically, indentation is typically used to show when a component includes a further subcomponent. In this case, it is unclear how/why the mirror devices and timing device would be subcomponents of the reactor and satellite system to a greater degree than the optical cavity and optical path modification device.
The term “free” in claim 1 is a relative term which renders the claim indefinite. The term “free” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what the intended interpretation of “free space” in line 6 of claim 1 is. Specifically, it is unclear what the difference would be between a length of free space versus a length of, perhaps, constrained space. Does “free” mean “open,” i.e., as opposed to a closed chamber of space? Additionally, the metes and bounds of a “free” space versus enclosed space are not explained or disclosed.
Claim 1 recites “the optical cavity being configured to increase an intensity of a laser beam comprising a pulse from a certain of energy power intensity to a higher energy power intensity propagating on a first optical path by circulating or reciprocating at least a portion of the laser beam from a light source having a pulse energy output power of 0.001 milli Joule to 1 Mega Joule on the first optical path.” The meaning of this clause is unclear. It is a run-on sentence, and it is difficult to discern which subjects are modified by which verbs. The terms laser beam, pulse, light source, optical path, and pulse energy output are indistinguishable. Are these all terms that simply mean “a pulsed laser beam”? Additionally, “circulating or reciprocating” is confusing because these do not both make sense with the language that follows. Reciprocation means back-and-forth movement. Therefore, the claim recites a pulse that moves back-and-forth…from a light source” but no secondary location is recited. The pulse moves back-and-forth from its point of origin, and what other point?
Claim 1 recites “the optical cavity being configured to increase an intensity of a laser beam.” It is unclear how a cavity, e.g., an open space, can be configured to increase the intensity of a laser beam. The laser beam’s intensity is a value controlled by the laser operator. The open space of a “cavity” cannot manipulate the intensity of a laser beam. For the purposes of examination, Examiner interprets this limitation to mean that, within the optical cavity, the laser beam is capable of being increased in its intensity.
Claim 1 recites, in lines 9-10, “a light source having a pulse energy output power of 0.001 milli Joule to 1 Mega Joule.” Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “pulse energy output power” appears to be used by the claim to mean “energy” (because energy is measured in Joules) while the accepted meaning is that energy and power are distinct terms. Energy is measured in Joules, and power is measured in Watts. The term is indefinite because the specification does not clearly redefine the term. Additionally, the phrase “laser beam from a light source” is redundant. It is unclear if Applicant is intentionally reciting a laser beam distinct from a light source, or if these terms are referring to the same feature. Additionally still, the phrase at the end “…on the first optical path” appears to be redundant. The clause already recited that the beam/pulse propagates on a first optical path.
The term “several” in claim 1, line 16, is a relative term which renders the claim indefinite. The term “several” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what the intended interpretation of “using a several of mirrors thereby the optical path modification device” of claim 1 is. Specifically, it is unclear what is the numerical cutoff of “several”—is it more than 2, more than 3 but less than 5, or something else?
Claim 1 at line 11 recites “an optical path modification device coupled to the optical cavity.” A “cavity” is an open space, and therefore it is unclear how the claimed device is coupled to an open space. For the purposes of examination, Examiner assumes the cavity has walls at least partially enclosing it, and the device is coupled to these walls.
In claim 1, line 12, it is unclear what the intended function of the term “spatial” is. What is the difference between changing a direction and changing a spatial direction?
Claim 1 at line 13 recites “a predetermined timing ranging from 0.001 microseconds to 3 seconds.” It is unclear if this means 0.001 microseconds – 3 seconds from the initial pulse, or if this means the direction is changed every 0.001 microseconds – 3 seconds, or something else.
Claim 1 at lines 13-14 recites “the laser beam propagating on the first optical path at a predetermined timing ranging from 0.001 microseconds to 3 seconds with the response time from 1 picosecond to 30 microseconds.” It is unclear what the “response time” is. No such response time has yet been defined. What is happening at 1 picosecond to 30 microseconds, and, additionally, is this happening after the initial laser pulse, or is it happening repeatedly every 1 picosecond to 30 microseconds?
Claim 1 at line 15 recites “a direction.” It is unclear what the relationship is between this direction and the “spatial direction” recited in line 12.
Claim 1 at line 15 recites “a second optical path that is outside of the first optical path.” It is unclear what is meant by “outside of,” as no axes or frames of reference have been recited.
Claim 1 at lines 14-18 recites “the laser beam…to interact with the fusion material after using a several of mirrors thereby the optical path modification device is configured to propagate the laser beam on the second optical path generating a high intensity pulse laser.” The meaning of this clause is unclear. It is a run-on sentence, and it is difficult to discern which subjects are modified by which verbs. Examiner cannot discern any structural or functional meaning from this clause.
Claim 1 at lines 17-18 recites “a high intensity pulse laser.” However, the laser, its beam, its pulses, et cetera, have already been recited. What is the relationship among these previous recitations and the newly introduced “high intensity pulse laser”?
The term “high intensity” in claim 1, line 17, is a relative term which renders the claim indefinite. The term “high intensity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The Specification at ¶ 81 simply states “a high intensity pulse laser is a type of laser that produces a highly concentrated and focused beam of light with a high level of power and a very short pulse duration.” The skilled artisan does not know what measurement of intensity counts as “high” versus “not so high” or “medium” or “low.”
Claim 1 at lines 19-20 recites “at least one of the mirror devices configured on the satellite system.” It is unclear what the mirror device is configured to do. Is it simply located within the satellite system?
Claim 1 at lines 20-21 recites “each of the mirror devices…and configured with the optical path modification device.” It is unclear what the mirror devices are configured to do. The term “configured” typically precedes a function or a capability.
Claim 1 at lines 19-23 respectively recites “at least a pair of mirror devices,” “at least one of the mirror devices,” each of the mirror devices,” “at least one the mirror device,” and “the mirror device.” These terms should be standardized. It is unclear how many and which mirror device(s) are being further defined after their initial introduction due to the use of similar-but-different terminology.
In claim 1, line 22, it is unclear what the intended function of the term “spatial” is. What is the difference between changing a position and changing a spatial position?
Claim 1 at lines 22-23 recites “a spatial position of the mirror device being coupled to the propagation of the laser beam.” It is entirely unclear what the intended meaning of the phrase “being coupled to the propagation of the laser beam” is.
Claim 1 at line 24 recites “a timing device configured with the optical path mechanism.” It is unclear what the timing device is configured to do, and how the optical path mechanism is involved.
Claim 1 recites the limitation "the optical path mechanism" in line 24. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 at lines 24-28 recites “a timing device configured with the optical path mechanism and having a predetermined frequency to adjust the spatial position of the mirror device such that the ti