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
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/3/25.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to: the breadth of the claims; the nature of the invention; the state of the prior art; the level of one of ordinary skill; the level of predictability in the art; the amount of direction provided by the inventor; the existence of working examples; and the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). In the instant matter, upon consideration of all the evidence related to each of these factors, and based on the evidence as a whole, claims 1-12 are found to lack enablement.
Breadth of the claims:
With respect to the breadth of the instant claims, the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. In the instant case, the claims specify a system for amplifying laser by reflecting said laser using a prism and mirrors is a sort of continuous figure-8 pattern. See e.g., Fig. 1. Read in light of the original disclosure, the scope of the claims includes using such a laser system to create a “temperature threshold conducive for a fusion reaction” at an intersection of lasers. See instant PgPub at para 15, and claim 2-3. Claim 1 notes this intersection point, and the disclosure describes placing a material therein, the material subject to the above noted temperatures is disclosed and claimed to be samarium, lanthanum, sulfur, or metal sulfides. See e.g., instant PgPub para 40 and claims 2-3. Further, the scope of the claims includes the instant disclosures’ explicit description of the above noted materials undergoing fusion resulting in the formation of “francium (Fr), ununennium (element 119), and/or other elements down group one of the periodic table.” Instant PgPub para 40.
Achieving nuclear fusion requires manipulating the fusion target such the two nuclei thereof actually overcome the repulsive electrostatic forces keeping them apart and form a new nuclei.1 Overcoming such electrostatic forces requires more than just extremely high temperatures, it also requires confinement of the target material The disclosure provides no explanation for any sort of confinement. Further, the disclosure provides no explanation for how one is to interact the reflected laser with a sample, or what the effect of the laser intersection point is, or even how the laser interacts with the target or the various mirrors and the prism. Thus, the scope of the claims includes all fusion confinement techniques, any type of laser, irrespective of if or how the lasers interact with a fusion target, and a limited number of fusion targets. Such a breadth of the claims weighs against enablement.
Nature of the invention:
The instant invention is directed to a system for using lasers to produce nuclear fusion reactions. See e.g., instant PgPub para 1. Nuclear fusion has been studied for about a century, and the first controlled fusion reactions on Earth were achieved approximately 70 years ago.2 However, achieving controlled fusion remains a difficult and highly speculative endeavor, and no known endeavors look to achieve fusion with a target comprising samarium, lanthanum, sulfur, or metal sulfides. Furthermore, lasers have been used in prospective fusion schemes to various ends. 3, 4 However, each such laser mediated fusion scheme relies on an entirely different mechanism and use of the respective lasers. Further, each such fusion scheme has a particular confinement scheme associated therewith. The instant invention is not limited in such a fashion. Rather, the nature of the instant invention is a laser that interacts with various optics such that it achieves fusion of samarium, lanthanum, sulfur, or metal sulfides. Thus, the nature of the instant invention is one that is highly speculative and incredibly complex. Such a nature of the instant invention weighs against enablement.
Level of one of ordinary skill:
The instant invention is directed to the field of nuclear fusion. The disclosure need only provide sufficient description for one of extremely high skill in the art to make and use the invention. Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 1310, 115 USPQ2d 2012, 2023 (Fed. Cir. 2015) ( "Only a sufficient description enabling a person of ordinary skill in the art to carry out an invention is needed."). The field of nuclear fusion requires the highest possible educational and practical experience, as is evidenced by the numerous academics and research institutes that dominate publications in the field.5 However, in determining the level of ordinary skill in the art of nuclear fusion, one must also look to the art itself. To wit, nuclear fusion remains inordinately difficult and expensive to achieve. That is say, despite the extremely high level of education and experience held by those in the field, the field itself is so speculative and difficult to practice that the effective level of ordinary skill in the art is low. That is to say that without explicit instruction and exacting detail, one of ordinary skill in the art of nuclear fusion is unlikely to be able to make or use any nuclear fusion scheme. The instant specification provides no disclosure as to nuclear confinement, laser parameters at the intersection for achieving fusion, or manipulation of samarium, lanthanum, sulfur, or metal sulfides in the context of the nuclear fusion. Such information is critical for understanding the invention, and one of ordinary skill in the art would be incapable of making or using the instant invention without guidance as to how to achieve the above features. As such, the level of one of ordinary skill weighs against enablement.
Level of predictability in the art and the amount of direction provided by the inventor:
The more that is known in the prior art about the nature of the invention, how to make, and how to use the invention, and the more predictable the art is, the less information needs to be explicitly stated in the specification. In contrast, if little is known in the prior art about the nature of the invention and the art is unpredictable, the specification would need more detail as to how to make and use the invention in order to be enabling. See, e.g., Chiron Corp. v. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d 1321, 1326 (Fed. Cir. 2004) ("Nascent technology, however, must be enabled with a ‘specific and useful teaching.’ The law requires an enabling disclosure for nascent technology because a person of ordinary skill in the art has little or no knowledge independent from the patentee’s instruction. Thus, the public’s end of the bargain struck by the patent system is a full enabling disclosure of the claimed technology." (citations omitted)). The instant invention is directed to the field of nuclear fusion, and the field is highly unpredictable. This is evidenced by the numerous speculative and unsuccessful efforts to achieve nuclear fusion that have occurred, and continue to occur.6 The instant invention provides little to no direction as to nuclear confinement, laser parameters at the intersection for achieving fusion, or manipulation of samarium, lanthanum, sulfur, or metal sulfides in the context of the nuclear fusion. As such, the claimed invention sits at the intersection of low predictability and limited amount of direction. This combination weighs against enablement.
The existence of working examples:
There is no evidence on the record of working examples yielding nuclear fusion. This weighs against enablement.
The quantity of experimentation:
The instant invention is directed to a highly unpredictable and speculative field. Further, little to no detail is given as to how critical aspects of the invention, e.g., nuclear confinement, are achieved. Additionally, the scope of the claims includes the nuclear fusion of elements that are not known to have been used in any nuclear experiments to date, e.g., samarium, lanthanum, sulfur, or metal sulfides as nuclear fuel/targets. Finally, the claims provide virtually no parameters for the lasers that are the core of the invention. Each of the elements in the scope of the invention, as well as a number of additional issues regarding those elements’ interaction and arrangement, would need to be experimented upon at length in order to begin to make or use the claimed invention. However, the highly unpredictable nature of practicing nuclear fusion along with the minimal level of skill in the art, precludes one of ordinary skill in the art from providing such experimentation in a reasonable fashion. As such, the totalilty of the evidence demonstrates that a person of ordinary skill in the art would not have been able to make or use the claimed invention without undue experimentation. Therefor the claims at issue are not enabled.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites, “A system for amplifying a laser beam.”
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
In the instant case, the claim defines the invention by functional language specifying “amplifying” a laser beam. However, the disclosure fails to explain how such a result is achieved. Rather, the disclosure describes a laser resonator. That is to say that there is no description of energy being added to the laser by an active element, i.e., amplification. Such amplification is known in the art, see e.g., the ring lasers of US 3,414,839, US 3,460,046, and US 4,247,831 and their respective amplifying elements. Instead of describing an element that might achieve such amplification, the instant disclosure describes a laser cycling through the mirrors of a cavity. A laser trapped in a resonator, or optical cavity, allows a standing wave to form, but does not describe amplification of the light itself. At most, it allows for more light to be projected into the resonator.
Since the disclosure fails to describe any means for amplifying a laser, one of ordinary skill in the art would not recognize that the applicant had possession of a “system for amplifying a laser beam.” Since one of ordinary skill in the art would not recognize that the applicant had possession of the claimed invention, the claims are rejected for failing the written description requirement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 3,414,839, US 3,460,046, and US 4,247,831 all describe similar optical systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
1 Meschini, Samuele, et al. "Review of commercial nuclear fusion projects." Frontiers in Energy Research 11 (2023): 1157394 at section 2.1.
2 Id at section 1.
3 Id at sections 3.2-3.2.2, 3.3.2
4 Qi, Jin-Tao, Zhao-Yan Zhou, and Xu Wang. "Theory of laser-assisted nuclear fusion: J.-T. Qi et al." Nuclear Science and Techniques 37.3 (2026): 53.
5 Meschini at authors in References.
6 Id at 4.5.
Prosecution Insights