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 and Claim Status
1. Applicant's election with traverse of Invention I, Claims 1-19 in the reply filed on 01/29/26 is acknowledged. The traversal is on the ground(s) that claims 1 and 20 share more subject matter than the structure recited in claim 20. This is not found persuasive because there is no support for the arguments in the claim as filed. Under unity of invention one is permitted to claim both an independent claim for a given process and an independent claim for an apparatus or means specifically designed for carrying out the said process. The apparatus or means claimed must be "specifically designed for" carrying out the process. The method of claim 1 does not recite any structure beyond an enclosure comprising walls. The apparatus of claim 20 merely “allows for” performing the method of claim 1. The structure recited therein is not special, as it is present in the apparatus of Laberge. While the apparatus of claim 13 may indeed perform the method of claim 1 it is also possible to perform many other methods with the structure recited. The requirement is still deemed proper and is therefore made FINAL.
2. Claims 20-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
3. Accordingly claim 1-27 are pending with claims 20-27 withdrawn. Claims 1-19 are examined herein.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1-19 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.
6. 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)).
7. Here, the claims are directed to “a method for energy production and chemical element synthesis” (preamble of claim 1), requiring creating transmutation reactions, and depending on the material of the impact area and its periphery, creating nuclear fusion reactions, and synthesizing chemical elements resulting from the shocks and collisions between the molecules, atoms and nuclei of the gas jets and the atoms and nuclei of the atoms of the material of the impact area and its periphery defined in the enclosure” (claim 1). The claimed method “reproduced conditions equivalent to those of a black hole (claim 2) and creates energy (claims 3 and 4).
8. In the disclosure as filed (citations here refer to Publication US20240087758A1), Applicant asserts a utility of “energy production and of synthesis of chemical elements and in particular to adaptations allowing creating conditions equivalent to those of a black hole for the purposes of production of energy and production of chemical elements such as rare metals” ([0001]). Applicant admits “while the creation of a black hole in the laboratory has been the subject of a plurality of attempts, these have so far not been successful” ([0010]).
9. However, Applicant claims to have done just that ([0034-37]).
According to the observations of the Applicants, the reactions in presence are characteristic of those of a black hole. The impact area or point makes up the centre of the black hole and its periphery makes up the accretion area which is a radiation source.
Thus, at said accretion area, a release of heat and the emission of light radiation are observed.
This heat release and these radiation emissions are the consequence of transmutation, nuclear fusion, pycnonuclear and nucleosynthesis, reactions.
Pycnonuclear fusion is a fusion in a dense medium. Nucleosynthesis is the consequence of fusions and transmutations.
Nuclear fusion, pycnonuclear, nucleosynthesis and transmutation reactions are promoted by the tunnel effect.
10. To achieve a black hole and nuclear fusion, applicant accelerates a substance with a nozzle, ionizes it with friction from a hot gas, and directs the resultant ions at a wall of an enclosure “creating shocks and collisions” (claim 1; Fig. 1; [0020]). A Scientific American article from 2023 suggests that creating a black hole in a laboratory cannot even be achieved at the world’s most powerful particle accelerator, stating “creating a black hole with even a microscopic event horizon would require billions of times more energy than the LHC is able to produce.”1
10. 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 University2 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.”
Mainstream nuclear science reckons that the requisite temperature for fusion on Earth is 100 million degrees Celsius or more.3 Applicant is alleging that its invention can achieve nuclear fusion at temperatures of between 230 and 2,000° C ([0016], [0234]). The invention is thus, cold fusion.
13. Nuclear transmutation is possible, but it is typically achieved with a particle accelerator, which is capable of accelerating ions to extremely high kinetic energies.4 Applicant describes nether the nuclear reactions purportedly achieved by the claimed method nor the conditions for achieving them. The examiner is unaware of known nuclear transmutation reactions that would result in the nuclear conversions described in the specification ([0276]).
14. Although, the specification describes experimentation purportedly demonstrating the success of the claimed method, Applicant has not conducted rigorous experimentation to convince a skilled artisan that nuclear transmutation has occurred in the present invention. “Science is a communal activity whose practitioners build upon each others' work. To exploit the literature we must understand its limitations, which is possible only if the authors of publications understand the uncertainties in their measurements and conclusions, and make us, the readers, understand them in the same way. Anomalous observations may indeed point to new phenomena, but simple explanations are usually most probable.”5
15. The claimed invention—a method for creating a black hole, thereby creating energy, nuclear fusion, and nuclear transmutation (claim 1) is too undeveloped to be considered to have a body of existing knowledge associated with it, much less reproducibility of results. See In re Swartz, 232 F.3d at 864 (“Here the PTO provided several references showing that results in the area of cold fusion were irreproducible. Thus the PTO provided substantial evidence that those skilled in the art would ‘reasonably doubt’ the asserted utility and operability of cold fusion”).
16. 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.
17. 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 perform work 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.
18. Claims 1-19 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.
19. The asserted utility of the invention is creating the conditions necessary to 1) create black hole, 2) cause nuclear fusion, and 3) cause nuclear transmutation (claim 1 and specification at [0001]). The ordinary skilled artisan would find it more likely than not that Applicant’s invention can achieve none of those effects. 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.
Claim Rejections - 35 USC § 112
20. 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.
21. Claims 1-19 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.
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.”
22. Claims 1-19 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.
23. Claims 1-19 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.
24. 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.
25. 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).
26. 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 claim to “energy production” and “creating transmutation reactions as well as “reproduce[ing] conditions equivalent to those of a black hole (claims 1-2), by merely heating and ionizing a gas and directing it through a nozzle to impact a wall of a container is extremely broad, as evidenced by its intentionally vague language (e.g., simply “projecting the jet of [the gas] on the internal surface of a wall of the enclosure…creating shocks and collisions”) as well as the fact that this process necessarily abandons modern nuclear physics, such that the outcomes of the recited method cannot be reasonably predicted and measured. See MPEP § 2164.08.
(B) The nature of the invention: The nature of the invention, i.e., the subject matter to which the claimed invention pertains, revolves around the creation of black hole conditions in a laboratory setting; as currently disclosed by Applicant, this involves a questionable departure from the accepted and well-tested theories that comprise known nuclear and plasma physics, chemistry, and electromagnetism. As such, the subject matter to which the invention pertains lies outside the realm of working science. See MPEP § 2164.05(a).
(C) The state of the prior art: The effects claimed by Applicant have not been verified by the existing body of scientific work and are, in fact, incompatible with it. See MPEP § 2164.05(a).
(D) The level of one of ordinary skill: Those generally skilled in the art would appreciate the obstacles and repeated failure in creating a black hole in a laboratory and achieving nuclear fusion when the Lawson criterion is not satisfied. Those skilled in the art would also understand that cold or low-energy nuclear fusion, from which the instant invention is seemingly derived, lies within the realm of fringe science and offends generally accepted physics. See MPEP § 2164.05(b).
(E) The level of predictability in the art: There is no predictability in the art of creating black holes and achieving cold nuclear fusion because such efforts have not yet been successful.
See MPEP § 2164.03.
(F) The amount of direction provided by the inventor: Applicant's underlying theory is aspirational at best, and no independent experimental results or other persuasive supporting evidence is provided for the record. See MPEP § 2164.03.
(G) The existence of working examples: Applicant provides no working examples and there is evidence that the invention has been reliably reproduced or that it enjoys mainstream support.
See MPEP § 2164.02.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The quantity of experimentation needed is unreasonable because the practical guidance provided is insufficient to enable one to build or operate a working prototype of the invention, and the provided theoretical guidance is insufficient to enable one to understand the underlying sequence of phenomena required to attempt such an endeavor. See MPEP § 2164.06.
27. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
28. Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
29. Claims 1-19 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The claim(s) are narrative in form and replete with indefinite language. The steps performed in the method must be clearly and positively specified. The actions must be organized and correlated in such a manner as to present a complete operative method. The claim(s) must be in one sentence form only.
30. Claims 1-19 are indefinite because they are replete with terms lacking or having unclear antecedent basis. These issues are too numerous to address individually. An exemplary list of issues present in claim 1 follows:
Line 9: the heated enclosure
Lines 14-15: the periphery of the impact area
Line 15: the wall of the enclosure (a plurality of walls was introduced)
Line 16: the molecules and atoms
Line 17: the atoms of the material forming the impact area ad its periphery
Applicant should conduct an exhaustive review of all of the claims to correct all such instances of antecedent basis. Please refer to MPEP 2173.05(e ).
29. Claims 1-19 are further indefinite because they include many limitations that do not clearly set forth active method steps, leading to uncertainty as to whether such limitations are required actions or merely results obtained by undertaking previously recited steps. Again, the issues are too pervasive to enumerate. An exemplary list follows:
Claim 1: “a diffusion of part…a creation of secondary…a projection of the secondary jets”
Claims 2, 3, 4: the wherein clauses do not “give meaning and purpose” to previously recited method steps nor do they positively recite additional method steps. MPEP 2111.04. Applicant should recite method steps as positively specified actions. Such actions should start with verbs.
30. Claim 3 recites a list but does not indicate whether the claim requires all of the listed elements or any one of the listed elements. Additionally, the use of parenthetical phrases renders the scope of the claim indefinite because it is unclear whether the claim requires the broad limitation outside the parentheses or the narrow limitation withing. Additionally, the list is indefinite because it includes redundant limitations For example, what is the different between light radiation and light? Claim 3 also lack antecedent basis because no “created energy” is recited in claim 1 and the claim does not further introduce an additional method stem that creates energy. Additionally, the metes and bounds of the recited list is unclear because it appears to encompass all forms of energy. One would be unable to determine what is excluded from the list. Claim 12 is indefinite for the same reasons.
34. Regarding claim 4, the scope is unclear because there is no previous recitation of a step of extracting energy and the claim does not positively recite such an action.
35. Again, the examiner notes that the foregoing is an exemplary list of issues with the claims. The claims are so replete with errors as to preclude complete enumeration of all 35 U.S.C. 112(b) rejections.
36. Any claim not specifically addressed above is rejected under 35 U.S.C. §112 because it depends on a rejected claim.
Claim Rejections - 35 USC § 102 and 103
37. It should be noted, as stated in MPEP 2173.06, “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. §103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.” Therefore, no art rejections have been made.
Interviews
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M DAVIS whose telephone number is (571)272-6882. The examiner can normally be reached Monday - Thursday, 7:00 - 5:00 pm ET.
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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/SHARON M DAVIS/Primary Examiner, Art Unit 3646
1 “Has Anyone Created a Black Hole on Earth?”, attached hereto.
2 Temperatures for Fusion, Department of Physics and Astronomy, Georgia State University: <http://hyperphysics.phy-astr.gsu.edu/hbase/NucEne/coubar.html>.
3 “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 Feb. 28, 2025).
4 “Transmutation and Nuclear Energy,” attached hereto.
5 “Believable statements of uncertainty and believable science”, attached hereto.