DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Claim 1 is pending in this application and examined herein.
Information Disclosure Statement
3. The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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. Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it is not directed to a process, machine, manufacture, or composition of matter (see MPEP 2106.03(I). Additionally, the claim refers to “said device” and recites a process step “generates sustained nuclear fusion,” making it unclear to which statutory category of matter the inventor intends the claim to be directed.
6. Additionally, claim 1 rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility. The claimed invention does not operate to produce the results claimed by the patent application. The application asserts that the present invention “generates sustained nuclear fusion” (title; claim 1, [0047], [0060], [0071]). No such device yet exists in earth and the disclosure provides no evidence to suggest such an effect has been obtained by the present invention.
7. Finally, claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a credible asserted utility or a well-established utility. The basis for this rejection is the same as set forth in the preceding paragraphs. The asserted utility of the present invention—generating sustained nuclear fusion—is not credible.
Claim Rejections - 35 USC § 112
8. 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.
9. Claim 1 is 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.
10. MPEP 2163 sets forth principles governing compliance with the written description provision of 35 U.S.C. 112(a):
[T]he ‘essential goal’ of the description of the invention requirement is to clearly convey the information that an applicant [inventor] has invented the subject matter which is claimed. The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee [inventor] was in possession of the invention that is claimed.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. An applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention.
11. The present disclosure fails to adequately demonstrate that the inventor was in possession of the claimed invention at the time the application was filed. Specifically, there is an inadequate description of a device capable of generating sustained nuclear fusion. A hypothetical and notional system is illustrated in Fig. 7, but the disclosure does not fully set forth an operable device so as to demonstrate possession. The specification does not describe the necessary structure and operational connections of the claimed invention sufficiently. Based on the disclosure, a skilled artisan would be unable to conclude that the inventor had possession of the claimed invention.
12. Claim 1 is additionally 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.
13. One of ordinary skill in the art would be unable to make and use the invention of claim 1 without undue experimentation. The diagrammatic illustration of Fig. 7 fails to indicate whether disclosed elements such as the “ionization radiation generators, ” “proton charge generator,” “electron charge generator” are “off the shelf” or must be specifically constructed or modified for use in a ball lightning fusion system. In fact, the specification not only fails to provide any description of the structure of such parts, but also fails to disclose how the parts “should be interconnected, timed, and controlled so as to obtain the specific operations desired by the applicant.” The claimed invention is not enabled because the specification fails to describe how “complex elements known to perform broadly recited functions in different system would be adaptable for use in” the claimed fusion invention. MPEP 2164.06(a)(I).
14. Based on the evidence regarding the below factors (In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)), the specification at the time the application was filed, would not have taught one skilled in the art how to make the full scope of the claimed invention without undue experimentation.
Breadth of claim: Claim 1 is extremely broad and does not even recite any device structure; it amounts to a single means claim. Moreover, there is no known device capable of sustained nuclear fusion on earth.
The nature of the invention: The invention purportedly generates “ball lightning” to induce “sustained nuclear fusion.” This highly speculative concept (see [0048]) does not appear to have any objective support in the present disclosure ([0070], [0071]) or in the scientific literature (see attached PTO-892).
The state of the prior art: there is no prior art establishing the operability of the claimed invention.
The level of predictability in the art: there is no predictability because it has not yet been shown that the claimed invention can operate in any useful manner.
The amount of direction provided by the inventor: as explained above, the disclosure is hypothetical and is devoid of any information necessary to practice the claimed invention.
Undue experimentation: Because the disclosed invention has not progressed further than a concept and neither the disclosure nor the scientific literature provides an exemplary working ball lightning nuclear fusion reactor, the amount of experimentation necessary to make and use the claimed invention is infinite. That is, it is unlikely that any amount of experimentation would be sufficient to result in a working ball lightning fusion reactor.
15. 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.
16. Claim 1 is 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.
17. Claim 1 is 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 structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device.
18. There is insufficient antecedent basis for the recitation “said device” Additionally, it is unclear what effect the recitation “generates nuclear fusion” has on the claimed “plasma” or “device.” This functional limitation appears to be directed to a result achieved by the invention. MPEP 2173.05(g).
Claim Rejections - 35 USC § 102
19. 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.” However, Meachem US 2005/0249324 appears to anticipate claim 1.
20. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
21. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
22. Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meachem, US 2005/0249324.
23. Regarding claim 1, Meachem discloses a nested toroidal plasma (Fig. 4), consisting of counter rotating toroidal electron and proton plasma shells ([0026]: “The positive ions and electrons are moved in opposite directions”), said device generates sustained nuclear fusion ([0030]).
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.
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/SHARON M DAVIS/Primary Examiner, Art Unit 3646