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 without traverse of Invention II, Species A1 and claims 13-19 in the reply filed on 12/23/25 is acknowledged.
2. Claims 1-12 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim.
3. Accordingly, claims 1-20 are pending with claims 1-12 and 20 withdrawn. Claims 13-1 are examined herein.
Drawings
4. 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 following claimed features must be shown or the feature(s) canceled from the claim(s).
Resonance chamber (claim 13)
Cooling medium inlet/outlet protruding through apertures in the polyhedron shield (claim 13)
High pressure gas supply and vacuum pump substantially enveloping resonance chamber (claim 13)
Polyhedron shield (claim 13)
Mo-98 atom (claims 14-15)
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
5. 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.
6. Claims 13-19 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.
7. 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.
8. 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))).
9. Here, the claims are directed to an approach to nuclear fusion which Applicants identify as “interstitial pseudo-muon fusion (IMPF) reaction” (see Claim 13, last two lines and Specification at [0014-5]). Dependent claims 14 and 15 further require that the fusion reaction “causes an at least one neutron to fuse to a nucleus” to transform Mo-98 into Mo-99 (see also specification at [0019]).
10. The instant specification further asserts that the claimed invention is “to produce controlled nuclear fusion reactions” and “relates to improved techniques and system to enhance quantum tunneling of nucleons in order to achieve self-sustained fusion reactions at great efficiencies” ([0005]). Such effects are purportedly achieved “by providing systems methods, and applications of interstitial pseudo-muon fusion,” which is “for producing controlled nuclear fusion reactions by drastically increasing the probabilistic interactions of atoms vis muon catalysis” ([0015]).
11. However, as is known by those having ordinary skill in the art, overcoming the Coulomb barrier—the repulsion of like positive charges of two atomic nuclei1—to achieve critical ignition for nuclear fusion is only known to occur at extremely high kinetic energies, i.e., extremely high temperatures, known as the Lawson criterion; mainstream nuclear science reckons that the requisite temperature for fusion on Earth is 100 million degrees Celsius or more. 2 Georgia State University3 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.”
12. Applicants have failed to sufficiently disclose how the claimed method is capable of producing or sustaining a fusion reaction. The disclosure provides no mechanism for achieving and maintaining the temperatures of hundreds of millions of degrees Celsius/Kelvin known to be required to achieve nuclear fusion and, in fact, states “IPMF may include proposed techniques to enhance and/or increase the likelihood of the occurrence of tunnelling of nucleons, thereby opening the possibility of self-sustained fusion reactions while simultaneously lowering the cost, size, and mass of fusors. This may occur by circumventing the temperature requirements of other proposed fusion reactions, reducing the power required needed to initiate and/or sustain them, and eliminating/reducing the confinement requirements of such hot fusion systems and methods” ([0015]).
13. Therefore, the claimed invention is in the field of low-temperature nuclear reactions (LENR), or cold fusion. Applicant posits a purported mechanism of operation at [0017-8] of the instant specification involving:
1) “high frequency and large alternating positive and negative charges on an anode and a cathode may be introduced to create a pressure spike within a target lattice” ([0017]);
2) high temperature (HTS) accelerator guns having cesium coating may produce synthetic muons,” which “may dramatically increase the probability of quantum tunneling in D-D interactions” ([0017]) ;
3) combination of inertial electrostatic confinement (IEC) with lattice confinement fusion may further enhance the probability of quantum tunneling” ([0017]); and
4) synthetic muons fired at the center of or target of an IEC device as beams in order to enhance the D-D reactions, which may already be occurring with (sic) the IEC device” ([0018]); and
5) D-D ion implementation in Erbium via a lattice confinement fusion ([0018]).
Applicant’s reliance on a metal lattice comprising palladium or erbium and adsorbed deuterium ([0018]) firmly links the disclosed fusion approach to the unverifiable cold fusion research of the 1990s (see Berlinguette at p. 46 “Highly hydride metals”)
14. Inertial electrostatic confinement fusion uses electrostatic fields to confine a plasma.4 However, it must be noted that the disclosed invention does not appear to rely on plasma confinement of ions to produce nuclear fusion reaction conditions.
15. Muon-catalyzed fusion seeks to lower the energy barrier to nuclear fusion by, thereby allowing fusion reactions to occur at temperatures lower than those required for thermonuclear fusion.5 It is therefore a subset of cold fusion (see Berlinguette at p. 45 and in the inset on p. 48). In 1957, muon-catalyzed fusion was achieved in liquid deuterium (Alvarez), but subsequent studies (Jones, Nagamine) have shown that the process is not efficient enough to be put to use practically. Applicant’s disclosed approach—the so-called “IPMF” reaction—is drastically different from the established and demonstrated approach to obtaining muon-catalyzed fusion. Applicants state that “IPMF” uses a “target cathode sphere” (see [0032]), rather than a liquid deuterium target. Additionally, it must be noted that the disclosure does not even conclusively demonstrate that the invention is capable of producing muons. The specification merely suggests that ion guns man produce muons ([0017]; [0018]). A 2022 Review describing a theoretical basis for muon-catalyzed fusion and suggests that it “currently technically and economically feasible” and may in the future be a viable approach to energy generation and neutron production (Holmlid). However, this review relies on experiments directed to laser-irradiation of “ultra-dense hydrogen H(0)” to make these conclusions and does not address the “IPMF” approach detailed in the present application. Berlinguette, similarly, discusses muon-catalyzed fusion only in the context of providing theoretical support for the potential for electron screening to induce nuclear fusion reaction (see Box I on p. 48).
16. Regarding the fusion of deuterium nuclei confined in a metal lattice, extensive studies since the 1990s have produced no evidence that such condition result in fusion. Specifically, a multi-year, multi-disciplinary, comprehensive study of several LENR schemes “found no evidence of anomalous effects claimed by proponents of cold fusion that cannot be otherwise explained prosaically” (see Berlinguette at p. 45).
17. Therefore, the examiner cannot find any scientific literature to suggest that the IFMCF approach central to the present invention is viewed by the scientific community to be a viable approach to achieving nuclear fusion. Applicants failed to provide an IDS citing any scientific publications regarding the “IPMF” reaction. There are no experimental results presented in the instant disclosure, suggesting that Applicants themselves have not verifiably achieved the “IPMF” reaction.
18. In view of the above, it is more likely than not that an ordinarily skilled artisan would doubt that the present invention is capable of causing fusion and the production of neutrons therefrom, 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.
19. Claims 13-19 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. 20. The production of neutrons from the “IPMF” reaction fusion reaction is considered as being Applicant's specified utility (Claims 14-15; Specification at [0019]; Response to Election/Restriction Dated 12/23/25 electing production of medical isotopes from the species disclosed at [0019]). Applicant’s invention is claimed as operating at energy ranges many orders of magnitude below what the scientific community considers conducive to nuclear fusion (Specification at [0015]). 21. The ordinary skilled artisan would find it more likely than not that Applicant’s invention is not capable of providing neutrons because the “IPMF” approach detailed by Applicant is cold fusion an is considered unworkable by the scientific community, as detailed above. 22. 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). 23. Accordingly, the invention as disclosed is deemed inoperable, i.e., it does not operate to produce the results claimed by the Applicant.
24. 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
25. 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.
26. Claims 13-19 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.
27. Claims 1, 4–8, and 14–16 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.
28. Claims 13-19 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.
29. 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.
30. Applicant states that the claimed invention “may solve the aforementioned limitations of the currently available proposed fusion reaction systems by providing systems, methods, and applications of interstitial pseudo-muon fusion” ([0015]). Claim 13 recites “initiating a fusion reaction via an interstitial pseudo-muon fusion (IPMF) reaction.”
31. 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).
32. 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 “initiating a fusion reaction via an interstitial pseudo-muon fusion (IPMF) reaction” by irradiation of “a metal sphere” by “firing a plurality of beams from REBCO electron H-/D- guns” (claim 13) is extremely broad, as evidenced by its lack of recitation of any muon-producing step 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 viability of cold (low-energy) nuclear fusion as a substantial source of neutrons; as currently disclosed by Applicant, the “IPMF” reaction 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: The claims are directed to an assertedly new field subsector of nuclear fusion technology—“IPMF.” Thus, the level of ordinary skill in the art is challenging to ascertain. The claimed technique is related to both muon-catalyzed fusion and inertial electrostatic confinement fusion (Specification at [0017]). Those generally skilled in the art would appreciate the obstacles and repeated failure in achieving and sustaining nuclear fusion when the Lawson criterion is not satisfied—e.g., extreme temperatures or energies of reactants. 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: Low-temperature nuclear fusion experiments are unable to produce expected, reproducible, or meaningful empirical data. 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. The disclosure is speculative, rather than practical, and omits details that would be critical in practicing the claimed method. For example, how are muons produced? What is the composition of the metal sphere? What is the value of the positive charge and negative charge must be applied to the polyhedron and the resonance chamber? Where is the Mo-98 target located with respect to the apparatus such that it receives the purported neutrons resultant from the “IPMF” reaction? See MPEP § 2164.03.
(G) The existence of working examples: No working example is provided and Applicants describe the invention in speculative terms (e.g., [0018], [0042]). T person having ordinary skill in the art would find it unlikely that the disclosed invention provides the result of nuclear fusion. Nor is there evidence that the effects of the invention have been verified, 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.
33. 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.
34. Claims 13-19 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.
35. Regarding claim 13, many claim terms lack correspondence with the specification. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty (see MPEP 2173.03). The following terms recited in claim 13 lack clear antecedent basis in the specification, including in the Figures: resonance chamber; neutron reflector/neutron-reflective polyhedron shield; polyhedron shield. The specification discloses an “inner beryllium reflection anode wall (109)” and a “neutron reflection chamber (151).” The disclosure additional illustrates polyhedron segments (101)but does not explicitly describe a polyhedron shield nor does it define a resonance chamber. Additionally, the claim recites “a metal sphere” whereas the disclosure describes a target cathode sphere (161).”
36. Further regarding claim 13, it is unclear as to whether the recited “neutron reflector” and “neutron-reflective polyhedron shield” are the same entity. Furthermore the term “resonance chamber” is not defined and is so vague as to be meaningless. How would one determine whether a given chamber—“a closed space in a machine, plant, or body”6—qualifies as a “resonance chamber”?
37. Regarding claim 14, the terminology “causes an at least one neutron to fuse to a nucleus of an atom” is inconsistent with art-accepted definitions. A fusion reaction requires two nuclei, as acknowledged by the instant specification at [0008]. Therefore, by definition, a neutron cannot participate in a fusion reaction. What applicant appears to be attempting to claim is a neutron activation reaction.
38. Regarding claim 16, the recitation “an at least one metal from a group of metals, the group consisting of a palladium metal, an erbium metal, compounds thereof, and alloys thereof” is unclear because compounds of metals are not necessarily metals. Therefore, it is unclear if the Markush group is restricted only to metallic substances or whether, for example, palladium oxide, a compound of palladium that is not metallic would be included.
39. 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, 103
40. 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.
References
41. The attached Notice of Reference Cited (PTO-892) cites additional prior art made of record and not relied upon that is considered pertinent to applicant's disclosure.
42. The cited prior art does not enable the claimed inventions for the reasons set forth above. “Even if a reference discloses an inoperative device, it is prior art for all that it teaches.” Beckman Instruments v.LKB Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989). A “a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991). MPEP § 2121.
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 See instant specification at [0008], [0010]
2 “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).
3 Temperatures for Fusion, Department of Physics and Astronomy, Georgia State University: <http://hyperphysics.phy-astr.gsu.edu/hbase/NucEne/coubar.html>.
4 https://en.wikipedia.org/wiki/Inertial_electrostatic_confinement
5 https://en.wikipedia.org/wiki/Muon-catalyzed_fusion
6 Cambridge Dictionary Online