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 .
Claim Status
1. Claims 1-7 are pending and examined herein.
Claim Rejections - 35 USC § 101
2. 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.
3. Claims 1-7 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—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)).
4. Here, the claimed invention is “a nuclear fusion system, a nuclear fusion method, a nuclide transmutation life-reduction treatment system for a long-lived fission product and a nuclide transmutation life-reduction treatment method for a long-lived fission product, through the use of muon-catalyzed nuclear fusion reaction” (US20240105349A1 at [0001]; see also the preambles of claims 1 and 5). The invention’s asserted utility is ([0015]):
to provide a nuclear fusion system and a nuclear fusion method each enabling a gas target to efficiently capture negative muons by a smaller apparatus. Further, another of the objectives of the present invention is to provide a nuclide transmutation life-reduction treatment system for a long-lived fission product and a nuclide transmutation life-reduction treatment method for a long-lived fission product each enabling nuclide transmutation as a result of efficiently irradiating an LLFP with neutrons generated by the nuclear fusion system and the nuclear fusion method
5. This utility is recited in claim 1 (“to cause a muon-catalyzed fusion reaction to occur”) and in claim 5 (“wherein neutrons generated as a result of occurrence of the nuclear fusion reaction…are introduced…so that the long-lived fission product undergoes nuclide transmutation”).
6. The invention purportedly operates by a newly proposed mechanism ([0006]):
in-flight muon-catalyzed fusion (In-Fight Muon-Catalyzed Fusion: IFMCF) as a nuclear fusion reaction in a new field of nuclear reaction positioned intermediately between: a field of low-temperature nuclear fusion through intramolecular resonance with respect to a negative muon introduced into extremely low-temperature solid/liquid-phase hydrogen having significantly low atomic momentum therein; and a field of high-temperature plasma nuclear fusion through two-body collision among ions flying at a high velocity
7. Muon-catalyzed fusion seeks to lower the energy barrier to nuclear fusion by screening Coulombic repulsion between nuclei, thereby allowing fusion reactions to occur at temperatures lower than those required for thermonuclear fusion.1In 1957, muon-catalyzed fusion was achieved in liquid deuterium,2 but subsequent studies34 have shown that the process is not efficient enough to be put to use practically. Applicant’s disclosed approach—the so-called IFMCF fusion reaction—is admittedly drastically different from the established and demonstrated approach to obtaining muon-catalyzed fusion ([0006]). 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.5 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 IFMCF 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).6 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.
8. The specification as filed does not provide any objective evidence to indicate the claimed system is capable of achieving any neutron generation via muon-catalyzed fusion, relying rather on theoretical possibilities ([0033-5]). The IFMCF mechanism was described in a 2019 journal article that provides additional theoretical basis for the invention’s operation but still does not present any objective evidence.7 The paper states (with added emphasis):
Assuming a catalyzed reaction using muons for 1000 cycles, fusion reaction would take place at a rate for 1019 cm-3s-1. This might provide an idea of a compact fusion reactor with a thermal output of 28 MW and an electrical output of 10MW. According to our calculations by applying PHITS code, fast neutron fluxes of the order of 1019 m-2/s-1 can convert 10-100 kg of LLFPs to stable nuclei or short-lived radioactive isotopes with the half life of 10 years.
ICFMCF is a system that is well adapted to existing technology and can be realized in a relatively short time.”
9. An additional publication provides more theoretical predictions but does not objectively demonstrate operation of the claimed invention.8 In fact, Yamashita appears to admit that the present invention had yet to be tested experimentally:
Towards the future µCF experiments in the high-temperature gas target…”; “The aim of this study is to explore the possibility of µCF at the higher temperature gas target…For this purpose we propose a new kinetics model…
10. A paper published in 2024 entitled “Search for Muon Catalyzed 3Hed Fusion,” attempted to produce “in-flight” muon-catalyzed fusion.9 This experiment appears to be the closest to the purported IFMCF approach described in the present disclosure. The experiments failed to provide conclusive evidence of muon-catalyzed fusion in an “in-flight” approach (see Abstract: “About 108 3Heμd molecules were produced with only 2 registered candidates for the muon catalyzed 3Hed fusion with the expected background Nbg = 2.2 ± 0.3 events.” In other words, the experiments produced two events that might be evidence of muon-catalyzed fusion occurring, but such “events” were not above the background error rate. Moreover, analysis of the purported operation of the present invention by a scientist uninvolved with its development question “efficiency of the use of this reactor for practical purposes.”10
11. Finally, the claimed invention relies on muon generation by colliding positron and electron beams (claim 1, [0033]). Yet, such a mechanism does not appear to yet be viable. A 2019 publication indicates such a muon production apparatus that accelerates positrons into a “liquid or solid” electron target (see Introduction and Figs. 2 and 8) is purely conceptual and has not yet entered the research and development phase.11 The examiner can find no evidence that it is currently possible to produce muons by colliding positron and electron beams as disclosed and claimed.
12. For the present invention, 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.
13. The claimed invention—a new type of muon-catalyzed fusion—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.
14. 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.
15. 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 invention 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.
Claim Rejections - 35 USC § 112
16. 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.
17. Claims 1-7 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.”
18. Claims 1-7 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.
19. Claims 1-7 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.
20. 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. The specification is devoid of useful information that would allow a skilled artisan to make the claimed invention and use it to achieve nuclear fusion. The statute requires the applicant itself to inform, not to direct others to find out for themselves. See In re Gardner et. al., 166 U.S.P.Q. 138 and In re Scarborough, 182 U.S.P.Q. 298. The disclosure must enable a person skilled in the art to practice the invention without having to design structure not shown to be readily available in the art; In re Hirsch, 131 U.S.P.Q. 198.
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).
22. 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: The recited nuclear fusion reactor is broadly claimed, relying on functional language directed to the intended result of the apparatus rather than reciting particular structure. The process purportedly achieved by the invention has not been practically demonstrated, such that the structure associated with the functional recitations can be reasonably ascertained 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 muon-catalyzed nuclear fusion as a substantial source neutrons; as currently disclosed by Applicant, the purported mechanism of operation of the invention departs from the accepted and well-tested theories that comprise known nuclear and plasma physics, chemistry, and electromagnetism. 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. 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 achieving measurable and reproducible neutron flux from muon-catalyzed fusion reactions. See MPEP § 2164.05(b).
(E) The level of predictability in the art: There is no body of evidence to show that the muon-catalyzed fusion mechanism proposed by Applicants has been found to achieve nuclear fusion and the production of neutrons by which the claimed invention operates 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: No working examples are provided. And, there is evidence that the disclosed invention has been tested and reliably reproduced. 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.
23. 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.
24. Claims 1-7 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.
25. The recitation “shock wave cone” in claims 1-7 is purely functional and expressed in terms of the effects purportedly achieved, so its scope is unclear. The structure of the “shock wave cone” cannot be reasonably ascertained. What structure and/or structural relationships are required to create a shock wave cone having the recited function? MPEP 2173.05(g): “When claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear.” The claims are replete with limitations that merely describe the function or result (purportedly) achieved by the cone. Given the lack of objective evidence that the claimed invention can achieve its intended purpose, it stands to reason that a skilled artisan would be unable to determine the scope of the claim term “shock wave cone” when the claim describes this element only in functional terms. One does not have enough information to understand how to find and obtain a shock wave cone that falls within the scope of the claim.
26. Regarding claims 1 and 5, the recitations regarding the claimed “muon generation unit” and “generating negative muons” are indefinite because such structure and method steps are not possible based on the current state of the art. One cannot provide such structure or perform such a step because the technology does not yet exist.
27. Regarding claim 2, the recitation “wherein the shock wave cone is configured such that a collision region of electron and positron generated by the muon generation unit” is unclear. The shock wave cone as recited has nothing to do with the positrons and electrons of the muon generation unit. It is unclear how the shockwave cone could have any effect whatsoever on the positions and electrons.
28. Additionally, claims 1-4 are indefinite because they recite both structure and method steps of using the structure (e.g., wherein the raw material gas supplied from the gas supply unit into the Laval nozzle is accelerated…). Would this claim limitation be met by providing a Laval nozzle or must one use the Laval nozzle in a particular manner? MPEP 2173.05(p)(II).
29. The recitation “long-lived fission product treatment unit” in claim 3 has no defined structure and a skilled artisan would be unable to ascertain its metes and bounds. What fission products are “long-lived”? How are they contained within the unit? What constitutes the unit?
30. Regarding claims 3, 6, and 7, it is unclear what is meant by “have the half-life reduced.” A half-life is a fundamental physical property of a radioisotope that cannot be changed. There is no way to shorten a radioisotope’s half-life.
31. Any claim not specifically addressed above is rejected under 35 U.S.C. §112 because it depends on a rejected claim.
35 U.S.C. 102/103
32. 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.
33. The closest prior art is listed on the attached PTO-892.
34. “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). Therefore, “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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Keith can be reached on 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 Breunlich, W. H., et al. "Muon-catalyzed fusion." Annual Review of Nuclear and Particle Science 39.1 (1989): 311-356.
2 Alvarez, Luis W., et al. "Catalysis of nuclear reactions by μ mesons." Physical Review 105.3 (1957): 1127.
3 Jones, Steven Earl. "Muon-catalysed fusion revisited." Nature 321.6066 (1986): 127-133.
4 Nagamine, K., and L. Ponomarev. "Recent progress in muon catalyzed fusion." Nuclear Physics A 721 (2003): C863-C866.
5 Holmlid, Leif. "Muon-catalyzed fusion and annihilation energy generation will supersede non-sustainable T+ D nuclear fusion." Energy, Sustainability and Society 12.1 (2022): 14.
6 Berlinguette, Curtis P., et al. "Revisiting the cold case of cold fusion." Nature 570.7759 (2019): 45-51.
7 Iiyoshi, Atsuo, et al. "Muon catalyzed fusion, present and future." AIP Conference Proceedings. Vol. 2179. No. 1. AIP Publishing LLC, 2019.
8 Yamashita, Takuma, et al. "Roles of resonant muonic molecule in new kinetics model and muon catalyzed fusion in compressed gas." Scientific Reports 12.1 (2022): 6393.
9 Fotev, V. D., et al. "Search for Muon Catalyzed 3He d Fusion." Physics of Particles and Nuclei 55.3 (2024): 672-684.
10 Shmatov, Mikhail L. "Analysis of assumption about the possibility of the highly effective scenario of in-flight muon catalyzed fusion." Physics of Plasmas 28.12 (2021).
11 Alesini, D., et al. "Positron driven muon source for a muon collider." arXiv preprint arXiv:1905.05747 (2019).