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
Applicant’s election without traverse of claims 7-13 in the reply filed on 07/26/26 is acknowledged. Claims 1-6 and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/26/26.
Claim Rejections - 35 USC § 101
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.
Claims 7–13 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)).
Here, the claims are directed to an approach to nuclear fusion which Applicants identify as emanating from “a paramagnetic and excited state mercury-based compound.” Claim 7, for example, recites:
A method for the production of a radioisotope by transmutation of a target material, wherein an excited state mercury-based compound is used as a source of energy for the transmutation of the target material ...
Dependent claim 9 further delineates that the manner in which the compound “is used” is simply being placed “in contact with” the target.
The claimed transmutation occurs via nuclear fusion, as explained in the Specification at ¶ 31 when citing WO2016/181204A1 (hereinafter “WO204”), also by Applicant, which details how the claimed transmutative mercury compound allegedly works. Applicant’s invention creates radioisotopes from the transmutation of an “excited state mercury-based compound,” claim 7. WO204 repeatedly states that room temperature nuclear fusion is responsible for the alleged transmutation capabilities of the claimed mercury compound:
“During the production of the mercury based compound and hence during
the reaction of the liquid mercury with the mineral acid, some of the nuclei of
the mercury metal ions are combined with some other nuclei of the mercury metal ions at room temperature. In this way not only the mercury based compound, but also new elements including H, C, N, 0, S, Cl, Nb, Ta, Zr, Ru and Ni are formed as a fusion product,” WO204, page 7
“…a fusion reaction has taken place,” WO204, page 7
“The energy present in the mercury based compound is thus used to react with nuclei of the target element … and generates fusion energy. It is believed that this is due to the binding energy between the incoming and outgoing components of the transmutation of the elements, i.e. a fusion reaction takes place between the mercury based compound and the target material,” WO204, page 8
“Advantageously the mercury based compound is used as a source of energy for transmutation of elements to create many new elements,” WO204, page 9
“This means that through the addition of the mercury based compound to nuclei
having a proton number of less than 28 a fusion process is started which releases energy (exothermic reaction}, i.e. in the form of subatomic particles. This energy can be used for the generation of electricity and many other applications,” WO204, page 11
“The mercury based metal compound can thus be used for the transmutation of elements and the production of energy from fusion reactions alone,” WO204, page 11
Therefore, Applicant asserts that the present invention is for production of useful radioisotopes from nuclear fusion transmutation (“…a transmutation technology using paramagnetic and excited state of mercury based compound having large internal resting energy, which reacts with the nucleus of target elements … and transmute target elements into many new elements,” Specification at ¶ 261).
However, despite the failure of all others hitherto, Applicant claims to have overcome the tremendous barriers known in the art and invented a system for achieving fusion yielding a positive net energy output (due to the large “resting energy” of mercury, Spec. at ¶ 257) and useful medical radioisotopes (e.g., Spec. at ¶ 3, ¶ 121) without meeting the accepted and established conditions necessary for fusion to occur, known as the Lawson criterion.2 For one, fusion on Earth requires temperatures several orders magnitude greater than 15 million degrees Celsius temperature at the sun’s core.3 Mainstream nuclear science reckons that the requisite temperature for fusion on Earth is 100 million degrees Celsius or more. The claimed method when read in light of the Specification, by contrast, operates as significantly lower temperatures than would be needed for nuclear fusion to occur. Specifically, claim 7 describes a process of nuclear transmutation, and the Specification at ¶ 175 states that this occurs “at room temperature.”
Among the specific, asserted utilities are the following:
net-output nuclear fusion, which has never been done before, due to the alleged enormous “internal resting energy” of mercury on the order of “hundreds of terajoule,” Spec. at ¶ 257;
“very high transmutation rates, which is many times of all other technologies currently being used for transmutation of elements,” Spec. at ¶ 52
“analysing nuclear waste or contamination” and medical radioisotope production for “curing cancer” and “medical imaging,” Spec. at ¶ 140 and ¶¶ 167–173;
powering rockets, Spec. at ¶ 137
batteries and thermoelectric generators “often used in spacecraft, satellites, weather stations and navigation beacons,” Spec. at ¶ 129
calculating “terrestrial age of meteorites and comets, to determine surface exposure ages and erosion rates, to date glaciers, sediments in research on paleoenvironmental change, determining ground water infiltration rates, estimate marine sedimentation of biogenic silica (diatoms and seashells) and as radiotracer for the measurement of silica production in aquatic environments,” Spec. at ¶ 139
“medical, radiopharmaceuticals, industrial applications, radioisotope power systems for space exploration, alpha voltaic cell, beta voltaic cell, nuclear battery as fuel for road, air and sea transportation vehicles, scientific research and agriculture and many other applications,” Spec. at ¶ 258
The Specification describes alleged experimental results including transmutations (Spec. at ¶¶ 175–189), but does not demonstrate a release of energy greater than the amount of energy input, i.e., net positive energy such as for producing useful electricity required for the above-listed utilities, and further does not demonstrate any evidence for the “resting energy” of mercury alleged to cause the claimed room temperature transmutations. Nor is there a disclosure of the specific mechanisms, operational parameters, etc. that an ordinarily skilled artisan would recognize as capable of sustaining a fusion reaction on the scale needed to currently achieve the benefits noted above. The lack of any serious experimental details, or of any supporting evidence from a third party, also weigh in favor of finding that the claimed subject matter, if even operative, lacks the real-world value required by 35 U.S.C. 101.
Current publications and documents evidence a consensus in the scientific community that there is yet to be a fusion technique—thermonuclear or cold—capable producing an energy gain sufficient for practical applications. As noted Dylla,4 as recently as 2020, the largest nuclear fusion project in the world—the International Thermonuclear Experimental Reactor (ITER)—aspired to achieve a successful fusion demonstration “for several minutes duration” by 2026 at the absolute earliest. This is with a projected cost of “greater than $10 billion.”
Further according to the official ITER5 webpage:
“The world record for fusion power in a magnetic confinement fusion device is held by the European tokamak JET. In 1997, JET produced 16 MW of fusion power from a total input heating power of 24 MW (Q=0.67). ITER is designed to yield in its plasma a ten-fold return on power (Q=10), or 500 MW of fusion power from 50 MW of input heating power. ITER will not convert the heating power it produces as electricity, but — as the first of all magnetic confinement fusion experiments in history to produce net energy gain across the plasma (crossing the threshold of Q≥1) — it will prepare the way for the machines that can.”
There currently exist no nuclear fusion reactors, thermonuclear (hot) or cold, capable of producing useful energy gain for practical applications. The National Ignition Facility (NIF) is the largest operational fusion system in the US to date that operates at extreme temperatures. In December 2022, the NIF reportedly achieved a “nuclear fusion breakthrough,” producing 3.15 MJ of fusion energy from 2.05 MJ of laser light. This was the first ever demonstration in the world of a target producing more energy than was delivered to the target. However, the laser system6 itself required 322 MJ of energy to create these fusion reactions, multiple orders of magnitude greater than the energy produced. Thus, while an achievement in fusion, the experiment is far from a demonstration of practical energy production—as stated by experts in the fusion community.7,8
When the most advanced thermonuclear fusion reactors in the world have yet to create more energy than they consume (“net” energy gain), Applicant’s claims to (a) already be in possession of a nuclear fusion method that operates without the extreme temperatures needed for traditional fusion, and (b) that such a method achieves a net energy gain would be questionable to a person of ordinary skill in the art.
To accomplish this feat, Applicant’s method relies on “an excited state mercury-based compound,” claim 7, and specifically its “large internal resting energy,” Specification at ¶ 248, for nuclear fusion-induced element transmutation.
However, 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 University9 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.”
Applicants have failed to sufficiently disclose how the claimed method for taking advantage of the “resting energy” of “an excited state mercury-based compound” 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 ignition.
The method of the instant invention operates at “room temperature,” Specification at ¶ 175. The disclosure makes it clear that the mechanism for transmutation is based on that of WO204, as already detailed above.
As cited above in the quotation from Georgia State University, the minimum temperature required for nuclear fusion ignition is between 10,000,000 and 100,000,000 Kelvin. Applicant’s “room temperature” is about 293 to 298 Kelvin. Therefore, Applicant’s invention appears to fit squarely in the field of low-temperature nuclear reactions (LENR), or cold fusion.
In summary, Applicant’s invention tries to “have it both ways,” citing useful batteries and cancer-curing radioisotopes but without the necessity of confining an extremely hot nuclear reaction without melting the reactor walls.
Applicant’s cold nuclear fusion allegedly occurs due to the inherent property of a “paramagnetic and excited state mercury based compound having large internal resting energy,” Spec. at ¶ 248. However, a review of the scientific literature finds no support whatsoever for such a compound.
For the present invention, which is directed to a way of attempting nuclear fusion at odds with established scientific principles, 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.
The claimed invention for generating and maintaining an exothermic cold fusion reaction sufficient to be used as a viable energy source or for producing useful medical radioisotopes via the inherent properties of “an excited state mercury based compound” (claim 7) 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.
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.
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 create useful medical radioisotopes 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.
Claims 7–13 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. The production of net energy (due to the large “resting energy” of mercury, Spec. at ¶ 257) and useful medical radioisotopes (e.g., Spec. at ¶ 3, ¶ 121) from a nuclear fusion reaction is considered as being Applicant's specified utility. Applicant’s invention is disclosed as operating at energy ranges (“room temperature,” Spec. at ¶ 75) many orders of magnitude below what the scientific community considers conducive to nuclear fusion. The ordinary skilled artisan would find it more likely than not that Applicant’s invention was neither (a) net-energy-producing hot fusion, nor (b) cold fusion because, as detailed above: regarding (a), net-energy-producing hot nuclear fusion has never yet been observed; and regarding (b), cold fusion is considered unworkable by the scientific community. 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.
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
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.
Claims 7–13 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.
Claims 7–13 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.
Claims 7–13 are rejected under 35 U.S.C. 112(a) because the best mode contemplated by the inventor(s) has not been disclosed. Evidence of concealment of the best mode is based upon the disclosure of the Parekh (US 2018/0322975 A1) publication cited herein. Parekh discloses a reactor having an excited state mercury-based compound as a source of cold fusion energy, i.e., Applicant’s claimed invention. However, as shown, this device remains unproven and unworkable for the purposes of useful electricity generation. Accordingly, if Applicant's cold fusion method is operative, while Parekh’s is not, then the Examiner must conclude that some essential information is missing from Applicant's disclosure that makes Applicant's invention operative.
Claims 7–13 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.
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.
Applicant asserts they have produced an operative device for achieving self-sustained nuclear fusion for useful medical radioisotope production (claim 7) in a low-temperature environment (“room temperature, Spec. at ¶ 175).
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).
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 claims (e.g., see claim 7) are very broad: a mercury compound emanates energy, which is absorbed by a nearby target, resulting in the world’s first-ever successful observance of alchemy.
(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 marketable commercial energy; as currently disclosed by Applicant, cold fusion 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.
(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.
(D) The level of one of ordinary skill: The level of ordinary skill in the art is a skilled artisan who can create and operate hot nuclear fusion reactors using conventional technology that do not produce net positive energy.
(E) The level of predictability in the art: Low-temperature nuclear fusion experiments are predictably unable to produce expected, reproducible, or meaningful empirical data.
(F) The amount of direction provided by the inventor: Applicant’s disclosure does not provide the necessary step-by-step guide to actually achieve the claimed end goal of self-sustained/breakeven nuclear fusion. The disclosure simply asserts that the invention operates as alleged due to the inherent properties of a mercury substance Applicant has previously manufactured.
(G) The existence of working examples: The Specification describes experiments (see Spec. at ¶¶ 179–185), but does not demonstrate how the alleged transmutation occurs. Nor is there a disclosure of the specific mechanisms, operational parameters, etc. that an ordinarily skilled artisan would recognize as capable of sustaining a fusion. Nor is there evidence that the provided example has been reliably reproduced or that it enjoys mainstream support.
(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.
Any claim not specifically addressed above that depends on a rejected claim is accordingly also rejected under 35 U.S.C. 112(a).
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.
Claims 7–13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 7 recites “a mercury-based compound.” It is unclear what is meant by a compound being “based” on mercury. Does this mean >50% of the elements in the compound must be mercury? The metes and bounds of the claim are unclear because it is unclear what relative amount of mercury makes a compound “based” on mercury.
Claim 9 recites the limitation "the molten state.” There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the target material in contact with the mercury-based compound.” There is insufficient antecedent basis for the limitation that they are in “contact” in the claim.
Claim 9 recites “the transmutation is carried out in the molten state of the target material.” The entire limitation is indefinite. The limitation should be re-worded to recite that the target material is in a molten state, not the transmutation.
Claim 10 recites the limitation "radioisotopes.” There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "separation.” There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 11, the phrase twice recited "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Additionally, the use of parentheses for “dry or wet” renders the claim indefinite because it is unclear whether these adjectives are part of the claimed invention or not.
Claim 13 recites the limitation "the carrier free isotope.” There is insufficient antecedent basis for this limitation in the claim.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(b) for its dependency upon an above–rejected claim and for the same reasons.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 recites that the target material is an element. This limitation does not further delimit parent claim 7 because all matter comprises element(s). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
For Applicant’s benefit, portions of the cited reference(s) have been cited to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection, it is noted that the prior art must be considered in its entirety, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
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.
Claims 7–11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parekh (US 2018/0322975 A1).
Regarding claim 7, Parekh discloses a method for the production of a radioisotope by transmutation of a target material , wherein an excited state mercury-based compound (“the mercury is present in a state that is excited,” ¶ 52) is used as a source of energy for the transmutation of the target material (“The mercury based metal compound can thus be used for the transmutation of elements …. This means that the energy from aneutronic fusion can be captured using direct conversion,” ¶ 69).
Regarding claim 8, Parekh anticipates all the elements of the parent claim and further discloses wherein the target material is at least one of or a combination of the elements in the periodic system of elements including the transuranic elements (e.g., “the target element is selected from a group comprising hydrogen,” ¶ 171).
Regarding claim 9, Parekh anticipates all the elements of the parent claim and further discloses wherein the transmutation is carried out in the molten state of the target material (“a metal target material, preferably of molten metal target material,” ¶ 43) in contact with the mercury-based compound.
Regarding claim 10, Parekh anticipates all the elements of the parent claim and further discloses wherein radioisotopes are separated from the target material after transmutation (e.g., “the step of isolating compounds that do not contain mercury can include a heating step, a separation step etc.,” ¶ 31)
Regarding claim 11, Parekh anticipates all the elements of the parent claim and further discloses wherein separation is carried out by chemical or radiochemical treatment, in particular including ion-exchange, liquid chromatography resin chromatography, (dry or wet) distillation, sublimation, precipitation and extraction, in particular solid phase extraction (SPE), liquid-liquid extraction (LLE) (“a precipitation of material” detailed in ¶ 108).
Regarding claim 13, Parekh anticipates all the elements of the parent claim and further discloses wherein the carrier free isotope is obtained in atomic or ionic form or as a molecular ion (because the radioisotope is an element, it necessarily contains atoms).
Claim Rejections - 35 USC § 103
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 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.
For Applicant’s benefit, portions of the cited reference(s) have been cited to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection, it is noted that the prior art must be considered in its entirety, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Parekh in view of Ravn (US20090162278A1).
Regarding claim 12, Parekh anticipates all the elements of the parent claim and further discloses wherein separation is carried out and wherein the radioisotope is obtained by transmutation is purified, as cited above, but does not explicitly suggest radio chromatographic separation.
Ravn does. Ravn is also in the art area of separating isotopes and teaches using radio chromatographic separation (“radio-chromatography processes,” ¶ 417). The skilled artisan would have been motivated, prior to the effective filing date of the invention, to have utilized the radio-chromatography process suggested by Ravn for separating the radioisotope of Parekh because, as explained by Ravn in ¶ 417, this process allows the production of a “carrier free isotope solution.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY C GARNER whose telephone number is (571)272-9587. The examiner can normally be reached 9-5 CT.
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Please be aware that, as of October 1, 2025, the PTO has implemented a policy of one interview per round of examination. Additional interviews require managerial approval.
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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LILY CRABTREE GARNER
Primary Examiner
Art Unit 3646
/LILY C GARNER/Primary Examiner, Art Unit 3646
1 All citations to the Specification herein refer to the published application.
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 October 27, 2025).
3 Id.
4 How Long is the Fuse on Fusion? Springer Nature Switzerland AG 2020, pages 85–86.
5 What will ITER do? <iter.org/fusion-energy/what-will-iter-do>
6 https://lasers.llnl.gov/science/achieving-fusion-ignition
7 Tollefson, Jeff, and Elizabeth Gibney. "Nuclear-fusion lab achieves ‘ignition’: What does it mean?." Nature 612.7941 (2022): 597-598. <https://www.nature.com/articles/d41586-022-04440-7>.
8 Thomas, William. National Ignition Facility Achieves Long-Sought Fusion Goal. Dec 16 2022. AIP News article. <https://ww2.aip.org/fyi/2022/national-ignition-facility-achieves-long-sought-fusion-goal#>.
9 Temperatures for Fusion, Department of Physics and Astronomy, Georgia State University: <http://hyperphysics.phy-astr.gsu.edu/hbase/NucEne/coubar.html>.
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