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 11-20 in the reply filed on 9/30/2025 is acknowledged. Claims 1–10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 9/30/2025.
Priority
This application is a CON of parent 17/336,204. However, this application contains new matter relative to the prior application. This is evident by a comparison of the Specification of 17/336,204 with the instant Specification. Applicant is herein notified that the application should be redesignated as a continuation-in-part per MPEP 602.05.
Drawings
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 liquid (claim 17) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. If the liquid is going to be explicitly claimed as an element of the apparatus, then it must be shown and labeled in the Drawings. The relationship between the claimed liquid and the other features of the invention must be shown.
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.
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 moderator gas (claim 11) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. If the moderator gas is going to be explicitly claimed as an element of the apparatus, then it must be shown and labeled in the Drawings. The relationship between the claimed moderator gas and the other features of the invention must be shown.
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.
Specification
The disclosure is objected to because of the following informalities: “gasses” should be spelled as “gases” in ¶ 65.
Appropriate correction is required.
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 11–20 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, the 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 cold nuclear fusion. Claim 11, for example, recites
…a spark is triggered to generate a product from the facilitator gas and a reactant.
Dependent claims 15 and 16 clarify that the facilitator gas is oxygen, the product may be oxygen-18 or fluorine-18, and the reactant is deuterium, all which corresponds with the Specification at ¶¶ 31–45 describing nuclear fusion reactions. It is clear that the claimed spark reaction to “generate a product” does so via nuclear fusion.
Independent claim 20 recites a substantially similar apparatus to claim 11.
The reactions occurring in claims 11 and 20 are all cold fusion nuclear reactions, e.g., “The process is viable at ambient atmospheres of standard temperature and pressure,” Specification at ¶ 67. Standard temperature is 273.15 Kelvin, and standard pressure is 1 atm1.
In the background of the Specification (¶¶ 2–3), Applicant appears to acknowledge the scientific consensus that nuclear fusion requires extreme temperatures and pressure:
“A widespread belief is that fusion only occurs at extreme temperatures. The fusion process above iron is endothermic because less energy is produced by the reaction than is needed to maintain the temperature and supporting magnetic fields,” ¶ 2
However, Applicant asserts that cold fusion “may be possible”:
“Reactions with nuclear transmutation at low temperatures and varying pressures without the evolution of radioactive species may be possible. A challenge is to provide an apparatus that may provide for such reactions,” ¶ 4
The claimed apparatus requires nuclear fusion without meeting the accepted and established conditions necessary for fusion to occur, known as the Lawson criterion2. For one, fusion on Earth requires temperatures several orders magnitude greater than 15 million degrees Celsius temperature at the sun’s core3. Mainstream nuclear science reckons that the requisite temperature for fusion on Earth is 100 million degrees Celsius or more4. The claimed apparatus when read in light of the Specification, by contrast, operates as significantly lower temperatures than would be needed for nuclear fusion to occur. Specifically, claims 11 and 20 recite generating a product from a reactant that corresponds to the nuclear fusion reactions disclosed in the Specification that occur at a mere 273.15 Kelvin: “The process is viable at ambient atmospheres of standard temperature and pressure,” Specification at ¶ 67. Standard temperature is 273.15 Kelvin.
Applicants envisage that the invention fulfills a need for “nuclear transmutation at low temperatures” but “without the evolution of radioactive species,” Specification at ¶ 3. Examiner notes that all nuclear reactions produce radioactive species.
The Specification describes theoretical fusion reactions at ¶¶ 31–45 and ¶ 63 but does not provide a disclosure of the specific mechanisms, operational parameters, etc. that an ordinarily skilled artisan would recognize as capable of producing cold fusion reactions as alleged. The fact that the disclosure is entirely prophetic weighs in favor of finding that the claimed subject matter, if even operative, lacks the real-world value required by 35 U.S.C. 101.
Other publications and documents evidence a consensus in the scientific community that there is yet to be a fusion technique—thermonuclear (hot) or cold—capable producing an energy gain sufficient for practical applications. As noted Dylla5, 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 ITER6 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, 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 system7 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 community8,9.
When the most advanced thermonuclear fusion reactors in the world have yet to be commercially viable, Applicant’s claim to be in possession of a useful nuclear fusion apparatus that operates without the extreme temperatures needed for traditional fusion would be found questionable to a person of ordinary skill in the art.
To accomplish these feats, Applicant’s method relies on the simply creation of a “spark” between two electrodes in a gaseous vessel, see claims 11 and 20, at very low temperature and pressure, see Specification at ¶ 67.
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 University10 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 apparatus for contacting oxygen with deuterium (see claims 11, 15, 16, and 20 and the Specification at ¶ 56 and ¶ 60) 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.
To the contrary, the Specification asserts that the nuclear fusion reactions claimed occur at a mere 273.15 Kelvin: “The process is viable at ambient atmospheres of standard temperature and pressure,” Specification at ¶ 67.
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 temperature is 273.15 Kelvin. Therefore, Applicant’s invention fits squarely in the field of cold fusion.
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.
A review of the disclosure shows that the success of the invention depends on the viability of the “cold fusion” concept set forth by Fleischmann and Pons11 (“FP”). Specifically, the invention employs nuclear fusion resulting from the electrolysis of heavy water: see the Specification at ¶ 31 describing the transition from A to B in Figure 3, in which heavy water at A breaks apart into hydrogen and oxygen constituents that undergo nuclear fusion (see the double dagger symbol in Figure 3 indicating nuclear fusion) to create the new element of fluorine at B. Curiously, the Specification at ¶ 31 describes Figure 3 as “The graph (300) represents multiple chemical reactions that may continuously occur.” However, Examiner must emphasize that the creation of a new element (fluorine) from other elements (oxygen and hydrogen) is not a chemical reaction. When a new element is created, that requires a nuclear reaction. While the Specification at ¶¶ 14–22 repeatedly refers to “chemical reactions,” “chemical elements,” and “chemical engineering equipment,” the “fusion” recited in ¶¶ 31–45 is not chemical. It is nuclear fusion because a new element is produced. (Unless Applicant is performing alchemy.)
Applicant’s claimed apparatus is shown in Figure 4 and involves simply immersing two electrodes 421, 423 into a deuterium-argon gas mixture 463 in the presence of a spark 469, and somehow nuclear fusion occurs. Irrespective of the proposed mechanism, there remains no credible evidence that fusion can occur at low temperatures.
The FP concept relies on the incorporation of deuterium from heavy water into a lattice. As set forth more fully below, “cold fusion” is still no more than just an unproven concept rejected by mainstream scientists.
Background
After Fleischmann and Pons announced their fusion device, competing researchers attempted to reproduce their results. The results of these attempts were primarily negative. The few initial positive results were either retracted or later shown to be in error by subsequent experiments12,13. The general consensus by those skilled in the art and working at these various laboratories is that the fusion conclusion made by Fleischmann and Pons was based on experimental error14.The general consensus by those skilled in the art is that there is no reputable evidence to support the claims of excess heat production, or the production of fusion by-products such as neutrons, gamma rays, tritium, or helium15. See also Cooke, pages 4 and 5, which refers to the attempts at Harwell to obtain “cold fusion.” Page 5 also indicates that data was also collected in Frascatti-type (i.e., gaseous) experiments. See the last paragraph on page 5:
“After three months of around-the-clock work at a cost of over a half a million dollars, the project was terminated on June 15. This program is believed to be one of the most comprehensive worldwide with as many as 30 cells operating at a time and over 100 different experiments performed. The final result of this monumental effort in the words of the official press release was, in none of these experiments was there any evidence of fusion taking place under electrochemical conditions. It should also be added that there was no evidence of excess heat generated by any of their cells”.
Note that a complete disclosure must contain enough detail as to enable a person skilled in the art or science to which the invention pertains to make and use the invention as of its filing date16. The present disclosure does not contain the requisite description and detail. There is no adequate description nor enabling disclosure of the parameters of a specific operative embodiment of the invention, including exact composition (including impurities and amounts thereof) of the electrolyte; composition (including impurities and amounts thereof), size, dimensions and porosity of the electrodes; the requisite concentration per unit volume of hydrogen isotopes in the cathode; the applied current and voltage, if any; the requisite physical and/or chemical pretreatment of the electrodes; the instrument calibration prior to and during a run, test or experiment; the amount of each electrode to be immersed in the electrolyte; etc. The instant Specification does not set forth an example of an operative embodiment that includes specific values for each of the above parameters. Note that such parameters are critical in arriving at a theoretically operative cold fusion embodiment. For example, Morrison17 shows that electrode spacing is an important parameter. On page 3, Morrison shows that if the electrodes are close enough to each other, hydrogen isotopes and oxygen will recombine. This can be misinterpreted as excess heat18. These references demonstrate the critical importance of cell component composition and impurity content and of electrode pretreatment.
Claims of the production of excess heat, tritium, and other nuclear reaction products due to a nuclear reaction, are not sufficient to overcome the numerous teachings by skilled artisans that claims of cold fusion are not reproducible. Note that the numerous teachings by skilled artisans show that in this field it is easy to obtain false-positive results. It is not clear from the information set forth in the Specification that applicant would be able to show positive results or that the alleged positive results do not fall within the limits of experimental error. For example, the Examiner has cited several documents that deal with calorimeter evidence of cold fusion and possible sources of error. The Specification does not disclose any particular structure which makes applicants cold fusion system operative where the other systems disclosed have failed.
Applicant claims that their process occurs “at ambient atmospheres of standard temperature and pressure,” Specification at ¶ 67. Standard temperature is 273.15 Kelvin, and standard pressure is 1 atm.
Hydrogen fusion is known to occur at very high pressures and very high temperatures, such as those present on the sun, as described above. The alternative mechanism proposed by Applicant is not capable of producing or sustaining such a reaction.
Specifically, Figure 3 and the Specification at ¶ 33 assert that nuclear fusion is occurring through the following reaction: 2H + 16O [Wingdings font/0xE0] 18F. The temperature required for this reaction is 19.6 billion degrees Kelvin19. Yet, Applicant discloses absolutely no mechanism for achieving these extraordinary temperatures. Where is all this energy coming from?
When an experimenter relies on the results of a particular test to establish certain facts (such as the transmutation of one element into another element), it is incumbent upon the experimenter to show that the alleged results are valid and not the result of errors or misinterpretation of results. This is especially important where the test in question is in a field that the general scientific community considers fraudulent.
Reproducibility
Regarding reproducibility, Huizenga20 states:
“The foundation of science requires experimental results to be reproducible. Validation is an integral part of the scientific process. Scientists are obligated to write articles in ways that allow observations to be replicated. Instructions should be available to permit a competent and well-equipped scientist to perform the experiment and obtain essentially the same results. Replication in science usually is reserved for experiments of special importance or experiments that conflict with an accepted body of work. The greater the implication of an experimental result, the more quickly it will be checked by other scientists.
As more and more groups, at major universities and national laboratories were unable to replicate either the claimed excess heat or fusion products, proponents of cold fusion quickly pointed out that the experiment was not done properly: one needed different size palladium cathodes, longer electrolysis times and higher currents, they claimed.
Whenever the inability of qualified scientists to repeat an experiment is met by ad hoc excuses, beware. One important role of a scientific article is to provide directions for others. Scientists establish priorities for their discoveries by publishing a clear and well documented recipe of their experimental procedures. If a scientific article fails to include an adequate recipe which allows a skilled reader to reproduce the experiment, it is a warning that the author’s understanding of their work is incomplete.
Cold-fusion proponents introduced new dimensions into the subject of reproducibility in science. Some tried to turn the table on reproducibility by giving irreproducibility a degree of respectability. A second aberration was to assign a different value to experiments attempting replication. Only experiments that obtained some fragmentary evidence for cold fusion were to be taken seriously because it was declared that experiments obtaining negative results required no special skills or expertise. This viewpoint led proponents of cold fusion to invite mainly papers reporting positive results when organizing conferences. Such an aberrant procedure is incompatible with the scientific process and usually is viewed negatively by scientists as well as journalists.”
“Reproducibility” must go beyond one’s own lab. One must produce a set of instructions—a recipe—that would enable anyone to produce the same results. If reproducibility only occurs in one’s own lab, errors (such as systematic errors) would be suspect21. Experimenters who previously found evidence of excess heat could not reproduce their results when better calorimetry equipment was used22. Reproducibility of alleged cold fusion results is a critical feature in determining if a disclosure adequately teaches other practitioners how to make and use an invention.
It is well-known that impurities in the cell container walls can leach out into the electrolyte and be deposited onto the cathode23,24,25. It is well-known that metals such as platinum, gold and, palladium are generally found in the same ore, that they can be extracted sequentially, and that they will be contaminated by the other metals present.
The presence of these impurities at the cathode could actually lead to the erroneous conclusion that transmutation has occurred. Applicant’s disclosure is insufficient and non-enabling, as it does not address the issue of impurities. For additional commentary on the alleged transmutation of isotopes in a cold fusion cell, Applicant is referred to Huizenga26. Pages 152-156 of the reference27 recall that experimenters at the Naval Research Laboratory had mistakenly reported the production of particular palladium isotopes by neutron transmutation in cold fusion cells using a technique known as SIMS (secondary ion mass spectroscopy). See page 15628, which states:
“The story associated with the palladium isotope anomaly is not nearly so interesting because it is was simply due to an erroneous interpretation of data where the experimental mass peaks were misidentified. Contributions from polyatomic species of impurities with masses nearly coincident with those of the palladium isotopes caused the misidentification. In spite of the fact that the palladium isotope anomalies had been discredited for over five months, Bockris submitted a paper on March 26, 1990 [Fusion Technology 1811 (1990)] in which he discussed, along with other cold fusion phenomena, the thermal and 14-MeV-neutron-induced cross sections on palladium isotopes. He used these mistaken isotopic anomalies data to suggest that the cold fusion reaction is a surface or near-surface reaction, and, therefore, to serve as supporting evidence for his model of fusion. Among cold fusion enthusiasts mistakes and erroneous results usually decay with a very long lifetime.”
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.
The claimed invention—a cold fusion scheme—for generating and maintaining a cold fusion reaction sufficient for useful element transmutation by creating a spark between two electrodes inside a gaseous vessel (claim 11) 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”).
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 generate nuclear transmutation 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 11–20 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 transmutation of one element into another via cold fusion is considered as being Applicant's specified utility (see Specification at ¶ 12). Applicant’s invention is claimed as operating at temperatures and pressures (see Specification at ¶ 67) 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 not producing cold fusion because, as was detailed above, 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 11–20 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 11–20 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 11–20 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 Mills or the Dammann patents cited in the below 35 U.S.C. 102 section. Mills and Dammann disclose a chamber filled with a moderator and a facilitator gas where a spark is ignited between two electrodes, i.e., Applicant’s claimed invention. However, as shown, this device remains unproven and unworkable for the purposes of useful nuclear fusion electricity generation. Accordingly, if Applicant's cold fusion device is operative, while Mills’ and Dammann’s are not, then the Examiner must conclude that some essential information is missing from Applicant's disclosure that makes Applicant's invention operative.
Claims 11–20 are 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.
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 to provide a cold fusion apparatus are extremely broad, as evidenced by their lack of detail (e.g., clms. 11 and 20 simply recite producing a spark between electrodes in a gaseous vessel) as well as the fact that the disclosed result of producing nuclear reactions from said apparatus necessarily abandons modern nuclear physics, to the extent that the alleged outcomes of said device 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 nuclear fusion as a source of useful element transmutation; as currently disclosed by Applicant, the cold fusion apparatus 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—cold fusion via spark-induced combustion. Thus, the level of ordinary skill in the art is challenging to ascertain. The claimed technique is explicitly fusion at cold temperatures. Those generally skilled in the art would appreciate the obstacles and repeated failure in achieving/sustaining nuclear fusion when the Lawson criterion is not satisfied—e.g., extreme temperatures. Those skilled in the art would also understand that cold nuclear fusion, from which the instant invention is 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 predictably unable to produce expected, reproducible, or meaningful empirical data.
See MPEP § 2164.03.
(F) The amount of direction provided by the inventor: Applicant fails to cite adequate support for the underlying theory, and no experimental third-party results or other substantial supporting evidence is provided for the record.
See MPEP § 2164.03.
(G) The existence of working examples: No working example is provided. Nor is there evidence that the provided prophetic examples have been reliably reduced to practice. 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.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(a), for its dependency upon an above–rejected claim and for the same reasons.
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 11–20 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 11 is rejected under 35 U.S.C. 112(b) as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: the relationships among the facilitator gas, the product, and the reactant. Claim 11 recites “”a spark is triggered to generate a product from the facilitator gas and a reactant.” Because the reactant is not positively recited, it is unclear what its relationship is relative to the facilitator gas and the product. Examiner suggests positively reciting the reactant if it is present along with the facilitator gas and moderator gas in the apparatus. The relationship is further confused by claim 16. Claim 16 recites that the reactant is deuterium oxide. However, the Specification repeatedly states that the reactant is deuterium alone, and it is only when mixed with the facilitator gas (oxygen) that deuterium oxide is created. Therefore, it would appear claim 16 should recite that the reactant comprises deuterium, not deuterium oxide. For the purposes of examination, Examiner will assume that claim 16 is intended to recite that the reactant is deuterium.
Claim 11 is an apparatus claim that recites “…a spark is triggered to generate a product.” Therefore, the claim recites a method step of triggering a spark. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). See MPEP 2173.05(p)(II).
Claim 11 is rejected under 35 U.S.C. 112(b), as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted structures are: the structures that make Applicant’s cold fusion apparatus operative, while all those in the prior art are not operative. This rejection is related to the above 112(a) best mode rejection. The Examiner can only conclude that if Applicant’s apparatus is operative, but that of Mills and Dammann (cited in the below 35 U.S.C. 102 rejection section) are not, then there must be omitted elements that are critical or essential to the invention.
Claim 18 recites “a length within 10 percent of 0.25 inches.” It is unclear if this means 0.25 ± 10% or if it means 5% on either side of 0.25 inches, for a total of 10%.
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.
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 11, 14, 16, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mills (US 2017/0104426).
Regarding claim 11, Mills discloses (Fig. 2B) an apparatus comprising: a reaction vessel (109) filled with a moderator gas (“argon,” ¶ 428) and a facilitator gas (the gas in the “a liquid and gaseous mixture according to the H2O phase diagram,” said gas which comprises hydrogen, ¶ 428); a spark gap (space between electrodes for the “arc,” ¶ 432) in the reaction vessel, wherein the spark gap is between a first electrode (106) and a second electrode (103) and, within the spark gap, a spark (“arc,” ¶ 432) is triggered to generate a product (“hydrinos” or “exhaust gases” or “steam”) from the facilitator gas and a reactant (“nH,” ¶ 432); and an opening (126 or 114) of the reaction vessel, wherein the product is retrievable through the opening.
Regarding claim 14, Mills anticipates all the elements of the parent claim and additionally discloses wherein the moderator gas (“argon,” ¶ 428) comprises at least one noble gas (argon).
Regarding claim 16, Mills anticipates all the elements of the parent claim and additionally discloses wherein the facilitator gas (“nH,” ¶ 432) comprises the reactant as deuterium oxide prior to generating the product (as noted in the above indefiniteness section, Examiner assumes that this is intended to read deuterium instead of deuterium oxide).
Regarding claim 19, Mills anticipates all the elements of the parent claim and additionally discloses wherein the spark is triggered with a voltage applied to the first electrode and the second electrode within a range of 2,000 to 1,000,000 volts (“The voltage applied to [the] electrodes may be in the range of at least one of about 0.1 V to 20 kV, 1 V to 10 kV, and 10 V to 1 kV,” ¶ 431).
Regarding claim 20, Mills discloses (Fig. 2B) a system comprising: a reaction vessel (109); a spark gap (space between electrodes for the “arc,” ¶ 432) in the reaction vessel; a direct current voltage source (“a DC power source,” ¶ 429); and an opening (126 or 114) of the reaction vessel, wherein the reaction vessel is filled with a moderator gas (“argon,” ¶ 428) and a facilitator gas (the gas in the “a liquid and gaseous mixture according to the H2O phase diagram,” said gas which comprises hydrogen, ¶ 428), wherein the spark gap is in the reaction vessel (Fig. 2B), wherein the spark gap is between a first electrode (106) and a second electrode (103) and, within the spark gap, a spark (“arc,” ¶ 432) is triggered with the direct current voltage source (“the arc is established at a high DC repetition rate,” ¶ 431) to generate a product (“hydrinos” or “exhaust gases” or “steam”) from the facilitator gas and a reactant (“nH,” ¶ 432), and wherein the product is retrievable through the opening (126 or 114).
Claims 11, 12, 13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dammann (US 5,159,900).
Regarding claim 11, Dammann discloses (Figs. 1 and 3) an apparatus comprising: a reaction vessel (32) filled with a moderator gas (“hydrogen”) and a facilitator gas (“oxygen”); a spark gap (space between electrodes 24, 26 in Fig. 3) in the reaction vessel, wherein the spark gap is between a first electrode (24) and a second electrode (26) and, within the spark gap, a spark (“electrical arc”) is triggered to generate a product (“COH2 gas”) from the facilitator gas and a reactant (“carbon”); and an opening (46) of the reaction vessel, wherein the product is retrievable through the opening.
Regarding claim 12, Dammann anticipates all the elements of the parent claim and additionally discloses wherein the product (“COH2 gas”) comprises a first element (H) with a first mass number (1) different from a second mass number (16) of a second element (O) of the facilitator and different from a third mass number (12) of a third element (C) of the reactant.
Regarding claim 13, Dammann anticipates all the elements of the parent claim and additionally discloses wherein the facilitator gas (“oxygen”) comprises one or more of oxygen (“oxygen”), carbon, nitrogen, fluorine, phosphorus, sulfur, chlorine, selenium, bromine, and iodine, and wherein the reactant comprises one or more of hydrogen, deuterium, lithium, beryllium, boron, carbon (“carbon”), sodium, magnesium, calcium, titanium, strontium, and zirconium.
Regarding claim 15, Dammann anticipates all the elements of the parent claim and additionally discloses wherein the facilitator (“oxygen”) comprises oxygen and the product comprises one or more of oxygen-18 (oxygen comprises 0.205% 18O isotopic abundance29), fluorine-18, neon, sodium, magnesium, aluminum, silicon, potassium, calcium, iron, zinc, palladium, and cadmium.
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 18 is rejected under 35 U.S.C. 103 as being unpatentable over Mills.
Regarding claim 18, Mills anticipates all the elements of the parent claim and additionally discloses (Fig. 2B) wherein the spark gap comprises a length between the first electrode (106) and the second electrode (103). Mills therefore discloses the invention except for this length being within 10 percent of 0.25 inches. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have used a length within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. To this point, Examiner notes that Mills teaches this length is optimizable: “movable or gap adjustable electrodes,” ¶ 431. The skilled artisan, explains Mills, is motivated to adjust this length: “The electrode separation may be adjusted to maintain a steady arc at a desire current or current density,” ¶ 431.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Mills or Dammann in view of Drexler (WO 91/18397).
Regarding claim 17, Mills or Dammann anticipates all the elements of the parent claim, including the electrodes, as cited above, and each additionally discloses wherein the reaction vessel (Mills, 109; Dammann, 32) further comprises a liquid (Mills, “liquid such as H2O,” ¶ 432; Dammann, water, Fig. 2) that evaporates to form the facilitator gas (Mills, steam, ¶ 434; Dammann, “water vapor,” col. 4, l. 4), and Dammann further discloses wherein at least one of the electrodes does not touch the liquid (insulation 102 around electrode 103, Fig. 2B), but neither reference explicitly states that both electrodes avoid touching the liquid.
Drexler does teach this. Drexler is in the same art area of a fusion reactor and teaches (Fig. 1) a first electrode (17) and a second electrode (19) immersed in a liquid (15) wherein the liquid does not touch the first electrode and does not touch the second electrode (both electrodes are insulated: “The apparatus contains first and second electrodes, spaced apart from each other and electrically insulated from the liquid in which they are immersed,” page 4, ll. 25-28). The ordinary skilled artisan would have been motivated to utilize the insulation of Drexler in order to prevent the common problem of corrosion that results from water contact with metallic electrodes, as is well-known in the art.
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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LILY CRABTREE GARNER
Primary Examiner
Art Unit 3646
/LILY C GARNER/Primary Examiner, Art Unit 3646
1 chem-textbook.ucalgary.ca/chapter-9-main/standard-conditions-of-temperature-and-pressure
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 accessed May 12, 2025.
3 Id.
4 Id.
5 How Long is the Fuse on Fusion? Springer Nature Switzerland AG 2020, pages 85–86.
6 What will ITER do? <iter.org/fusion-energy/what-will-iter-do>.
7 Achieving Fusion Ignition. <lasers.llnl.gov/science/achieving-fusion-ignition>.
8 Tollefson, Jeff, and Elizabeth Gibney. "Nuclear-fusion lab achieves ‘ignition’: What does it mean?." Nature 612.7941 (2022): 597-598.
9 Thomas, William. National Ignition Facility Achieves Long-Sought Fusion Goal. Dec 16 2022. AIP News article.
10 Temperatures for Fusion, Department of Physics and Astronomy, Georgia State University: http://hyperphysics.phy-astr.gsu.edu/hbase/NucEne/coubar.html
11 Braaten, “Ridiculously easy test yields claim of energy triumph,” The Washington Times, p. A5, March 24, 1989.
12 Stipp, The Wall Street Journal, page B-4, “Georgia Group Outlines Errors That Led To Withdrawal Of ‘Cold Fusion’ Claims”, April 26, 1989.
13 Browne, “Fusion claim is greeted with scorn by physicists,” The New York Times, pp. A1 and A22, vol. CXXXVIII, no. 47,859, May 3, 1989.
14 Id., see also Kreysa, et al., Journal of Electroanalytical Chemistry, vol. 266, pages 437-450, “A Critical Analysis Of Electrochemical Nuclear Fusion Experiments”, 1989; Hilts, The Washington Post, page A7, “Significant Errors Reported In Utah Fusion Experiments”, May 2,1989; Ohashi, et al., Journal of Nuclear Science and Technology, vol. 26, pages 729-732, “Decoding Of Thermal Data In Fleischmann & Pons Paper”, July 1989; Miskelly, et al., Science, vol. 246, no. 4931, pages 793 and 796, “Analysis Of The Published Calorimetric Evidence For Electrochemical Fusion Of Deuterium In Palladium”, November 10,1989; Chapline, “Proceedings of the NATO Advance Study Institute on the “Nuclear Equation of State,” pages 1-9, “Cold Confusion,” July 1989.
15 Cooke, Solid State Theory Section, Solid State Division, ORNL-FTR--3341, pages 2-15, “Report Of Foreign Travel Of J. F. Cooke, Head”, 1989; Faller, et al., Journal of Radioanalytical Nuclear Chemistry, Letters, vol. 137, no. 1, pages 9-16, “Investigation Of Cold Fusion In Heavy Water”, August 21,1989; Cribier, et al., “Conventional Sources of Fast Neutrons in ‘Cold Fusion’ Experiments,” Physics Letters B, Vol. 228, No. 1, 7 September 1989; Hajdas, et al., Solid State Communications, vol. 72, no. 4, pages 309-313, “Search For Cold-Fusion Events”, 1989; Shani, Solid State Communications, vol. 72. no. 1, pages 53-57, “Evidence For A Background Neutron Enhanced Fusion In Deuterium Absorbed Palladium,” 1989; Ziegler, et al., “Electrochemical Experiments in Cold Nuclear Fusion,” Physical Review Letters, vol. 62 No. 25, June 19, 1989; Schrieder, et al., B-Condensed Matter, vol. 76, no. 2, pages 141-142, “Search For Cold Nuclear Fusion In Palladium-Deuteride” 1989; AP, “Physicist: Utah Cold-Fusion Gear Doesn’t Work,” The Washington Post, March 29, 1990.
16 In re Glass, 181 U.S.P.Q. 31 (CCPA 1974).
17 Morrison, “Cold Fusion Update No. 8,” November 27, 1993.
18 See Jones, “An Assessment of Claims of Excess Heat in Cold Fusion Calorimetry,” J. Phys. Chem. B 1998, 102, 3647; Murray, Google Advanced Groups Search. pages 1-11. “Subject: Rothwel: Abstracts: Cain, Case, Iwamura, Ohmori, Silver, Stringham,” April 26, 1998; Shanahan, “Comments on ‘Thermal behavior of polarized Pd/D electrodes prepared by co-deposition,’” July, 14, 2004; Miles, et al., “Anomalous Effects in Deuterated Systems,” Naval Air Warfare Center Weapons Division, September 1996; Carr, “Re: CF claim score (was Re: reciprocal cold fusion proof standards...),”; Williams, et al., “Upper bounds on ‘cold fusion’ in electrolytic cells,” Nature vol. 342, p. 375, November 23, 1989.
19 Temperatures for Fusion, Department of Physics and Astronomy, Georgia State University: http://hyperphysics.phy-astr.gsu.edu/hbase/NucEne/coubar.html
20 Huizenga, “Cold Fusion Labeled ‘Fiasco of Century’”, Forum for Applied Research and Public Policy, vol. 7, No. 4, 1992, pages 78-83.
21 Little, et al., “Replication of Jean-Louis Naudin’s Replication of the Mizuno Experiment.”
22 Morrison, supra n. 17, at § 2.2, p. 2.
23 Flanagan, et al., “Hydrogen Absorption by Palladium in Aqueous Solution,” Transactions of the Faraday Society, vol. 55 part 8, No. 440, p 1400-1408, 1407.
24 Albagli, et al., “Measurement and Analysis of Neutron and Gamma-Ray Emission Rates, Other Fusion Products, and Power in Electrochemical Cells having Pd Cathodes,” Journal of Fusion Energy, Vol. 9, No. 2, 1990 pp. 130-148, 144 (col 2.).
25 See also Williams, supra n. 18, at 380 (second column) and 382 (first column).
26 Huizenga, “Cold Fusion: The Scientific Fiasco of the Century”, (selections provided) pp. 152-156, 237, 269, 275, 276, 284, 286.
27 Id.
28 Id.
29 https://periodictable.com/Elements/008/data.html