Ex Parte LinDownload PDFBoard of Patent Appeals and InterferencesOct 30, 200910255216 (B.P.A.I. Oct. 30, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PING-WHA LIN ____________ Appeal 2009-004275 Application 10/255,2161 Technology Center 3600 ____________ Decided: October 30, 2009 ____________ Before JENNIFER D. BAHR, LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL 1 This application is related to Application No. 10/723,396, which is also the subject of an appeal (Appeal 2009-003200). Appeal 2009-004275 Application 10/255,216 2 STATEMENT OF THE CASE Ping-Wha Lin (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 11, 23-25. Claims 2-10 and 12-22 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. THE INVENTION The Appellant’s claimed invention is a process of rapidly heating water vapor in a gas stream in a manner that leads to nuclear reactions. Spec. para. 0002. The Appellant’s Specification describes that, as an extension of Lin’s Theory of Flux (the Appellant’s theory), when a chemical reaction system is subjected to a high time rate of temperature increase, plasma is formed and the collisions of particles can lead to nuclear reactions. Spec. para. 0014. According to the Appellant’s Specification, applying a high time rate of temperature increase to a gas flow promotes nuclear reactions, and “cold nuclear fusion has become a reality.” Spec. para. 0024. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of generating a sustained nuclear reaction from a gas stream containing water as a source of hydrogen atoms which comprises the steps of: a) providing a reactor that includes: i) a gas inlet at the upstream side; ii) a gas outlet at the downstream side; iii) a heat reservoir at the upstream side and a heat reservoir at the downstream side; and Appeal 2009-004275 Application 10/255,216 3 iv) a connecting pipe between the upstream heat reservoir and the downstream heat reservoir, b) passing the a gas stream containing water as a source of hydrogen into the inlet of the reactor; c) rapidly heating the gas stream at the upstream heat reservoir by applying a concurrent flame to the gas stream at a distance upstream from the upstream heat reservoir and by a countercurrent flame in the connecting pipe, said rapid heating being at a rapid rate sufficient to: i) produce hydrogen ions from the hydrogen atoms; ii) transform the produced hydrogen ions into protons and electrons; and iii) induce nuclear reactions in the upstream reservoir and at a section of the connection pipe where the countercurrent flames are applied by mutual bombardments of accelerated particles, including electrons, neutrons and protons, in a plasma fluid; d) retaining part of the heat from concurrent flame and the heat generated from reactions in the flowing gas occurring in step c) by radiation and convection in the upstream heat reservoir; e) terminating the application of heat by the concurrent and the countercurrent flames to the gas stream; and f) using the heat generated from nuclear reactions to induce subsequent continuous nuclear chain reactions by high rate of temperature increase of the gas flow and thereby produce an uninterrupted release of heat from the reactor. THE EVIDENCE The Examiner relies upon the following evidence: Lin US 5,753,201 May 19, 1998 Appeal 2009-004275 Application 10/255,216 4 Panel Opposes Cold Fusion Efforts, Associated Press, Washington Post, July 13, 1989, at A14. Matthew C. J. Lee & Derek W. Smith, Correlation between MO eigenvectors and enthalpies of formation for alkanes, Thermochimica Acta vol. 435 at 44-48 (2005). Vitaly E. Matulis & Oleg A. Ivaskevich, Comparative DFT study of electronic structure and geometry of copper and silver clusters: Interaction with NO molecule; Comparative Materials Science vol. 35 at 268-271 (2006). THE REJECTIONS The Appellant seeks review of the following rejections by the Examiner: 1. Rejection of claims 1, 11, and 23-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement.2 2. Rejection of claims 1, 11, and 23-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the best mode requirement. 3. Rejection of claims 1, 11, and 23-25 under 35 U.S.C. § 112, second paragraph, as indefinite. 4. Rejection of claims 1, 11, and 23-25 under 35 U.S.C. § 101, because the claimed invention is inoperative and therefore lacks utility. 5. Rejection of claims 1, 11, and 23-25 under 35 U.S.C. § 102(b) as anticipated by Lin. ISSUES For each ground of rejection, the Appellant argues claims 1, 11, and 23-25 as a group. App. Br. 5-8, 9, 10-11. We select claim 1 as the 2 The Examiner’s Answer states two enablement rejections of claims 1, 11 and 23-25. Ans. 4, 5. We consider them here as a single rejection. Appeal 2009-004275 Application 10/255,216 5 representative claim, and claims 11 and 23-25 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009). Utility and Enablement Rejections The Examiner found that the methods of claims 1, 11, and 23-25 are inoperative, and therefore lack utility (usefulness), and the Examiner concluded therefore that the claims contain subject matter that is not described in the Specification in such a way as to enable a person skilled in the art to make and use the invention. Ans. 4, 5, 7. The Appellant argues that the Examiner’s specific findings regarding the Specification are not relevant because the applicant is not required to comprehend the scientific principles of his invention (citing to Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983)).3 The Appellant also argues that the scientific community has accepted the claimed method. App. Br. 11. The issues before us are: Has Appellant shown the Examiner erred in finding that the claimed method is inoperative and therefore lacks utility? Has Appellant shown the Examiner erred in concluding that the claimed method contains subject matter that was not described in the Specification in such a way as to enable a person skilled in the art to make and use the invention? Best Mode Rejection The Appellant contends that the Examiner’s rejection for failure to disclose the best mode is in error because the Appellant’s Specification 3 Referring to the findings at pages 3-4 of the Office Action dated February 10, 2006. Appeal 2009-004275 Application 10/255,216 6 discloses the best mode, and nothing has been hidden. App. Br. 8-9. The issue before us is: Has the Appellant shown the Examiner erred in concluding that the Appellant has failed to disclose the best mode? Indefiniteness Rejection The Examiner concluded a person of ordinary skill in the art could not ascertain the metes and bounds of the claims with regard to the phrases “rapid rate sufficient” and “part of the heat” as used in the claims. Ans. 6. The Appellant argues that the Examiner erred in rejecting the claims as indefinite because the claims are enabled. App. Br. 9-10. The issue before us is: Has the Appellant shown the Examiner erred in concluding that the claims are indefinite? Anticipation Rejection The Appellant contends that claims 1, 11, and 23-25 are not anticipated by Lin as Lin is directed to a different method from the claimed method because Lin does not disclose the step of rapidly heating a gas stream at the upstream reservoir at a rapid rate sufficient to induce nuclear reactions. App. Br. 12. The issue before us is: Has the Appellant shown the Examiner erred in finding that the claims are anticipated by Lin? FINDINGS OF FACT We find that the following enumerated facts are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, Appeal 2009-004275 Application 10/255,216 7 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. The Appellant’s Specification describes that, as an extension of Lin’s Theory of Flux (the Appellant’s theory), in the claimed chemical reaction plasma is formed where collisions of particles can lead to nuclear reactions, including nuclear fusion, “and cold nuclear fusion has become a reality.” See, e.g., Spec. paras. 0024, 0047, 0052, 0093. 2. The Energy Secretary assembled a panel of 22 non-government scientists to verify claims made by University of Utah scientists that water was broken into hydrogen and oxygen by an electric current and then hydrogen nuclei fused to produce large amounts of heat (cold fusion). In a draft report, the panel found that the “[e]vidence for the discovery of a new nuclear process termed cold fusion is not persuasive.” Panel Opposes Cold Fusion Efforts, at A14. 3. Lin discloses a method of accelerating a chemical reaction by high time rates of temperature change to accelerate the oxidation of polyatomic molecules, such as to create sulfuric acid. Lin, col. 1, ll. 10-14; col. 12, ll. 47-49. Lin does not disclose a process for inducing nuclear reactions. Lin, passim. PRINCIPLES OF LAW 35 U.S.C. § 101 (2002) states, 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. Appeal 2009-004275 Application 10/255,216 8 Whether an application discloses a utility for a claimed invention is a question of fact. In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993); Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983). “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)) (alteration in original). Stated differently, the examiner must present the evidence necessary to establish a reason for one of ordinary skill in the art to question the objective truth of the statement of utility. Id.; see also, In re Houghton, 433 F.2d 820 (CCPA 1970) (Where the claimed device was a flying machine that did not operate on airfoil or thrust principles, but rather operated based on a “flutter function” concept drawn from studies of bird and insect flight, the court determined that in evaluating an application of such a highly unusual nature, it was not unreasonable for the Examiner to require proof of utility, and upheld a rejection for lack of utility under 35 U.S.C. § 101, even where the Specification included equations drawn from studies of bird and insect flight.). Once the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility, then the burden shifts to the applicant to submit evidence sufficient to convince such a person of the invention's asserted utility. Brana, 51 F.3d at 1566. See e.g., In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) ("the PTO provided several references showing that results in the area of cold fusion were irreproducible"). In Swartz, the court found “the PTO provided substantial Appeal 2009-004275 Application 10/255,216 9 evidence that those skilled in the art would ‘reasonably doubt’ the asserted utility and operability of cold fusion.” Id. Accordingly, the evidentiary burden was shifted to Swartz to submit “evidence of operability that would be sufficient to overcome reasonable doubt.” Id. Failing to satisfy his evidentiary burden, the court found that “the utility of Mr. Swartz's claimed process had not been established and that his application did not satisfy the enablement requirement.” Id. 35 U.S.C. § 112, first paragraph, (2002) states: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The how to use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. Section 101 that the specification disclose as a matter of fact a practical utility for the invention.” Ziegler, 992 F.2d at 1200 (citations omitted). “If the application fails as a matter of fact to satisfy 35 U.S.C. Section 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under 35 U.S.C. Section 112.” Id. Compliance with the best mode requirement is a separate and distinct question from compliance with the enablement requirement of the first paragraph of § 112. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir. 1987) (citing In re Gay, 309 F.2d 769, 772 (CCPA 1962)). The best mode provision is not directed to a situation where the application fails to set forth any mode – such failure amounts to nonenablement. Appeal 2009-004275 Application 10/255,216 10 Spectra-Physics, 827 F.2d at 1534 (citing In re Glass, 492 F.2d 1228, 1233 (CCPA 1974)). The language of a claim satisfies § 112, ¶ 2 if "one skilled in the art would understand the bounds of the claim when read in light of the specification." Exxon Research & Eng'ring Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). ANALYSIS Rejection of claims 1, 11, and 23-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement, and under 35 U.S.C. § 101 as lacking utility Contrary to the Appellant’s argument that the Examiner improperly mixed the enablement and utility issues because the Examiner found that the claimed method is inoperable, the issues of utility under 35 U.S.C. § 101 and enablement under 35 U.S.C. § 112, first paragraph, in this case both turn on a single question of operability of the claimed invention. See App. Br. 10; See also, In re Brana, 51 F.3d 1560, 1564 (Fed. Cir. 1995) (“Obviously, if a claimed invention does not have utility, the specification cannot enable one to use it.”). Thus, we analyze the utility rejection and the enablement rejections together. Claim 1 recites a method of generating a sustained nuclear reaction by rapidly heating a gas stream that contains water as a source of hydrogen at a rapid rate sufficient to, inter alia, “induce nuclear reactions in the upstream reservoir.” The Appellant’s Specification describes the claimed method as “cold fusion” and describes that the claimed “nuclear reactions” include nuclear fusion (Fact 1). A person or ordinary skill in the art would Appeal 2009-004275 Application 10/255,216 11 understand claim 1 to comprise a method that induces nuclear reactions, including fusion. Prima Facie Case Our threshold inquiry is to determine if the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility. See In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995); see also, In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000). We agree with the Examiner’s finding that there is no reputable evidence that cold fusion is an operative process that provides usable energy (Fact 2). See Ans. 7. In addition to the scientific community’s doubt of the claimed process, the Examiner made numerous specific findings regarding errors and inconsistencies in the Appellant’s Specification. Ans. 4, 5, 7. 4 For example, the Examiner found the Appellant’s Specification expressed potential energy in the wrong units. Ans. 4, 5, 7 (referring to the Office Action dated February 10, 2006 at page 3); Spec. para. 0035. The Examiner found that the Appellant’s Specification calculates enthalpy without consideration for volume when enthalpy is the product of pressure and volume. Ans. 4, 5, 7 (referring to the Office Action dated February 10, 2006 at page 3); Spec. paras. 0034-0036. Because electrons do not revolve around nuclei, the Examiner found the Appellant’s Specification incorrectly states that the potential energy of an electron is the time rate of change of the position vector of the electron, and that the Specification’s statements 4 The Examiner’s Answer incorporates specific findings from pages 2-6 (section 1) of the Office Action dated February 10, 2006 (the Final Rejection leading to this appeal action). Appeal 2009-004275 Application 10/255,216 12 regarding tangential acceleration of electrons and electron escape velocity are incorrect. Ans. 4, 5, 7 (referring to the Office Action dated February 10, 2006 at page 4); Spec. paras. 0037, 0041. The Examiner has pointed out both that the scientific community doubts the operability of “cold fusion” processes, such as the Appellant’s, and that there are errors or inconsistencies in the Appellant’s Specification regarding the claimed process. We find the Examiner has provided sufficient evidence to establish a reason for one of ordinary skill in the art to reasonably doubt the asserted utility of the claimed process. Because the Examiner made a prima facie case that the claimed method lacks utility and therefore is also not enabled, the evidentiary burden was shifted to the Appellant to submit “evidence of operability that would be sufficient to overcome reasonable doubt.” See Brana, 51 F.3d at 1566; see also, Swartz, 232 F.3d at 864. Rebuttal We are unconvinced by the Appellant’s argument that the Examiner’s findings regarding errors or inconsistencies in the Appellant’s Specification, are “not believed to be particularly relevant inasmuch as an applicant is not required to comprehend the scientific principles of his invention.” See App. Br. 11 (citing to Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983)). In Fromson, the claimed process was for a new and improved method of forming plates for use in lithography that included the formation of a layer with exceptional lithography-related properties; however, the exact structure of the layer was not claimed. Id. at 1569-1570. The scientific principle behind formation of the layer was not claimed, and it was undisputed that an explanation of that principle was not needed to permit a Appeal 2009-004275 Application 10/255,216 13 person of ordinary skill in the art to make and use the claimed device. Id. at 1570. Based on those facts, the court held that the inventor was not required to comprehend the scientific principle on which the practical effectiveness of the invention rests. Id. In contrast to Fromson, where the principle involved was not claimed nor required to be explained for enablement, here the Appellant has claimed the principle involved (nuclear reactions), and the Appellant’s Specification must enable a person of ordinary skill in the art to make and use the claimed method of “generating a sustained nuclear reaction.” Based on this, contrary to the Appellant’s assertion, the Examiner’s evidence that reasonably calls into question the operability of the claimed method of generating a sustained nuclear reaction is relevant. The Appellant’s argument that the scientific community has accepted the Appellant’s invention is based on several assertions: that the experiments in the Specification were conducted by a highly reputable research company, that the Appellant has been invited to numerous international conferences to present the substance of his invention after the submission and peer review of summaries of his invention, and that the Appellant’s invention has been granted in both the United Kingdom and China. App. Br. 11. We note the Appellant could have chosen to submit factual evidence regarding these assertions, but none was submitted. CFMT, Inc. v Yieldup International Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (an applicant may submit objective factual evidence to the PTO during prosecution). However, even assuming, arguendo, these assertions are true, they remain insufficient to rebut the Examiner’s prima facia case of a lack of utility and enablement. Even if the testing referred to in the Specification was completed by a Appeal 2009-004275 Application 10/255,216 14 “highly reputable research company,” this does not address the Examiner’s specific findings regarding errors and inconsistencies in the Appellant’s Specification. Further, being invited to numerous international conferences more likely indicates interest in the Appellant’s topic rather than an endorsement of the claimed method. Further, because the laws on patentability differ in the United Kingdom and China as compared to the law in the United States, the grant of a patent from the United Kingdom or China would not affect the decision by the United States Patent and Trademark Office to grant or deny a patent application based on its own laws and independent judgment. The Appellant also responds by repeating the claim and emphasizing the experiment documented in the Specification. App. Br. 5-8. This response is most notable for what it fails to include: the Appellant fails to address any of the specific findings made by the Examiner. For example, the Appellant failed to respond to the Examiner’s finding that the supporting experiments are invalid because they violate the law of energy conservation. Ans. 10-11. We find the Examiner set forth a prima facie case of lack of utility of the claimed invention. The Appellant’s attempt to rebut this case by asserting the Examiner’s findings are irrelevant, and that the scientific community has accepted the claimed process are unconvincing. Further, the Appellant fails to address the Examiner’s findings directly. We conclude the Appellant failed to adequately rebut the Examiner’s case. Because the application fails as a matter of fact to satisfy 35 U.S.C. § 101, the application also fails as a matter of law to enable a person of ordinary skill in the art to Appeal 2009-004275 Application 10/255,216 15 use the invention under 35 U.S.C. § 112. Claims 11 and 23-25 fall with claim 1. Rejection of claims 1, 11, and 23-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the best mode requirement We determined in the analysis of the rejection of claim 1, supra, that independent claim 1, and its dependent claims 11, and 23-25 lack utility and are not enabled, so that the Appellant’s Specification has not set forth any mode of practicing the invention. The best mode provision of 35 U.S.C. § 112 is not directed to situations where no mode has been set forth, and therefore we cannot sustain this rejection. See Spectra-Physics, 827 F.2d at 1534 (citing In re Glass, 492 F.2d at 1233-1234). Rejection of claims 1, 11, and 23-25 under 35 U.S.C. § 112, second paragraph, as indefinite In this rejection, the Examiner found two phrases in claim 1, viz, “rapid rate sufficient” and “part of the heat,” were indefinite. Ans. 6. In response, the Appellant argues essentially that the claim is enabled by the disclosed working examples. App. Br. 9-10. By contending that the claims are enabled, the Appellant, who carries the burden of showing error in the Examiner’s rejection on appeal to the Board, has failed to demonstrate error in the Examiner’s rejection for indefiniteness. Rejection of claims 1, 11, and 23-25 under 35 U.S.C. § 102(b) as anticipated by Lin Independent claim 1 is a method claim that includes a step of rapidly heating a gas stream at the upstream reservoir at a rapid rate sufficient to Appeal 2009-004275 Application 10/255,216 16 induce nuclear reactions. We agree with the Appellant that Lin is directed to a different method from the claimed method because Lin does not disclose the step of rapidly heating a gas stream at the upstream reservoir at a rapid rate sufficient to induce nuclear reactions (Fact 3). See App. Br. 12. CONCLUSIONS The Appellant has failed to show the Examiner erred in finding that the claimed method is inoperative and lacks utility and in concluding therefore that the claims contain subject matter that is not described in the Specification in a manner sufficient to permit a person of ordinary skill in the art to make and use the invention. The Appellant has shown the Examiner erred in concluding that the Appellant has failed to disclose the best mode. The Appellant has failed to show the Examiner erred in concluding that the claims are indefinite. The Appellant has shown the Examiner erred in finding that the claims are anticipated by Lin. DECISION We AFFIRM the decision of the Examiner to reject claims 1, 11, and 23-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement, and under 35 U.S.C. § 101 as lacking utility invention. Appeal 2009-004275 Application 10/255,216 17 We REVERSE the decision of the Examiner to reject claims 1, 11, and 23-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the best mode requirement. We AFFIRM the decision of the Examiner to reject claims 1, 11, and 23-25 under 35 U.S.C. § 112, second paragraph, as indefinite. We REVERSE the decision of the Examiner to reject claims 1, 11, and 23-25 under 35 U.S.C. § 102(b) as anticipated by Lin No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED Vsh BUTZEL LONG IP DOCKETING DEPT 350 SOUTH MAIN STREET SUITE 300 ANN ARBOR MI 48104 Copy with citationCopy as parenthetical citation