Ex Parte Lin

Board of Patent Appeals and Interferences

Oct 30, 2009

10255216 (B.P.A.I. Oct. 30, 2009)

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).
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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
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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
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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.
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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.
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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,
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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.
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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
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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.
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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
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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).
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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
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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
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“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

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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
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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.
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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

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