Ex Parte Rogers

Patent Trial and Appeal Board

Jan 27, 2015

12141644 (P.T.A.B. Jan. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/141,644 06/18/2008 Joel Guild Rogers 5761
7590 01/27/2015
Joel G. Rogers
Apt 211
651 Moberly Road
Vancouver, BC V5Z-4B2
CANADA
EXAMINER
MONDT, JOHANNES P
ART UNIT PAPER NUMBER
2894
MAIL DATE DELIVERY MODE
01/27/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOEL GUILD ROGERS
____________

Appeal 2013-003215
Application 12/141,644
Technology Center 2800
____________

Before BRADLEY R. GARRIS, GEORGE C. BEST, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
decision of the Primary Examiner finally rejecting claims 21–26. We have
jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE.
BACKGROUND
Appellant’s claimed invention relates to “nuclear energy generating
devices, specifically to a hardware module for confining and heating a
plasma inside a nuclear energy device.” Spec. 1.
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Claim 21 is the only independent claim at issue on appeal, and is
reproduced below from the Claims Appendix (App. Br. 7–8):
21. A steady-state fusion energy device comprising:
(a) a vacuum tank having a plurality of outer tank faces,
an inner tank volume, and a center of said inner tank
volume;
(b) a polyhedron having a plurality of faces and a center
of said polyhedron, each of said plurality of faces being
enclosed by a plurality of edges, each of said plurality of
edges being disposed between one of said plurality of
faces and an adjacent one of said plurality of faces, and
said polyhedron disposed so as to place said center of
said polyhedron approximately at said center of said
inner tank volume;
(c) a plurality of modules, each of said plurality of
modules comprising
(1) a vacuum flange having an inside face and an
outside face, said vacuum flange being penetrated by a
plurality of flange-leg-holes, each of said plurality of
flange-leg-holes connecting said outside face to said
inside face;
(2) a plurality of hollow, pressure-tight legs each
having an end and an opposite-end spaced from said end
by a predetermined length, said end of each of said
plurality of hollow, pressure-tight legs aligned one-on-
one with each of said plurality of flange-leg-holes, and
said end vacuum-sealed to said inside face; and
(3) an annular shaped pressure vessel having an
outer vessel face and an inner vessel volume, said outer
vessel face spaced said predetermined length from said
inside face, said outer vessel face being penetrated by a
plurality of vessel-leg-holes connecting said outer vessel
face to said inner vessel volume, each of said plurality of
vessel-leg-holes aligned one-on-one with said opposite-
end of said plurality of hollow, pressure-tight legs, and
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each of said plurality of vessel-leg-holes being vacuum-
sealed one-on-one to said opposite end;
(d) said modules disposed so as to place each of
said annular shaped pressure vessels one-on-one onto
each of said plurality of faces of said polyhedron, each of
said annular shaped pressure vessels being disposed to
create a plurality of gaps, each of said plurality of gaps
being of predetermined width, each of said plurality of
gaps defining an open space from each of said annular
shaped pressure vessels to a next adjacent one of said
annular shaped pressure vessels across each of said
plurality of edges of each of said plurality of faces of said
polyhedron; and
(e) a plurality of annular shaped electromagnets
each comprised of a plurality of associated power-
connections and a plurality of associated coolant
connections, each of said plurality of annular shaped
electromagnets contained inside said inner vessel volume
of one of said plurality of modules, each of said plurality
of power-connections passing through a hollow interior
of one of said plurality of hollow pressure-tight legs, and
each of said coolant-connectors passing through a hollow
interior of one of said plurality of hollow pressure-tight
legs, whereby
a plasma in an energy device can be confined in vacuum
by a surrounding polyhedron of electromagnets, not
touching each other and conveniently connected to
services and operating in atmospheric air.
The Examiner maintains, and Appellant appeals, the following
grounds of rejections:
1. Claims 21–26 under 35 U.S.C. § 101 “because the claimed
invention is inoperative and not supported by either an asserted
utility or well established utility” (Final Act. 14);
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2. Claims 21–26 under 35 U.S.C. § 112, first paragraph, “since the
claimed invention is not supported by either an asserted utility or a
well established utility . . . one skilled in the art clearly would not
know how to use the claimed invention” (id. at 15);
3. Claims 21–26 under 35 U.S.C. § 112, first paragraph, “as
containing 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” (id.);
4. Claim 26 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement because the
limitation “a plurality of ion sources” constitutes new matter (id. at
15–16); and
5. Claims 21–26 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the claimed invention
(id. at 16).
OPINION
In forming the aforementioned rejections, the Examiner takes the
position that the asserted utility of Appellant’s claimed invention is fusion
energy production, and therefore, “in order for the inventive device to be
used for its asserted utility it should function as a nuclear fusion energy
device.” Final Act. 6. According to the Examiner, such a device, if
successful, would be the first in the world to achieve energy production
through nuclear fusion, as evidenced by various prior art references which
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describe previous attempts to make fusion energy devices that were all
unsuccessful because they were not able to produce more energy than they
consumed. Id. at 7.
The Examiner finds that Appellant’s Specification is full of
assumptions and speculation as to how the claimed invention will operate,
and that Appellant has not provided any factual evidence demonstrating the
successful operation of a nuclear fusion energy device. Id. at 11. The
Examiner notes that Appellant does not offer any experimental data as
evidence that the claimed invention is operable, but instead offers only
information derived from a computer simulation. Id. at 8–10. The Examiner
provides several reasons why the computer simulation is flawed, and finds
that it is insufficient to establish the operability of the claimed invention as a
nuclear power generating device. Id.
As a result, the Examiner states that “there is no evidence that an
operable power generation system employing a thermonuclear fusion reactor
has been built.” Id. at 8. In view of the state of the art at the time of the
invention, which at best only identifies the issues that would need to be
resolved before energy generation through fusion reactors would become
possible, the Examiner finds that a person of ordinary skill in the art would
not be able to make and use the claimed invention without undue
experimentation. Id. at 10.
Appellant argues that the Examiner’s utility (Rejection 1), enablement
(Rejection 2 and 3) and indefiniteness (Rejection 5) rejections are flawed
because they are based on the premise that the claims require a net power
producing device, i.e., a device that produces more energy than it consumes.
App. Br. 3–4. To the contrary, Appellant contends that the claims do not
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require or recite net energy production, but instead require only a “fusion
energy device” having the structural features recited in the claims and
“whereby a plasma in an energy device can be confined in vacuum by a
surrounding polyhedron of electromagnets, not touching each other and
conveniently connected to services and operating in atmospheric air.” Id. at
8 (Claims Appendix); Reply Br. 4–5.
Appellant refers to the Specification (as amended on December 9,
2010) wherein “fusion energy device” is defined as a “fusor demonstrating a
measurable amount of fusion energy.” App. Br. 3. Appellant argues that net
power is neither stated in nor implied by this definition. Id. According to
Appellant, fusion energy can be measured indirectly by identifying and
counting unique fusion products, and the measured energy may or may not
exceed the injected energy. Id.
Appellants also contend that the term “fusion energy device” is used
consistently throughout the Specification to include fusion devices that do
not produce net power. For example, Appellant refers to the prior art
tokamak as a fusion energy device in the Specification, and notes that
At high density and temperature, the loss rate of ions becomes
excessive. Replacing these lost ions consumes more power than the
device produces from fusion. The power-in to power-out balance
never reaches the breakeven point. Efforts to solve this problem have
led to constructing bigger and more expensive prototypes. ITER is
the most recent tokamak prototype, being constructed in France. . . . It
is not expected to produce any useable amount of power.
Reply Br. 5 (citation omitted).
Because the claims do not recite a net power device, Appellant
contends that the Examiner did not perform the correct analysis to determine
whether Appellant had satisfied the requirements of 35 U.S.C. §§ 101 and
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112. According to Appellant, the claimed device “is focused on inertial-
confinement fusion and the goal of reducing the loss rate, thereby improving
the power balance of prototype devices.” Reply Br. 5. Appellant argues that
the Examiner never specifically challenges that this operational capability is
enabled and useful. Id. at 5–6.
With regard to the new matter rejection of claim 26, Appellant argues
that ¶ 291 of the Specification refers to “ion sources.” App. Br. 4.
Appellant also argues that the terms “ion guns” and “ion emitters” are
synonymous with “ion sources” and appear throughout the Specification.
Reply Br. 10 (citing Spec. ¶¶ 322, 324, 325, 338 and Fig. 8).
After review of the respective positions provided by Appellant and the
Examiner, we reverse the stated rejections.
The Examiner’s rejections are based on the premise that Appellant’s
claims are directed to an impossible and inoperable device, namely a fusion
energy device that results in net power generation. Although the Examiner
contends that it would be unreasonable to interpret “fusion energy device” to
mean a device that consumes more energy than it produces, the Examiner
fails to provide sufficient factual evidence or analysis in support of this
position. Ans. 4.
To the contrary, as argued by Appellant, a person of ordinary skill in
the art would understand that Appellant’s use of the term “fusion energy
device” in the Specification and claims does not refer to net power gain.
First, claim 21 does not expressly refer to a net power device. Instead, it
only refers to a “fusion energy device.” Next, Appellant uses the term
“fusion energy device” to characterize devices that persons of ordinary skill
in the art recognized as not producing any useable amount of power.
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Therefore, in the context of, and as evidenced by, Appellant’s own
Specification, the term “fusion energy device” does not impart a requirement
that the device produces a net power gain.
Because the Examiner’s rejections are based on an improper and
unsupported interpretation of the claims, we find that the Examiner failed to
establish a prima facie case under 35 U.S.C. §§ 101 and 112 first and second
paragraph (Rejections 1, 2, 3 and 5). Therefore, we reverse these rejections.
We also reverse the Examiner’s new matter rejection of claim 26
(Rejection 4), as Appellant has demonstrated that the Specification contains
adequate description of “a plurality of ion sources.”
CONCLUSION
For the reasons set forth above, we REVERSE the Primary
Examiner’s final rejection of claims 21–26 under 35 U.S.C. §§ 101 and 112.

REVERSED

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