Ex Parte Swartz

Patent Trial and Appeal Board

Mar 16, 2017

12932058 (P.T.A.B. Mar. 16, 2017)

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.
12/932,058 07/05/2003 Mitchell R. Swartz 6716
7590 03/16/2017
Mitchell R. Swartz
16 Pembroke Road
Weston, MA 02493
EXAMINER
MONDT, JOHANNES P
ART UNIT PAPER NUMBER
2894
MAIL DATE DELIVERY MODE
03/16/2017 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 MITCHELL R. SWARTZ
____________

Appeal 2012-012622
Application 12/932,058
Technology Center 2800
____________

Before EDWARD A BROWN, MICHAEL L. HOELTER, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant filed a Motion for Rehearing (“Req. Reh’g.”), pursuant to
37 C.F.R. § 41.52, dated November 11, 2016, seeking reconsideration of our
Decision on Appeal mailed September 28, 2016 (“Decision”), in which we
affirmed the Examiner’s rejections of claims 1–20 under 35 U.S.C. § 101 as
inoperative and, therefore, lacking utility, and under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.1 We have
jurisdiction over the Request under 35 U.S.C. § 6(b).

1 In addition, we reversed the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 112, second paragraph, as indefinite.
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BACKGROUND
We note at the outset that a request for rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the [Patent Trial and Appeal Board (the “Board”)].” 37 C.F.R.
§ 41.52(a). A request for rehearing is not an opportunity to rehash
arguments raised in the briefs. Neither is it an opportunity to merely express
disagreement with a decision without setting forth the points believed to
have been misapprehended or overlooked. As such, the proper course for an
appellant dissatisfied with a Board decision is to seek judicial review, not to
file a request for rehearing to reargue issues that already have been decided.
See 35 U.S.C. §§ 141, 145.
Appellant asserts here that the Request for Rehearing was filed to
“correct egregious errors of fact” in the Decision (Req. Reh’g. 2), and sets
forth the bases for the Request in a series of numbered paragraphs (id. at 7–
13). We are not persuaded by Appellant’s arguments that we
misapprehended or overlooked any point of fact or law in rendering our
Decision. Therefore, we decline to modify the Decision.
ANALYSIS
Addressing each of Appellant’s arguments in turn, we respond as
follows:
13. Despite the Appeal Brief and Reply Brief and Evidence
submitted and received showing the Office was wrong, the Decision of the
Patent Trial and Appeal Board made on September 28, 2016, with
impropriety and falsity on a federal document, odiously lists the Appellant
as “ex parte.” Req. Reh’g. 7.
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RESPONSE: Appellant’s argument is not persuasive of error in the
Decision because Appellant does not identify, with particularity, any point
of fact or law that was misapprehended or overlooked by the Board.
Moreover, Appellant’s argument appears based on a misunderstanding of the
term “ex parte.” “Ex parte” is ordinarily understood to mean “[o]n one side
only; by or for one party; done for, in behalf of, or on the application of, one
party only.” See Black’s Law Dictionary, accessed
at http://thelawdictionary.org/ex-parte (last visited on Mar. 1, 2017).
An administrative proceeding is, thus, said to be “ex parte” where, as here,
the proceeding is conducted at the initiation, and for the benefit, of one party
only. “Ex parte Mitchell R. Swartz,” as it appears in the heading of the
Decision, merely identifies Mitchell R. Swartz as the party to these
proceedings.
14. The Decision by the Patent Trial and Appeal Board, does not
correctly describe the submitted invention. Req. Reh’g. 7.
RESPONSE: Appellant does not indicate how, or in what manner, the
Decision fails to correctly describe the invention. Nor does Appellant
otherwise identify, in this paragraph 14, any point of fact or law that the
Board misapprehended or overlooked. As such, Appellant’s argument is not
persuasive of error in the Decision.
15. None of the relevant figures in the invention’s original
specification are discussed. Req. Reh’g. 7.
RESPONSE: Appellant does not make reference here to any specific
figure in the original specification. Nor does Appellant otherwise identify,
with particularity, any point of fact or law that the Board misapprehended or
overlooked with respect to the unidentified “relevant figures.” As such,
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Appellant’s argument is not persuasive of error in the Decision. The Board
determined, after considering the evidence of record, the Examiner’s
positions, and the arguments presented by Appellant in the briefs, that claims
1–20 were properly rejected under 35 U.S.C. §§ 101 and 112, first
paragraph. That the Decision may not explicitly discuss or make specific
reference to particular evidence, e.g., a particular figure, does not mean that
the evidence has been ignored or that the evidence has, otherwise, not been
fully considered.
16. The actual invention described in the original specification is
only discussed in passing by present one claim, and in one Declaration (vide
infra despite what the invention explicitly is:
a means to “examine the activity of a sample of a material involved
in a reaction with an isotopic fuel.”
Req. Reh’g. 7.
RESPONSE: The claimed invention is described in the Decision,
with reference to independent claim 15, which the Board selected as
representative of the claims on appeal (see Decision 6–7). Claim 15 recites
a method, “[i]n a process for producing a product from a sample of a
material which is loaded with an isotopic fuel . . . , to maximize the quantity
produced of [the] product by [the] sample.” Appellant does not explain how
the selection of claim 15 was in error. Nor does Appellant otherwise
identify, with particularity, any point of fact or law that the Board
misapprehended or overlooked as a result of this claim selection. As such,
Appellant’s argument is not persuasive of error in the Decision.
17. In the Decision, the authors of the Decision ignore the actual
invention and instead launch an unsubstantiated biased attack on ‘cold
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fusion’ even though it says explicitly throughout the OS that THIS invention
is directed to measuring activity. Req. Reh’g. 8.
RESPONSE: Appellant’s Specification discloses that “a principal
object of the present invention [is] to provide a novel method and system to
examine a material for activity concerning the desired reactions.” See
Decision 9–10 (citing Spec. 7). The Specification also discloses that
“[e]xcess heat, tritium generation, and other products” are “produced by the
desired reactions enabled by utilization of active samples of materials,” id.
at 10 (citing Spec. 3), and identifies excess heat as “[t]he chief product of the
cold fusion reaction.” Id. (citing Spec. 4). The only “desired reactions”
disclosed in the Specification are cold fusion reactions, and the only
disclosed “products” produced by a reaction involving an isotopic fuel
loaded into a material are cold fusion products. See id. The Examiner
determined, and the Board agreed, that representative claim 15, as properly
construed in light of Appellant’s Specification, is directed to a method, in a
process for producing a cold fusion product from a sample of a material
which is loaded with an isotopic fuel, for maximizing the quantity of the
cold fusion product produced by the sample (see Decision 7–10). Appellant
charges that the Decision launches “an unsubstantiated biased attack on
‘cold fusion.’” But Appellant does not identify, with particularity, any point
of fact or law that the Board misapprehended or overlooked in construing
claim 15. As such, Appellant’s argument is not persuasive of error in the
Decision.
18. As proof of the Decision’s bias[ed] failure to accurately reflect
the OS, merely consider the number of times words are used in the original
specification, and in the Decision which is not about the original
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specification, but instead a smear on ‘cold fusion.’ Six times ‘cold fusion’ is
mentioned in the OS as a use for the invention. Sixty nine (69) times it is
mentioned in the Decision. Req. Reh’g. 8.
RESPONSE: See Response to paragraph 17, above.
19. By contrast, the Decision mentions the measurement of activity
a mere (only) three (3) times, and only in the direct quotes by Dr. Mallove.
This is reprehensible because the measurement of activity is what the above-
entitled invention is about. Req. Reh’g. 8.
RESPONSE: See Response to paragraph 17, above.
20. None of the relevant substantive text from the Appeal Brief and
Reply Brief demonstrating how the invention works, how the claims are
obviously definite, and how the Examiner is wrong, is discussed. Req.
Reh’g. 8.
RESPONSE: Appellant does not make reference here to any specific
portion of Appellant’s briefs. Nor does Appellant otherwise identify, with
particularity, any point of fact or law that the Board misapprehended or
overlooked. The Board determined, after considering the evidence of
record, the Examiner’s positions, and the arguments presented by Appellant
in the briefs, that the rejection of claims 1–20 under 35 U.S.C. § 112, second
paragraph, as indefinite was improper, but that claims 1–20 were properly
rejected under 35 U.S.C. §§ 101 and 112, first paragraph. Decision 39. By
merely asserting that “[n]one of the relevant substantive text . . ., and how
the Examiner is wrong, is discussed,” Appellant has not identified, with
particularity, any point of fact or law that the Board misapprehended or
overlooked in affirming the Examiner’s rejections under 35 U.S.C. §§ 101
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and 112, first paragraph. As such, Appellant’s argument is not persuasive of
error in the Decision.
21. This measurement of heat release (“activity”) is useful to many
things as discussed in the OS but ignored in the Decision. The Appellant has
even used it to measure calorimetry of plants in the Commonwealth of
Massachusetts. It is egregious the Office dares change a patent application’s
description for any reason, let alone destroying clean energy. Req. Reh’g. 8.
RESPONSE: See Response to paragraph 17, above.
22. In the Decision, the authors of the Decision ignore the
invention’s measure of heat and change the Applicant’s invention to be:
“COLD FUSION” as they begin a biased attack on ‘cold fusion’ using the
Office’s flawed proven-wrong opinion. This has the appearance of
impropriety because it is made absent Evidence submitted and received
BEFORE FINAL, and with the Appeal Brief, and with the Reply Brief.
Req. Reh’g. 8.
RESPONSE: See Response to paragraph 17, above. Also, we note
that the Board rendered the Decision based on the evidence of record. To
the extent Appellant maintains that the Examiner acted improperly in
denying entry of any submitted “Evidence” into the record, an examiner’s
refusal to enter an amendment, evidence, or other document is a petitionable
matter that is not subject to review by this Board. See Manual of Patent
Examining Procedure (“MPEP”) § 1201 (the Board will not ordinarily hear a
question that is reviewable by petition).
23. The Decision mentions the 2004 DOE Report. As stated in the
Briefs, but of course ignored in the Decision, the DOE Report from that
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meeting did not discuss ANY OF APPELLANT’s work. Why is that not
relevant? Why is the argument not relevant? In discussing the DOE Report
that a member of the Panel was a graduate student with the Appellant at MIT
in electrochemistry for two years, and asked where he was. Req. Reh’g. 9.
RESPONSE: The Board determined that the 2004 DOE Report
supports the Examiner’s finding that, as of the date of the DOE Report,
i.e., over nine years after the effective filing date of the present application,
persons of ordinary skill in the art still had reason to doubt the utility and
operability of cold fusion and, therefore, reason to doubt the utility and
operability of Appellant’s claimed invention (see Decision 14–37–38).
Appellant seemingly does not contend that the Board, in making that
determination, misapprehended or overlooked any point with respect to the
materials contained in the 2004 DOE Report. Instead, the apparent thrust of
Appellant’s argument is that the Board would have reached a different
conclusion had Appellant’s work been discussed in the DOE Report. To the
extent that Appellant’s argument amounts to a blanket assertion that the
Board erred in finding that Appellant’s claimed invention is inoperable and,
therefore, lacks utility (which appears to be the substance of Appellant’s
argument), the proper course is to seek judicial review, not to file a request
for rehearing to reargue issues that already have been decided.
24. The Decision ignores the submitted Evidence and the graphs
proving operability which were submitted with the original specification.
Req. Reh’g. 9.
RESPONSE: Appellant does not identify the particular “Evidence
and graphs proving operability” that Appellant contends were ignored. Nor
does Appellant identify, with particularity, any point of fact or law that the
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Board misapprehended or overlooked with respect to the “submitted
Evidence” and “graphs.” As such, Appellant’s argument is not persuasive of
error in the Decision.
25. The submitted and received Evidence from the DIA and DTRA,
explicitly mentioning Applicant’s working technologies in this field, is not
discussed. Req. Reh’g. 9.
RESPONSE: Appellant’s argument is not persuasive of error in the
Decision at least because Appellant does not identify, with particularity, any
point of fact or law that the Board misapprehended or overlooked with
respect to “Evidence from the DIA and DTRA.” 2 Moreover, the sufficiency
of a disclosure under 35 U.S.C. §§ 101 and 112, first paragraph, is judged as
of the application filing date; an appellant cannot cure an insufficient
disclosure by relying on publications or other material published after the
filing of an application unless it is shown that the later publications are
evidence of the state of the art existing at the time the application was filed.
See, e.g., In re Brana, 51 F.3d 1560, 1567 n.19 (Fed. Cir. 1995)
("Enablement, or utility, is determined as of the application filing date.");
In re Hogan, 559 F.2d 595, 605 (CCPA 1977). To the extent that the
“Evidence from the DIA and DTRA” is dated after March 20, 1995, i.e., the
effective filing date of the present application, that “Evidence,” even if
properly made of record, cannot be relied on to cure any deficiency in the
disclosure of the present application, e.g., as proof of operability or utility,
absent such a showing, which has not been made. For example, the Defense

2 “DIA” refers to the U.S. Department of Defense’s (“DOD’s”) Defense
Intelligence Agency (“DIA”); “DTRA” is DOD’s Defense Threat Reduction
Agency.
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Analysis Report (DIA-08-0911-003), submitted by Appellant, bears a
November 13, 2009 date.
26. The Decision is untruthful because the DIA and DTRA
Evidence, among other things, are ignored. Req. Reh’g. 9.
RESPONSE: See Response to paragraph 25, above.
27. The Decision by the Patent Trial and Appeal Board, does not
discuss the Evidence in any substantive way. The most important peer-
reviewed publications which was [sic] submitted, and received many times,
is [sic] mentioned once by title but not discussed as to its [sic] content, even
though they were discussed over and over BEFORE FINAL.
Swartz. M., “Consistency of the Biphasic Nature of Excess
Enthalpy in Solid State Anomalous Phenomena with the Quasi-1-
Dimensional Model of Isotope Loading into a Material,” Fusion
Technology, 31, 63–74 (1997).
Swartz, M., “Quasi-One-Dimensional Model of Electrochemical
Loading of Isotopic Fuel into a Metal,” Fusion Technology, 22, 2, 296–
300 (1992).
Req. Reh’g. 9.
RESPONSE: Appellant’s argument is not persuasive of error in the
Decision because Appellant does not identify, with particularity, any point
of fact or law that the Board misapprehended or overlooked. Appellant
argues that two peer-reviewed publications are not discussed in the Decision
in any substantive way. But Appellant does not indicate where a discussion
of these articles and/or an explanation of their relevance is presented in the
briefs. The Board could not have misapprehended or overlooked any point
of fact or law with respect to these articles when no substantive discussion of
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the articles and their relevance was presented on appeal. In discussing
Appellant’s submitted declarations, the Decision addresses Appellant’s own
declaration, originally prepared in support of Appellant’s application Serial
No. 08/406,457 (the “‘457 application”); Appellant states, in that
declaration, “[m]y invention is operable and the results have been published
in peer reviewed journals,” and lists these articles, among others, for
support. Decision 21–22. We found Appellant’s declaration of little
probative value in the present appeal because Appellant does not explain
how the publications relate to the claimed invention, as recited, for example,
in representative claim 15, or how they demonstrate that Appellant’s
presently claimed invention is operative and reproducible. Id. at 22–23.
28. None of the figures in the peer-reviewed publications
constituting Evidence submitted is discussed in the Decision. The figures
therein prove operability and by the existence of the peer-reviewed paper
both utility and definiteness. Req. Reh’g. 10.
RESPONSE: Appellant does not make reference here to any specific
peer-reviewed publication, let alone any specific figure in the peer-reviewed
publication. Nor does Appellant otherwise identify, with particularity, any
point of fact or law that the Board misapprehended or overlooked. As such,
Appellant’s argument is not persuasive of error in the Decision. The Board
determined, after considering the evidence of record, the Examiner’s
positions, and the arguments presented by Appellant in the briefs, that
claims 1–20 were properly rejected under 35 U.S.C. §§ 101 and 112, first
paragraph. That the Decision may not explicitly discuss or make specific
reference to particular evidence, e.g., a particular publication, does not mean
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that the evidence has been ignored or that the evidence has, otherwise, not
been fully considered.
29. The Decision by the Patent Trial and Appeal Board, does not
discuss the submitted, multiply received, Evidence in any substantive way.
Req. Reh’g. 10.
RESPONSE: Appellant does not identify the particular “submitted,
multiply received, Evidence” that Appellant contends was not discussed “in
any substantive way.” Nor does Appellant otherwise identify, with
particularity, any point of fact or law that the Board misapprehended or
overlooked with respect to the unidentified “submitted, multiply received,
Evidence.” As such, Appellant’s argument is not persuasive of error in the
Decision. That the Decision may not explicitly discuss or make specific
reference to particular evidence does not mean that the evidence has been
ignored or that the evidence has, otherwise, not been fully considered.
30. The Decision is untruthful by misquoting, misrepresenting, and
substituting opinion for fact. Req. Reh’g. 10.
RESPONSE: Appellant does not identify where, or in what manner,
the Decision is “untruthful by misquoting, misrepresenting, and substituting
opinion for fact.” Nor does Appellant otherwise identify, with particularity,
any point of fact or law that the Board misapprehended or overlooked. As
such, Appellant’s argument is not persuasive of error in the Decision.
Further, the Board disagrees with Appellant’s contention that the Decision is
untruthful.
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31. Most egregious of the Office’s omissions are those are that
involve Evidentiary materials previously removed from the Docket. Req.
Reh’g. 10.
RESPONSE: The Board rendered the Decision based on the evidence
of record. To the extent that Appellant maintains that the Examiner acted
improperly in denying entry of any submitted “Evidentiary materials” into
the record, an examiner’s refusal to enter an amendment, evidence, or other
document is a petitionable matter that is not subject to review by this Board.
See MPEP § 1201 (the Board will not ordinarily hear a question that is
reviewable by petition).
32. The systematic removal of Evidence which was submitted
before FINAL and not logged and discussed anywhere is not addressed in
the flawed Decision. In this matter, too, the Appellant’s, then Applicant’s,
criticisms and complete rebuttals of the Examiner have all been ignored.
Req. Reh’g. 10.
RESPONSE: See Response to paragraph 31, above.
33. After ignoring the Evidence, the Decision cruelly and with
blatant discrimination, the Decision falsely proclaims the Appellant has been
“ex parte.” Req. Reh’g. 10.
RESPONSE: The term “ex parte” is not used in the Decision in a
cruel or discriminatory manner. See also Response to paragraph 13, above.
34. The Decision fails to list or discuss and with precise substantive
detail all of Appellant’s Arguments which were presented. Req. Reh’g. 11.
RESPONSE: Appellant does not identify the particular argument(s)
that “[t]he Decision fails to list or discuss . . . with precise substantive
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detail.” Nor does Appellant otherwise identify, with particularity, any point
of fact or law that the Board misapprehended or overlooked with respect to
the unidentified arguments As such, Appellant’s argument is not persuasive
of error in the Decision. See also Decision 38 (“We have considered
Appellant’s remaining arguments [i.e., the arguments that were not
addressed explicitly] offered in the Appeal Brief and Reply Brief, and find
them unpersuasive.”).
35. The Appellant’s discussions and substantive arguments
regarding the Exhibits and the undiscussed Evidence are not discussed. Not
at all. Req. Reh’g. 11.
RESPONSE: See Response to paragraph 34, above.
36. For example, the quasi-[I]-model used to analyze the heat
transfer was discussed extensively in the OS and Briefs but ignored, because
on page 22 the Decision falsely states nothing was discussed. Is a deposition
required? Req. Reh’g. 11.
RESPONSE: Appellant’s argument is not persuasive of error in the
Decision. Appellant does not identify the particular aspects of the quasi-I-
model that Appellant contends were ignored. Nor does Appellant otherwise
identify, with particularity, any point of fact or law that the Board
misapprehended or overlooked with respect to the quasi-I-model. The
discussion at page 22 of the Decision relates to statements in a submitted
Declaration of Dr. Mitchell Swartz, dated September 16, 1997. As indicated
in the Decision, Dr. Swartz does not explain in that declaration how the
quasi-I publication relates to the claimed invention, as set forth, for example,
in representative claim 15, or how it demonstrates that Appellant’s presently
claimed invention is operative and reproducible.
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37. The Decision by the Patent Trial and Appeal Board fails to
mention, address, or refute the meticulous responses made by the Appellant,
and as Applicant before that, including explicit criticism of process. Req.
Reh’g. 11.
RESPONSE: See Response to paragraph 34, above.
38. After ignoring the Arguments, the Decision cruelly and with
blatant discrimination and by patent fraud, falsely proclaims the Appellant
has been “ex parte.” Req. Reh’g. 11.
RESPONSE: See Response to paragraph 33, above.
39. Appellant has not been “ex parte” as the Decision falsely
purports. Req. Reh’g. 11.
RESPONSE: See Response to paragraph 13, above.
40. On information and belief, it is believed that Examiner had an
ex parte communication with the Board which was withheld from the
Appellant. Hence the ‘ex parte’ falsehood. The Applicant (also Appellant)
has always responded. Req. Reh’g. 11.
RESPONSE: There is no evidence of record, nor does Appellant
point to any such evidence, to support Appellant’s assertion that the
Examiner had an ex parte communication with the Board. The Board, in
fact, has had no ex parte communication with the Examiner. Moreover,
unsubstantiated assertions based “on information and belief” do not
constitute the identification, with particularity, of points of fact or law
believed to have been misapprehended or overlooked by the Board. As
such, Appellant’s argument is not persuasive of error in the Decision.
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Regarding the alleged “‘ex parte’ falsehood,” see Response to paragraph 33,
above.
41. On information and belief, the Appellant again has had
documents withheld from him in the above-entitled action, as in others
actions. The Applicant (also Appellant) has always responded. Req.
Reh’g. 12.
RESPONSE: There is no evidence of record, nor does Appellant
point to any such evidence, to support Appellant’s assertion that documents
have been withheld from him in this action. See also Response to
paragraph 40, above.
42. On information and belief, the Office has either withheld
Evidence and Briefs from the Board of Patent Appeals or has conspired with
the author of Decision. Req. Reh’g. 12.
RESPONSE: There is no evidence of record, nor does Appellant
point to any such evidence, to support Appellant’s assertion that “the Office
has either withheld Evidence and Briefs from the Board of Patent Appeals or
has conspired with the author of Decision.” See also Response to
paragraph 40, above.
43. The Decision by the Patent Trial and Appeal Board, does not
discuss fully and complete [sic], and with appropriate issue, the submitted
Declarations in the relevance of which they were given. Req. Reh’g. 12.
RESPONSE: The declarations submitted by Appellant are discussed
at pages 21–37 of the Decision. Appellant does not identify, with
particularity, any point of fact or law that the Board misapprehended or
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overlooked in considering the submitted declarations. As such, Appellant’s
argument is not persuasive of error in the Decision.
44. The Declarants are ridiculed, marginalized, and their content
presented in the Declarations is never fully described. This is done wrongly
and with impropriety presented to lead away from the important issues.
Req. Reh’g. 12.
RESPONSE: The Board, in no way, “ridiculed” or “marginalized”
any of Appellant’s declarants. See also Response to paragraph 43, above.
45. As one example, on page 29, the late Hal Fox declares the
utility of the present invention, but that is changed in the Decision. Req.
Reh’g. 12.
RESPONSE: The Board determined that the Fox declarations failed
to address the presently claimed invention (Decision 29). Appellant does
not identify, with particularity, any point of fact or law that the Board
misapprehended or overlooked in considering the Fox declarations. As
such, Appellant’s argument is not persuasive of error in the Decision.
46. With impropriety, the Decision by the Patent Trial and Appeal
Board, does not discuss the previous removal of Evidence, and failure to
docket that Evidence, even though it was discussed and detailed in the
Appeal Brief and Reply Brief. Req. Reh’g. 12.
RESPONSE: See Response to paragraph 31, above.
47. At no place in the Decision is the fact that the previous
Decision (cited and relied upon in the present Decision) falsely, cruelly, and
wrongly, misdescribed the invention and failed to docket Evidence. Req.
Reh’g. 13.
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RESPONSE: Appellant’s argument is not persuasive of error in the
Decision because Appellant does not identify, with particularity, any point
of fact or law that the Board misapprehended or overlooked. In discussing
the procedural history of the case, the Decision describes that the present
application is a continuation of Appellant’s application Serial
No. 08/406,457 (the “‘457 application”), and that the ‘457 application was
the subject of an earlier appeal before the USPTO Board of Patent Appeals
and Interferences (the “BPAI”). The Decision further describes that
Appellant appealed the BPAI decision to the U.S. Court of Appeals for the
Federal Circuit, and that the Federal Circuit affirmed the BPAI decision
(In re Swartz, 50 Fed. Appx. 422, 425 (Fed. Cir. 2002)), holding that the
claims of the ‘457 application do not comply with the utility and enablement
requirements. See Decision 2. In rendering the Decision in the present
appeal, the Board did not treat either the earlier BPAI decision or the Federal
Circuit decision as binding precedent. Regarding the alleged failure to
“docket Evidence,” see Response to paragraph 31, above.
48. The Decision refers to previous Decisions which had
falsehoods by the Office as demonstrated in the federal appellate court. As
such, the Decision with impropriety fails to discuss the implication of the
previously removed Evidence, and the previous flawed description of the
invention. This is serious, making the author of the Decision a possible
conspirator in RICO of using rubberstamping of palpable corruption, if not
treason. Req. Reh’g. 13.
RESPONSE: See Responses to paragraphs 31 and 47, above.
49. There is no fairness. The Decision by the Patent Trial and
Appeal Board fails to mention, address, or refute the fact that the Office has
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given out ‘cold fusion’ patents to many others, proving discrimination. Req.
Reh’g. 13.
RESPONSE: Appellant’s argument is not persuasive of error in the
Decision because Appellant does not identify, with particularity, any point
of fact or law that the Board misapprehended or overlooked. Even assuming
others have obtained “cold fusion” patents, that is no indication that a point
of fact or law was misapprehended or overlooked by the Board in rendering
the Decision in the present application. See In re Giolito, 530 F.2d 397, 400
(CCPA 1976) (“We reject appellants’ argument that the instant claims are
allowable because similar claims have been allowed in a patent. It is
immaterial whether similar claims have been allowed to others.”).
50. On information and belief, the Office has either withheld
Evidence and Briefs from the Board of Patent Appeals or has conspired with
the author of the Decision to have it removed from the federal record. Req.
Reh’g. 13.
RESPONSE: See Response to paragraph 31, above.
51. The Decision is an attempt by false statements in a Decision to
lead away future investigators from the initial cover-up including
misdescribing the invention, and ignoring removal of Evidence. Req.
Reh’g. 13.
RESPONSE: Appellant does not identify where, or in what manner,
“false statements” were made in the Decision “to lead away future
investigators from the initial cover-up including misdescribing the invention,
and ignoring removal of Evidence.” Nor does Appellant otherwise identify,
with particularity, any point of fact or law that the Board misapprehended or
overlooked. As such, Appellant’s argument is not persuasive of error in the
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Decision. Regarding the alleged “removal of Evidence,” see Response to
paragraph 31, above.
52. The Examiner has been shown to be wrong in his rejection that
the “Specification is objected to under 35 U.S.C. 112, first paragraph, for
failing to provide a written description of the invention and for failing to
adequately teach how to make and/or use the invention, i.e., for failing to
provide an enabling disclosure.” Req. Reh’g. 14.
RESPONSE: The Board affirmed the Examiner’s rejection of
claims 1–20 under § 112, first paragraph, for failing to comply with the
enablement requirement. Appellant does not identify, with particularity, any
point of fact or law that the Board misapprehended or overlooked in
affirming the Examiner’s rejection. As such, Appellant’s argument is not
persuasive of error in the Decision. No rejection under 35 U.S.C. § 112, first
paragraph, for failure to comply with the written description requirement
was before the Board on appeal.
53. The Examiner has been shown to be wrong in his rejection of
Claims 1–20 under 35 U.S.C. 101 because there is credible, well established
utility. Req. Reh’g. 14.
RESPONSE: The Board affirmed the Examiner’s rejection of
claims 1–20 under § 101 for lack of utility. Appellant does not identify,
with particularity, any point of fact or law that the Board misapprehended or
overlooked in affirming the Examiner’s rejection. As such, Appellant’s
argument is not persuasive of error in the Decision.
54. The Examiner has been shown to be wrong in his rejection of
Claims 1–20 under 35 U.S.C. 112, first paragraph. Req. Reh’g. 14.
RESPONSE: See Response to paragraph 52, above.
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55. The Examiner has been shown to be wrong in his rejection of
Claims 1–20 under 35 U.S.C. 112, first paragraph, as failing to comply with
the enablement requirement. Req. Reh’g. 14.
RESPONSE: See Response to paragraph 52, above.
56. The Examiner has been shown to be wrong in his rejection of
Claims 1–20 under 35 U.S.C. 112, first paragraph, as based on a disclosure
which is not enabling. Req. Reh’g. 14.
RESPONSE: See Response to paragraph 52, above.
57. The Examiner has been shown to be wrong in his rejection of
Claims 1–20 under 35 U.S.C. 112, second paragraph, as being incomplete
for omitting essential elements. Req. Reh’g. 14.
RESPONSE: The Board reversed the Examiner’s rejection of
claims 1–20 under § 112, second paragraph.
58. The Examiner has been shown to be wrong in his rejection of
Claims 1–20 under 35 U.S.C. 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject which
applicant regards as the invention. Req. Reh’g. 14.
RESPONSE: See Response to paragraph 57, above.

DECISION
Appellant’s Request for Rehearing has been granted to the extent that
we have reconsidered our Decision in light of Appellant’s Request, but is
denied in all other respects.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a).

DENIED