Ex Parte Swartz

Patent Trial and Appeal Board

Sep 28, 2016

09748691 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
091748,691 12/26/2000 Mitchell R. Swartz
7590 09/28/2016
Mitchell R. Swartz, ScD, MD, EE
16 Pembroke Road
Weston, MA 02493
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4269
EXAMINER
KEITH, JACK W
ART UNIT PAPER NUMBER
3646
MAILDATE DELIVERY MODE
09/28/2016 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
Appeal2012-000333 1
Application 09/748,691 2
Technology Center 3600
Before EDWARD A BROWN, MICHAEL L. HOELTER, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 5-8, 10-14, and 21-30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
February 3, 2004) and Reply Brief ("Reply Br.," filed August 29, 2011), and
the Examiner's Answer ("Ans.," mailed July 29, 2011), Advisory Action
("Adv. Act.," mailed April 15, 2003), Final Office Action ("Final Act.,"
mailed February 3, 2003), and Non-Final Office Action ("Non-Final Act.,"
mailed July 5, 2002).
2 Appellant identifies the inventor, Mitchell R. Swartz, as the real party in
interest. App. Br. 2.
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Application 09/748,691
STATEMENT OF THE CASE
Procedural History
The present application is a continuation of application Serial
No. 07 /760,970 (the "'970 application"), entitled "Systems to Control
Nuclear Fusion of Isotopic Fuel Within a Material" filed September 17,
1991, which was the subject of Appeal No. 94-2920 (the "'920 appeal")
before the US PTO Board of Patent Appeals and Interferences. The Board
entered a decision in the '920 appeal on June 22, 1999, affirming the
Examiner's final rejection of all of pending claims 25--48 under 35 U.S.C.
§ 101 for lack of operability and utility, and under 35 U.S.C. § 112, first
paragraph, for failure to comply with the enablement requirement (id. at 23).
The Board concluded that "Appellant's claimed process lacks utility because
it has not been shown that it does what [A ]ppellant claims it does, i.e.,
control and enhance a cold fusion reaction" (id. at 13), and that Appellant's
disclosure is not enabling because "undue experimentation would be
required to perform the process in the manner claimed" (id. at 14).
Appellant appealed to the United States Court of Appeals for the Federal
Circuit, which affirmed the Board's decision, holding that the
'970 application does not satisfy the utility or enablement requirements.
In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000).
CLAIMED INVENTION
Appellant's disclosed invention "relates to methods and systems to
control reactions involving isotopic fuels within a material, such as hydrogen
within palladium" using "at least two non-parallel electric-fields to control
the loading into the material and redistribution of the isotopic fuel within the
material" (Spec. 1 ).
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Claims 1, 10, and 21 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. In a process for producing a product using a material
loaded with an isotopic fuel, a method to control the production
of said product which includes in combination:
applying an electric field to load said isotopic fuel to said
material,
loading said isotopic fuel into said material,
applying a second electric field in a non-parallel direction
to the first applied electric fields,
producing redistribution of said isotopic fuel within said
loaded metal, thereby controlling the product produced.
App. Br., Claim Appendix A. 3
REJECTIONS4
Claims 1, 5-8, 10-14, and 21-30 are rejected under 35 U.S.C. § 101
as inoperative and, therefore, lacking utility. Final Act. 23.
Claims 1, 5-8, 10-14, and 21-30 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement. Id.
at 24; see also id. at 8.
3 The claims listed in Appendix A of the Appeal Brief were rejected in the
Final Office Action, and are addressed in the Examiner's Answer (Ans. 3).
The proposed amendments to the claims, which are incorporated in the
claims listed in Appendix B, were submitted after final rejection, and were
not entered (id.).
4 The Examiner also objected to the Specification under 35 U.S.C. § 112,
first paragraph, "as failing to provide an adequate written description of the
invention and as failing to adequately teach how to make and/or use the
invention, i.e., failing to provide an enabling disclosure" (Final Act. 8).
Because the substance of the objections and rejections is the same, our
decision with respect to the rejections is dispositive of the corresponding
objections.
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Claims 8, 10, 13, 24, 26, and 28 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Id. at 24; see also id. at 6-7.
Claims 1, 5-8, 10-14, and 21-30 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellant regards as the invention.5
Id. at 25.
Claims 1, 5-8, 10-14, and 21-30 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Westfall (US 5,215,631, iss. June 1, 1993). Id.
at 26.
Claims 1, 10, 11, 21, 22, and 24--30 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Kinsella (US 3,682,806, iss. Aug. 8, 1972). Id.
at 30.
Claims 1, 5-7, 10-12, 14, and 21-30 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Westfall and either one of Cedzynska
(WO 93/01601, pub. Jan. 21, 1993) and Edwards (WO 90/15416,
pub. Dec.13, 1990). Id. at 32.
Claims 8 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Cedzynska, Westfall, and any one of Edwards, Sadoway
(WO 91/06959, pub. May 16, 1991), Van Noorden (NL 8909-962-A,
pub. July 1, 1991) and Dufour (WO 91/01036, pub. Jan. 24, 1991). Id. at 33.
5 The Examiner's separate rejection of dependent claims 5 and 22 under
35 U.S.C. § 112, second paragraph, as indefinite for failing to provide
sufficient antecedent basis for the limitation, "the group," has been
withdrawn. Ans. 4.
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that
SUMMARY OF DISPOSITION
The Supreme Court stated in Brenner v. Manson, 383 U.S. 519 (1966)
[t]he basic quid pro quo contemplated by the Constitution and
the Congress for granting a patent monopoly is the benefit
derived by the public from an invention with substantial utility.
Unless and until a process is refined and developed to this
point-where specific benefit exists in currently available
form-there is insufficient justification for permitting an
applicant to engross what may prove to be a broad field.
Id. at 534--35 (emphasis added). Following Brenner, the Federal Circuit and
its predecessor court, the Court of Customs and Patent Appeals, have
required a claimed invention to have a specific and substantial utility to
satisfy the requirements of 35 U.S.C. § 101. See, e.g., Fujikawa v.
Wattanasin, 93 F.3d 1559, 1563 (Fed. Cir. 1996) ("Consequently, it is well
established that a patent may not be granted to an invention unless
substantial or practical utility for the invention has been discovered and
disclosed.") (citation omitted). The Federal Circuit has, thus, held that "an
application must show that an invention is useful to the public as disclosed
in its current form, not that it may prove useful at some future date after
further research." In re Fisher, 421F.3d1365, 1371 (Fed. Cir. 2005).
"Simply put, to satisfy the 'substantial' utility requirement, an asserted use
must show that that claimed invention has a significant and presently
available benefit to the public." Id.
Whether a specification provides an enabling disclosure under
35 U.S.C. § 112, first paragraph, is closely related to the question of whether
an application satisfies the utility requirement of§ 101. See Newman v.
Quigg, 877 F.2d 1575, 1581 (Fed. Cir. 1989) (lack of utility because of
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inoperativeness (a question of fact), and absence of enablement (a question
of law) are closely related grounds ofunpatentability). To be enabling, the
disclosure, as filed, must be sufficiently complete to enable a person of
ordinary skill in the art at the time of the invention to make and use the full
scope of the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Thus, if claims fail to satisfy
the utility requirement of § 101 because the claimed subject matter is either
not useful or inoperative, they also fail to satisfy the enablement requirement
because a person of ordinary skill in the art would not know how to use the
claimed invention. See In re Fouche, 439 F.2d 1237, 1243 (CCPA 1971)
("[I]f such compositions are in fact useless, appellant's specification cannot
have taught how to use them.").
Here, as detailed below, the facts and applicable law weigh in favor of
the Examiner's finding that the claimed invention, as recited in claims 1, 5-
8, 10-14, and 21-3 0, is not supported by either a credible asserted utility or
a well-established utility. Having considered all the relevant evidence of
record, we find that a preponderance of the evidence supports the
Examiner's finding that claims 1, 5-8, 10-14, and 21-30 are directed to a
"concept or expedient that has become known in the art as 'cold fusion"'
(Final Act. 23), and that "the utility of the claimed invention is based upon
allegations ... that would not be readily accepted by a substantial portion of
the scientific community" (id. at 24).
Appellant has not presented evidence sufficient to overcome the
Examiner's prima facie case ofunpatentability, e.g., evidence sufficient to
establish the utility and operability of the claimed invention as of the
effective filing date, i.e., September 17, 1991, of the present application.
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Therefore, we sustain the Examiner's rejections of claims 1, 5-8, 10-14, and
21-30 under 35 U.S.C. §§ 101 (for lack of utility) and 112, first paragraph
(for lack of enablement), based on the findings of fact and applicable law,
and for reasons set forth at pages 26 through 29 of the Examiner's Answer.
We add the following analysis with respect to§§ 101 and 112, first
paragraph, for emphasis only.
As described below in more detail, we do not sustain the Examiner's
rejection of claims 1, 5-8, 10-14, and21-30 under 35 U.S.C. § 112, second
paragraph, because the Examiner has not established a prima facie case of
indefiniteness.
ANALYSIS
The claims on appeal include independent claims 1, 10, and 21, and
claims 5-8, 11-14, and 22-30, which depend therefrom. Appellant asserts
that claims 1, 10, and 21 are separately patentable, and do not stand or fall
together because "they are materially distinct with respect to [the
enablement requirement of] 35 USC 112 first paragraph" (App. Br. 11) and
"with respect to 35 USC 101" (id. at 111). Yet Appellant's arguments are
directed to the "present invention" and/or the claims generally rather than to
any individual claim in particular. See, e.g., App. Br. 11, 12, and 112.
Because Appellant does not present substantive arguments to support
the separate patentability of the claims on appeal, we consider the claims to
be argued as a group. We select independent claim 1 as representative; the
remaining claims 5-8, 10-14, and 21-3 0 stand or fall with claim 1.
See 37 C.F.R. §41.37(c)(l)(vii)(2011).
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Claim Construction
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Amer. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted). If a
claim preamble, when read in the context of the entire claim, recites
limitations of the claim, or if the claim preamble is "necessary to give life,
meaning, and vitality" to the claim, then the claim preamble should be
construed as if in the balance of the claim. Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citation omitted).
Here, the preamble of independent claim 1 recites, "[i]n a process for
producing a product using a material loaded with an isotopic fuel, a method
to control the production of said product." The body of claim 1 recites, inter
alia, "applying an electric field to load said isotopic fuel to said material,"
"loading said isotopic fuel into said material," and "producing redistribution
of said isotopic fuel within said loaded metal, thereby controlling the
product produced"" (emphasis added). The body of the claim, thus,
expressly relies on the preamble to provide antecedent basis for the terms
"material," "isotopic fuel," and "product." As such, the preamble is
necessary to give life and meaning to the claim, and, for that reason, is
construed as if in the balance of the claim.
The Examiner determined, and we agree, that the claimed invention,
as construed in light of Appellant's Specification, including the claim
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language, is directed to a method for controlling the production of a cold
fusion product (Final Act. 4--6). 6
Claim 1, as described above, recites a method for controlling the
production of a product produced using a material loaded with an isotopic
fuel. Appellant does not explicitly identify the product of the claimed
process, and omits any use of the term "cold fusion" in the Specification.
Nonetheless, as the Examiner observes (see Ans. 6-10 and 27), a person of
ordinary skill in the art would understand from the Specification that the
claimed invention is directed to cold fusion reactions, generally, using
catastrophic active medium (CAM) reactors (see Spec. 3-7),7 and more
6 Cold fusion is generally understood to refer to a nuclear reaction that
occurs at, or near, room temperature and generates excess heat and
transmutation products when hydrogen is introduced to a small piece of
nickel or palladium. In the spring of 1989, electrochemists Martin
Fleischmann of South Hampton University, England and B. Stanley Pons of
the University of Utah reported that they had successfully carried out a
sustained nuclear fusion reaction at room temperature (i.e., a "cold fusion"
reaction) in an electrolysis experiment using a palladium cathode and a
heavy water (deuterium oxide) electrolyte solvent in a calorimeter.
Fleischman and Pons reported that their apparatus produced anomalous heat
(i.e., "excess heat," meaning more heat came out of the system than went
into the system, e.g., four watts of power output for each watt of input
power), and also reported measuring small amounts of nuclear reaction by-
products, including neutrons and tritium.
7 Appellant's Specification does not define or describe the term CAM or
CAM reactor in the present application. However, the earlier-filed
'970 application describes, at page 14, a CAM reactor as an
"electrochemical cold fusion reactor" and further states, at page 15, "[ t ]he
catastrophic active medium (CAM) theory of cold fusion differs from the
other theories in that the fusion reaction is hypothesized to not occur within
the metal bulk, but at certain large vacancies and defects by the sudden
fractional desaturation of deuterons" (emphasis added).
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particularly, to controlling the product produced during cold fusion
reactions.
The Specification contains several references to the production of
"desired reactions" with an isotopic fuel (e.g., deuterium), and at page 2,
identifies these "desired reactions" as "electrochemical reactions in or about
metals, such as palladium which has been electrochemically loaded with
deuterium" (Spec. 2). The Specification notes that "[ c ]ontrolled reactions in
loaded metals offers [sic] the possibility of more efficient and inexpensive
energy" (id. at 3, 11. 1-2), and states that "it is a principal object of the
present invention to provide a novel method and system to control and
enhance desired reactions" (id. at 3, 11. 16-18). The Specification also
identifies various problems associated with controlling the "desired
reactions," i.e., the "desired reactions" are slow to initiate, "must be filled
with deuterons to concentrations which require significant times of
charging," require costly use of palladium, and react slowly at steady state
(see id. at 3, 11. 1-14)- matters that one of ordinary skill in the art would
recognize as problems traditionally attributed to cold fusion reactions. 8
The Specification describes that "[a]nother object of the present
invention is to provide a novel method to improve the removal of the
product generated" (id. at 3, 11. 23-24). A person of ordinary skill in the art
would understand that the "product generated" refers to the generation of
8 The Specification of the earlier-filed '970 application, at page 7,
specifically identifies these as problems associated with cold fusion.
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"excess" heat energy (see, e.g., id. at 7, 11. 2--4 ), i.e., the chief product of a
cold fusion reaction. 9
It also is significant here that the present application is a continuation
of Appellant's earlier '970 application. 10 The '970 application, in its
specification, discloses that "[t]he present invention relates to methods and
systems to control cold nuclear fusion" (page 1 ); that "electrochemically
induced nuclear fusion reactions" are to be referred to as "cold nuclear
fusion" (page 6); and that "it is a principal object of the present invention to
provide a novel method and system to control and enhance cold fusion
reactions" (page 7 (emphasis added)). Claim 1 of the '970 application, as
originally filed, recites "a process for producing a nuclear fusion product
from isotopic fuel using a material," and claim 3 recites that the "nuclear
products" include "a member of the group consisting of heat energy and
9 The Specification of the '970 application identifies "excess heat" as the
"chief product of cold fusion" at page 6.
10 The Examiner took the position in the July 5, 2002 Non-Final Office
Action that the present application does not qualify as a continuation of the
'970 application, and may not claim the benefit of the filing date of the
earlier '970 application, because it contains subject matter that was not
disclosed in the earlier application (See Non-Final Act. 2-3 (noting
differences in the covered subject matter, e.g., "electrochemical nuclear
fusion product for the earlier application vs. electrochemical reaction
product for the current application")). Appellant responded with an
Amendment filed December 9, 2002. Seemingly persuaded by Appellant's
response, the Examiner noted in the Final Office Action that Appellant
"addressed this problem [i.e., the prior indication that the present application
does not qualify as a continuation of the '970 application] by deleting
references to 'fuel cells' and deleting 'pressure' in the term 'pressure-
loaded' metals in the statement of relevance of the claimed invention" (Final
Act. 2). And the Examiner concluded, "[ w ]ith this change, the current
application can qualify as a continuation of SIN 0917 60, 970" (id.).
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tritium." Moreover, as the Federal Circuit observed, "throughout
prosecution of [the '970 application], Mr. Swartz continually represented his
invention as relating to cold fusion." In re Swartz, 232 F.2d. at 864. The
Examiner, thus, concluded, "the 'product' of the current claimed invention
must be the same as the product of 'cold fusion' in the parent case,
[application Serial No.] 07 /760,9[7]0" (Final Act. 5). 11
In view of the foregoing, representative claim 1, as properly
construed, is directed to a method, in a process for producing a cold fusion
product using a material loaded with an isotopic fuel, for controlling the
production of the cold fusion product. We tum now to the Examiner's
rejections of claims 1, 5-8, 10-14, and 21-30 under 35 U.S.C. §§ 101 and
112.
Indefiniteness
The Examiner rejected claims 1, 5-8, 10-14, and 21-30 under
35 U.S.C. § 112, second paragraph, as indefinite on the ground that
independent claims 1, 10, and 21 are "vague, indefinite and incomplete as to
what is actually the product" (Final Act. 25). 12 And the Examiner rejected
claim 21 on the further ground that " [ i ]t is unclear which of the recited steps
produces the isotope redistribution" (id.).
11 A "continuation" is a term of art in patent prosecution. The word refers
to a second application for the same invention claimed in a prior non-
provisional application and filed before the prior application is abandoned or
patented.
12 We note that claims may be rejected as being indefinite if they do not
describe what an applicant regards as the invention and/or omit essential
elements, steps or necessary structural cooperative relationship of elements.
See In re Collier, 397 F.2d 1003, 1005(CCPA1968).
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Regarding the rejection of claims 1, 5-8, 10-14, and 21-30, the
Examiner ostensibly maintains that independent claims 1, 10, and 21 are
"vague, indefinite and incomplete as to what is actually the product" because
the claims fail to recite critical, i.e., essential, structure and/or method steps
(see Final Act. 25 (noting that this "specific rejection" was applied to
previous claims 1-14 in the previous Office Action); see also Non-Final
Act. 17-18). Yet the Examiner does not identify any such critical structure
or step of the claimed method that has been omitted. Nor does the Examiner
otherwise explain why a person of ordinary skill in the art, on reading the
claim language in light of the Specification, would have been unable to
determine the metes and bounds of the claims. See In re Zletz, 893 F.2d 319,
322 (Fed. Cir. 1989) (During examination, after applying the broadest
reasonable interpretation to the claim, if the metes and bounds of the claimed
invention are not clear, the claim is indefinite and should be rejected);
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second
paragraph is whether "those skilled in the art would understand what is
claimed when the claim is read in light of the specification."). Instead, the
Examiner merely speculates that omitted structure and/or method steps exist
(see Final Act. 25; Non-Final Act. 18).
The Examiner relies on a comparison of Appellant's claimed
invention to the Westfall and Kinsella prior art references in asserting that
claims 1, 10, and 21 omit critical structure and/or method steps (see id.).
Yet the inquiry under§ 112, second paragraph, asks whether the claims
particularly point out and distinctly claim the subject matter that Appellant
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regards as the invention - a question that is answered based on Appellant's
disclosure, and not on the disclosures of prior art references.
The Examiner has not established, based on Appellant's Specification,
that claims 1, 10, and 21, as drafted, lack any essential step or structure. As
such, the Examiner has not established a prima facie case of indefiniteness.
Therefore, we do not sustain the Examiner's rejection of claims 1, 5-8, 10-
14, and 21-30 under 35 U.S.C. § 112, second paragraph, as "vague,
indefinite and incomplete as to what is actually the product."
Claim 21, reproduced below, is directed to a method for distributing a
hydrogen isotope in a metal:
21. In a process for producing a product using a metal
loaded with an isotope of hydrogen, a method to effect
redistribution of said isotope of hydrogen in said material which
includes in combination:
applying an electric field to load said isotope of hydrogen
into said metal, loading said metal with said isotope of
hydrogen,
thereafter applying a second electric field in a non-
parallel direction to the first applied electric field, ·
thereby distributing said isotope of hydrogen within said
loaded metal.
In separately rejecting claim 21under35 U.S.C. § 112, second
paragraph, as indefinite, the Examiner observes that "[ c ]laim 21 recites in
the preamble a method to effect redistribution of said isotope of hydrogen,
whereas the body of the claim recites 'thereby distributing said isotope of
hydrogen within said loaded metal"' (Final Act. 25). And the Examiner
asserts, "[i]t is unclear which of the recited steps produces the isotope
redistribution" (id.).
In examining a claim for compliance with the definiteness
requirement of 35 U.S.C. § 112, second paragraph, the primary focus is on
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whether the claim meets the threshold requirements of clarity and precision
(i.e., it defines the metes and bounds of the claimed invention with a
reasonable degree of precision and particularity), and not on whether more
suitable language may be available. As such, some latitude in the manner of
expression and choice of claim language is permitted. On the other hand, if
the scope of the invention cannot be determined from the language of the
claims with a reasonable degree of certainty, a rejection under 35 U.S.C.
§ 112, second paragraph, is appropriate. See In re Zletz, 893 F.2d at 322;
Orthokinetics, Inc., 806 F.2d at 1576.
Here, although the claim language may not be as precise as the
Examiner might prefer, we find that a person of ordinary skill would
understand, from the claim language (notwithstanding the use of the term
"redistribution" in the preamble), what is claimed, namely, that a second
electric field is applied in a non-parallel direction to the first applied electric
field to "thereby distribut[ e] said isotope of hydrogen within said loaded
metal" - an act that would, in effect, redistribute the loaded isotope. As
such, a person of ordinary skill in the art would be able to determine the
scope of claim 21 with a reasonable degree of certainty.
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1, 5-8, 10-14, and 21-30 under 35 U.S.C. § 112, second
paragraph.
Utility and Enablement
We address the rejections of representative claim 1 under 35 U.S.C.
§ 112, first paragraph and 35 U.S.C. § 101 together inasmuch as the issues
of utility under§ 101 and enablement under§ 112, first paragraph, are
closely related and tum on the single question of operability, see In re
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Brana, 51F.3d1560, 1564 (Fed. Cir. 1995) ("Obviously, if a claimed
invention does not have utility, the specification cannot enable one to use
it"), which is a question of fact. See In re Ziegler, 992 F.2d 1197, 1200
(Fed. Cir. 1993).
The Court of Customs and Patent Appeals stated in In re Marzocchi,
439 F.2d 220, 223 (CCPA 1971) that
a specification disclosure which contains a teaching of the
manner and process of making and using the invention in terms
which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be taken
as in compliance with the enabling requirement of the first
paragraph of§ 112 unless there is reason to doubt the objective
truth of the statements contained therein which must be relied on
for enabling support.
Id. at 223. From this, the Federal Circuit has held that the PTO has the
initial burden of challenging a presumptively correct assertion of utility in
the disclosure. See In re Brana, 51 F.3d at 1566. "Only after the PTO
provides evidence showing that one of ordinary skill in the art would
reasonably doubt the asserted utility does the burden shift to the applicant to
provide rebuttal evidence sufficient to convince such a person of the
invention's asserted utility." Id. (citation omitted).
The Federal Circuit's decision in the parent '970 application is
illustrative. In that case, the PTO provided several references showing that
results in the area of cold fusion were irreproducible. The court found that
these references "provided substantial evidence that those skilled in the art
would 'reasonably doubt' the asserted utility and operability of cold fusion."
In re Swartz, 232 F.3d at 864. And the evidentiary burden then shifted to
Swartz to submit "evidence of operability that would be sufficient to
overcome reasonable doubt," i.e., evidence sufficient to convince a person of
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skill in the art of the invention's asserted utility. Id. Failing to satisfy this
evidentiary burden, the court found that "the Board did not err in concluding
that the utility of Mr. Swartz's claimed process had not been established and
that his application did not satisfy the enablement requirement." Id.
Here, the Examiner cites multiple publications and other documents
describing the contemporaneous efforts of those skilled in the art to confirm
the results reported by Fleischmann and Pons (see Final Act. 8-22; see also
Ans. 7-9). The results of these attempts were largely negative, and the few
initial positive reports were subsequently retracted or shown to be in error by
subsequent experimenters (see Ans. 7). For example, an April 1989 article
reports:
Researchers at Georgia Institute of Technology described the
errors in their experiments that led them to claim two weeks ago
that they had found signs of "cold fusion" and then to withdraw
those claims soon afterward. 13
A May 1989 article similarly reports on experimental evidence that earlier
assertions of "cold fusion" were based on experimental errors:
In two days of meetings lasting until midnight, members of the
American Physical Society heard fresh experimental evidence
from many researchers that nuclear fusion in a jar of water does
not exist. Physicists seemed generally persuaded as the sessions
ended that assertions of "cold fusion" were based on nothing
more than experimental errors by Utah scientists. 14
Among the experimentation described in the cited publications, a team
of scientists at California Institute of Technology ("Cal Tech") indicates that
13 David Stiff, Georgia Group Outlines Errors That Led To Withdrawal of
"Cold Fusion" Claims, WALL ST. J., April 26, 1989, at B4.
14 Malcolm W. Browne, "Fusion" Claim is Greeted With Scorn by
Physicists, NEW YORK TIMES, May 2, 1989' at A2
17
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[a] series of experiments has been performed to determine
whether nuclear fusion processes occur in palladium rods that
have been electrochemically charged with deuterium. With a
variety of metallurgical pretreatment procedures and different
electrolytes, no evidence has been obtained for any excess
enthalpy, neutron, gamma ray, tritium or helium production
during electrolysis of D20 with palladium cathodes. 15
Researchers at Sandia National Laboratory similarly report:
None of the more than thirty cold fusion systems that we
investigated produced any detectable neutron emission, with an
average statistical uncertainty of 5 neutrons per hour (one
standard deviation). No significant neutron bursts were
detected. 16
Researchers at the Massachusetts Institute of Technology ("MIT"),
disclosing the "[r]esults of experiments intended to reproduce cold fusion
phenomena originally reported by Fleischmann, Pons, and Hawkins,"
likewise report that "[ w ]ithin estimated levels of accuracy, no excess power
output or any other evidence of fusion products was detected." 17
The cited publications reflect the skepticism in the scientific
community concerning the purported results obtained in the
Fleischmann/Pons experiments, and provide compelling evidence that
"virtually none of the scientific community consider[ s] the alleged positive
15 N. S. Lewis et al., Searches for low-temperature nuclear fusion of
deuterium in palladium, 340 NATURE 525 (Aug. 1989) (hereinafter "Lewis").
16 Ronald I. Ewing et al., A Sensitive Multi-Detector Neutron Counter Used
To Monitor "Cold Fusion" Experiments In An Underground Laboratory;
Negative Results and Positive Artifacts, 37 IEEE TRANSACTIONS ON NUCLEAR
SCIENCE 1165 (June 1990).
17 David Albagli et al., Measurement and Analysis of Neutron and Gamma-
Ray Emission Rates, Other Fusion Products, and Power in Electrochemical
Cells Having Pd Cathodes, 9 I. FUSION ENERGY 133 (1990) (hereinafter
"Albagli").
18
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Application 09/748,691
results of cold fusion experiments as being confirmed" (Final Act. 15) and
that the "general consensus [among] those skilled in the art ... is that the
assertions by F [leischmann] and P [ ons] were based on experimental errors"
(Ans. 7). The publications, thus, evidence that a person of ordinary skill in
the art would reasonably doubt the utility and operability of cold fusion, and,
therefore, reasonably doubt the utility and operability of Appellant's claimed
invention.
We find that the Examiner has established a prima facie case of lack
of utility, and, therefore, a prima facie case of non-enablement. See In re
Dash, 118 Fed. Appx. 488, 490 (Fed. Cir. 2004) ("Given the scientific
community's considerable doubt regarding the utility of 'cold fusion'
processes, we hold that the examiner established a prima facie case of lack
of utility and enablement."). Therefore, the burden shifted to Appellant to
rebut the Examiner's prima facie case by submitting "evidence of operability
that would be sufficient to overcome reasonable doubt." See In re Brana,
51 F.3d at 1566.
Appellant variously argues (1) that the references cited by the
Examiner do not apply to the claimed invention; (2) that Appellant's peer-
reviewed publications provide proof of enablement and operability; and
(3) that declarations from persons skilled in the art, as well as literature in
the field, support the utility and operability of Appellant's claimed invention
(App. Br. 16-25). As described below, none of these arguments is
persuasive.
Appellant charges that the references cited by the Examiner are not
applicable to the present invention, and may not be relied on as proof of
inoperability or lack of utility, inter alia, because the references are criticism
19
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of other work in the field or involve experiments that were not performed
using the techniques disclosed and claimed in the present application (App.
Br. 16-18; see also id. at 28-36, 40-41, 46-48). Yet, as described above,
the claims, including, in particular, representative claim 1, are directed to a
process for controlling the production of a cold fusion product. The
references cited by the Examiner are in the same field of endeavor as
Appellant's claimed invention, and concern the recognized inoperability and
lack of utility of "cold fusion" systems. As such, these references are
germane to the patentability of Appellant's claims, and were properly
considered by the Examiner.
Appellant argues that his own peer-reviewed publications are proof of
enablement and operability and that the Examiner has not been fair in
considering Appellant's publications (App. Br. 18-20). Yet, as the
Examiner observes, these publications are self-serving articles that cannot be
considered as coming from an unbiased source (Ans. 28). The publications
also appear to have been submitted with Appellant's March 28, 2003
Response After Final Rejection, which was refused entry (see Adv. Act. 1 );
therefore, the publications are not of record in this appeal (Ans. 28).
Moreover, even if the publications were of record, the publications are dated
after September 17, 1991, i.e., the filing date of the '970 application.
Therefore, they cannot be relied on to cure any deficiency in the disclosure
of the '970 application and, by extension, the disclosure of the present
application (id. ). 18
18 The sufficiency of a disclosure under 35 U.S.C. §§ 101and112, first
paragraph, is judged as of the application filing date. See, e.g., In re Brana,
51 F.3d at 1567 n.19 ("Enablement, or utility, is determined as of the
20
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Application 09/748,691
Appellant identifies a number of declarations and briefs that Appellant
maintains prove the operability and utility of Appellant's claimed invention
(App. Br. 20-21 ). 19 But these documents, like the peer-reviewed
publications, were submitted with Appellant's Response After Final
Rejection, and are not part of the record (Ans. 28). Moreover, even if
considered of record, they have little or no probative value because they
either fail to provide any specific facts regarding the utility of the claimed
invention, or, in the case of Appellant's own declaration, are self-serving.
The February 21, 2001 Amicus Brief provided by Dr. Edmund Storms
(the "Storms Amicus"), for example, was prepared in support of Appellant's
petition for writ of certiorari in application Serial No. 07 /371,937 and the
'970 application. In the Amicus Brief, Dr. Storms states:
[i]t is no longer correct or even rational to argue that this
phenomenon [i.e., cold fusion] is a delusion, a fraud, or a
mistake, as the patent office and other government agencies have
asserted. It is true the phenomenon is difficult to initiate, it is not
well understood, and many of the scientists remain skeptical
because they are unaware of the vast amount of new information.
Nevertheless the phenomenon is as real as can be said for many
new discoveries, discoveries that routinely receive patent
protection.
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 In re Hogan, 559 F.2d 595, 605 (CCPA 1977).
19 The documents are identified as "the Swartz declaration; the Declaration
of Straus ( 4/22/94 ), and the Amicus Curiae Briefs of Drs. Edmund Storms
(2/21/01), Talbot Chubb (2/22/01), Eugene Mallove (3/24/00) and Hal Fox
(2/21/01)." App. Br. 20.
21
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(Storms Amicus 3 ). But the Storms Amicus does not address the presently
claimed invention, and offers no factual support related to its utility.
The Amicus Brief submitted by Dr. Talbot A. Chubb, Ph.D. (the
"T. Chubb Amicus") similarly provides little or no specific opinions or facts
regarding whether Appellant's claimed invention is operative. In the
Amicus Brief, Dr. Chubb states that "McKubre et al. found that excess heat
release in heavy water electrolysis using Pd cathodes depends on the
achieved D/Pd ratio, as well as on other factors [citations omitted];" that
these researchers have used an awkward electrical resistivity method to
measure deuterium loading, which requires that additional wire contacts be
made onto the cathode being tested; and that these additional contacts can
compromise the ability of the metal cathode to achieve high loading
(T. Chubb Amicus 3). Dr. Chubb concludes that "[t]he measurement of
deuterium/metal ratio is of utility in this research and development effort"
and that "[m]ethods that avoid use of extra contacts could be of special
utility" (id). Yet whether the measurement of deuterium/metal ratio has
utility is irrelevant; representative claim 1 is not directed to the measurement
of a deuterium/metal ratio.
The briefs provided by Dr. Eugene Mallove (the "Mallove Amicus")
and by Dr. Hal Fox (the "Fox Amicus") similarly fail to provide any support
for Appellant's utility claim, at least because they fail to address the claimed
invention. In the Mallove Amicus, for example, Dr. Mallove asserts that the
Board, in its decision (in the '970 application), relied on "flawed,
historically-inconsistent" documents (Mallove Amicus i-fi-f l-3) and
questions the "integrity and credibility" of a panel convened by the United
States Department of Energy in 1989 to assess the possibility of cold fusion
22
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(id. if 4). In the Fox Amicus, Dr. Fox opines, "[i]t is my professional
judgment that the method of measuring the degree of hydrogen (or
deuterium) loading of palladium (or any other metal) is clever, not obvious,
and is an important invention with utility" (Fox Amicus if 5). But again, no
facts are provided to support the utility of the presently claimed invention.
Appellant asserts that more than 300 publications, forwarded to the
Office, provide further evidence of the operability and utility of Appellant's
claimed invention (App. Br. 21-25). Yet, these publications, like the
documents described above, were submitted with Appellant's Response
After Final Rejection, and are not part of the record (Ans. 28). Moreover,
even if the publications were of record, Appellant merely identifies the
publications, without any indication of how each reference relates to the
operability and utility of the claimed invention, as set forth in claim 1, or
otherwise demonstrates error on the part of the Examiner. For example,
Appellant cites a 1993 article by Miles "linking the formation of helium-4 to
... excess heat" (App. Br. 22). But Appellant does not identify any
relationship between the Miles disclosure and the claimed invention, as set
forth in claim 1. Also, as the Examiner observes, there is no indication in
the Specification that helium-4 is generated by Appellant's claimed method
(Ans. 29).
Appellant next argues that the Examiner has made errors of fact and
"disingenuously ... relies upon and give[ s] authority to papers which ...
have been shown to have major errors or have proven fraud" (App. Br. 26).
Appellant asserts that "[s]everal ... peer-reviewed publications (including
Fusion Technology and J. Electroanal. Chem.) have exposed ... significant
flaws in the cited so-called 'negative' papers" on which the Examiner relies,
23
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Application 09/748,691
and that, despite the negative results reported by Albagli and Lewis,
"independent analyses (Noninski, cf. also Mallove )"indicate that
researchers at MIT and Cal Tech "may have actually demonstrated excess
heat in their experiments that utilized heavy water" (id.).
The difficulty with Appellant's argument is that Noninski merely
states that a different conclusion may be drawn from an analysis of the data
presented by Albagli. 20 And, although Mallove asserts that there is
"considerable evidence" that the MIT and Cal Tech studies have "major
problems, and may have in fact shown excess heat," Mallove neither
elaborates on those "major problems" nor offers any definitive conclusion
that excess heat was actually produced. 21 Moreover, that a small number of
publications from a small group of proponents of cold fusion may exist is
insufficient to overcome - for purposes of meeting the utility requirement
- the substantial evidence of record that those skilled in the art would
reasonably doubt the operability and reproducibility of cold fusion
experiments generally, and of Appellant's claimed invention in particular.
Appellant further argues that the cited references "have loadings
which are insufficient" and that the "'negative' results may be, in part, due
to inadequate loading ... and/or the failure to monitor said loading of
isotopic fuel ... and/or to activate the loaded quantity of isotopic fuel in
20 Noninski et al., Comments on "Measurement and Measurement and
Analysis of Neutron and Gamma-Ray Emission Rates, Other Fusion
Products, and Power in Electrochemical Cells Having Palladium
Cathodes," 19 FUSION TECHNOLOGY 579-580 (1991).
21 See Declaration of Dr. Eugene F. Mallove, paragraph 9, dated February 6,
1994 submitted in support of Appellant's related application Serial
No. 07/371,937.
24
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Application 09/748,691
various ways ... and/or to drive at the right location" (App. Br. 27; see also
id. at 31 ("The Examiner cites Fleming and other papers where the loading
times are too short"). Yet that argument is not persuasive of Examiner error
at least because it underscores the inadequacies of Appellant's own
Specification - which does not set forth these parameters that Appellant
ostensibly maintains are critical to an operative embodiment of the claimed
invention.
Further charging the Examiner with errors of facts, and addressing the
cited references in tum, Appellant argues that the Examiner erred in relying
on these references because the references are not relevant to the present
invention; are out-of-date and do not reflect the science and engineering of
the field today; and/or contain scientific errors and incorrect or false
assumptions (see App. Br. 28--49). As described above, the cited references
are in the same field of endeavor as Appellant's claimed invention; as such,
the references are germane to the patentability of Appellant's claims, and
were properly considered by the Examiner.
Also, as described above, the sufficiency of a disclosure under § § 101
and 112, first paragraph, is judged as of the application filing date. See, e.g.,
In re Brana, 51 F .3d at 1567 n.19. An appellant cannot cure an insufficient
disclosure by relying on publications or other material published after the
effective filing date of an application unless it is shown that the later
publications are evidence of the state of the art existing at the earlier time.
See In re Hogan, 559 F.2d at 605.
Finally, there is no evidence of record that the references include
scientific errors or that the reported findings are based on incorrect or faulty
25
Appeal2012-000333
Application 09/748,691
assumptions. Attorney argument in a brief cannot take the place of
evidence. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
We also are not persuaded by Appellant's argument that the Examiner
made errors of law (App. Br. 25, 50-51). Appellant charges the Examiner
with having made improper use of the Dash decision,22 and argues that the
Examiner "asserts - without proving it - that the Dash case is the same as
the present instant case" (id. at 50). Yet although the Examiner references
Dash in the Final Office Action (Final Act. 22 ("The Board decision in
[Dash] is considered pertinent")),23 the rejections here on appeal are based
on the Examiner's finding that the evidence of record establishes that those
skilled in the art would reasonably doubt the asserted utility and operability
of Appellant's claimed invention, and not on any finding that the present
invention is either described by, or referred to, in the Board's Dash decision.
For much the same reasons, we also are not persuaded by Appellant's
argument that the Examiner erred in characterizing the present case as
analogous to the situation in In re Chilowsky, 306 F.2d 908 (CCPA 1962)
(App. Br. 50-51). Chilowsky involved an appeal from a Board decision
affirming the final rejection of claims directed to a method and apparatus for
extracting and utilizing thermal energy resulting from atomic decomposition
22 Ex parte Dash, 27 USPQ2d 1481 (BP AI 1992).
23 The Board in Dash held that the examiner did not err in rejecting claims
to a method for producing energy using cold fusion for lack of utility and
enablement 35 U.S.C. §§ 101 and 112, first paragraph, in view of "the
compelling evidence that neither excess heat nor traditional nuclear by-
products of fusion reaction have been detected by careful researchers
conducting experiments under conditions ... analogous to appellants'
electrolytic cell," and appellants' failure to produce "evidence to overcome
the examiner's position." Dash, 27 USPQ2d at 1482.
26
Appeal2012-000333
Application 09/748,691
of uranium and its compounds. Affirming the Board decision, the CCP A
held that the claims were properly rejected under 35 U.S.C. § 112 for lack of
enablement based on the insufficiency of the appellant's disclosure "to teach
one skilled in the art how an operative heat producing neutron reaction may
be accomplish[ ed] without most extensive further research and, in fact, the
exercise of inventive ingenuity." In re Chilowsky, 306 F.2d at 916. The
CCPA particularly noted the appellant's failure to disclose (1) the need for
uranium enriched with the U(235) isotope, and the degree of enrichment
required to obtain an operative process producing useful power;
(2) the critical mass of uranium required for a heat producing reaction;
(3) the critical geometry, particularly as to the uranium particle size; and
( 4) a proportion of carbon to uranium necessary to cause and sustain a chain
reaction - matters that the court concluded would not have been readily
apparent to a person of ordinary skill in the art. See id. at 914--916.
Similarly here, the Examiner determined that Appellant's disclosure is
non-enabling, inter alia, because Appellant fails to "set forth parameters of
an operative embodiment of the invention" and "those of ordinary skill in
this art[ ] do not know what those values should be" (Final Act. 14; see also
Non-Final Act. 13 (noting that the Specification does not disclose structure
unique to Appellant's system which would make Appellant's system
operative whereas the systems disclosed in the referenced "'numerous
teachings by skilled artisans"' were not operative, and also noting the lack of
an enabling disclosure of the parameters of a specific operative embodiment
of the invention)). Appellant argues that "Applicant has provided the Office
with those parameters" (App. Br. 50). But we find no disclosure in the
Specification of the parameters that the Examiner determined were lacking
27
Appeal2012-000333
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(see Non-Final Act. 13 (noting the lack of an enabling disclosure of the
atomic or weight ratio of metal electrodes to electrolyte (e.g., palladium to
gel); dimensional ratio of electrodes to their spacing (i.e., sizes of anode and
cathode relative to the space between them); voltage and current
requirements to produce the orthogonal electric fields and the magnetic
field; surface area-to-volume requirement for the reactor; minimum
concentration of the isotopic fuel in the cathode necessary for the desired
reactions to take place; and the exact composition (including impurities and
amounts thereof) of the electrolyte and of the cathode and of the anode).
Nor, for that matter, does Appellant point to any such disclosure in the
Specification.
To summarize, we find that Appellant has not provided persuasive
objective evidence sufficient to rebut the Examiner's prima facie showing of
inoperability, i.e., Appellant has not established, by a preponderance of the
evidence, that those skilled in the art lacked reasonable doubt as to the
operability and reproducibility of cold fusion experiments generally or of
Appellant's claimed invention in particular.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 1, and claims 5-8, 10-14, and 21-30,
which fall with claim 1. For the same reasons, we also affirm the
Examiner's rejection of claims 1, 5-8, 10-14, and 21-30 under 35 U.S.C.
§ 112, first paragraph. See In re Brana, 51 F .3d at 1564 ("Obviously, if a
claimed invention does not have utility, the specification cannot enable one
to use it").
28
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Written Description/ Anticipation/Obviousness
We do not reach the rejection of claims 8, 10, 13, 24, 26, and 28 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement because our affirmance of the rejection of claims 1,
5-8, 10-14, and 21-30 under 35 U.S.C. § 101 is dispositive as to all of the
claims involved in this appeal. 24 For the same reason, we also do not reach
the rejections of claims 1, 5-8, 10-14, and 21-30 under 35 U.S.C. §§ 102(b)
and 103(a).25
DECISION
The Examiner's rejection of claims 1, 5-8, 10-14, and 21-30 under
35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1, 5-8, 10-14, and 21-30 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement, is affirmed.
24 The written description rejection is based on the Examiner's finding that
Appellant's Amendment filed December 9, 2002, in response to the Non-
Final Office Action mailed July 5, 2002, introduced new matter into the
disclosure. More particularly, the Examiner points to newly introduced
citations to U.S. patent application Serial Nos. 08/406,457 and 09/573,381,
amendments to dependent claims 8, 10, and 13, and new dependent
claims 24, 26, and 28 (see Final Act. 6-7, 24--25).
25 The Federal Circuit, in similar circumstances, has declined to reach
alternate grounds of rejection. See, e.g., In re Comiskey, 554 F.3d 967, 973
(Fed. Cir. 2009) ("We do not reach the [prior art rejections] because we
conclude that many of the claims are 'barred at the threshold by§ 101."'
(quoting Diamond v. Diehr, 450 U.S. 175, 188 (1981)). See also Ex Parte
Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential) (declining to
reach anticipation and obviousness rejections on appeal after concluding
many claims were non-statutory under § 101 ).
29
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We do not reach the Examiner's rejection of claims 8, 10, 13, 24, 26,
and 28 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
The Examiner's rejection of claims 1, 5-8, 10-14, and 21-30 under
35 U.S.C. § 112, second paragraph, is reversed.
We do not reach the Examiner's rejections of claims 1, 5-8, 10-14,
and 21-30 under 35 U.S.C. §§ 102(b) and 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a)(l )(iv).
AFFIRMED
30