Ex Parte Swartz

Patent Trial and Appeal Board

Sep 28, 2016

12932058 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/932,058
7590
Mitchell R. Swartz
16 Pembroke Road
Weston, MA 02493
FILING DATE FIRST NAMED INVENTOR
0710512003 Mitchell R. Swartz
09/28/2016
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.
6716
EXAMINER
MONDT, JOHANNES P
ART UNIT PAPER NUMBER
2894
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
Appeal2012-012622 1
Application 12/932,0582
Technology Center 2800
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 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
May 19, 2012) and Reply Brief ("Reply Br.," filed September 7, 2012), and
the Examiner's Answer ("Ans.," mailed August 15, 2012) and Final Office
Action ("Final Act.," mailed December 22, 2011).
2 Appellant identifies the inventor, Mitchell R. Swartz, as the real party in
interest. App. Br. 7.
Appeal2012-012622
Application 12/932,058
STATEMENT OF THE CASE
Procedural History
The present application is a continuation of application Serial
No. 08/406,457 (the "'457 application"), entitled "Apparatus to Determine
the Activity of a Sample Loaded with Isotopic Fuel," filed March 20, 1995,
which was the subject of Appeal No. 1998-2593 (the "'593 appeal") before
the USPTO Board of Patent Appeals and Interferences. The Board entered a
decision in the '593 appeal on July 27, 2001, affirming the Examiner's final
rejection of claims 13, 14, 21, 22, and 24--39 for lack of operability and
utility under 35 U.S.C. § 101, and for failure to comply with the enablement
requirement of 35 U.S.C. § 112, first paragraph (id. at 43). In doing so, the
Board concluded that the evidence of record supported the Examiner's
finding that the claims there on appeal were "directed to accomplishing an
'unattainable result,' i.e., a result [in the area of cold fusion] that is not
attained in a reproducible manner" (id. at 24), and that "those skilled in the
art would 'reasonably doubt' the asserted utility and operability of cold
fusion" (id.). Appellant subsequently appealed to the United States Court of
Appeals for the Federal Circuit, which affirmed the Board's decision. In re
Swartz, 50 Fed. Appx. 422, 425 (Fed. Cir. 2002). 3
3 We note that independent claim 15 of the present application is identical to
representative independent claim 34 of the '457 application on appeal in the
earlier proceedings. Independent claim 1 of the present application also is
substantially identical to, and of the same scope as representative
independent claim 13 of the '457 application.
2
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CLAIMED INVENTION
Appellant's disclosed invention "relates to methods and systems used
to examine the activity of a material involved in the loading of, and reaction
with, an isotopic fuel. Said material is from a group which includes
palladium loaded with deuterium from heavy water or nickel reacting with
ordinary water" (Spec. 1 ).
Claims 1, 3, and 15 are the independent claims on appeal. Claim 15,
reproduced below, is illustrative:
15. In a process for producing a product from a sample
of a material which is loaded with an isotopic fuel, a method to
maximize the quantity produced of said product by said sample
that comprises in combination[:]
loading said sample with said isotopic fuel by driving said
sample as a cathode in combination with an anode and an
electrical power supply,
monitoring said product obtained from said sample of
material,
varying the input electrical drive conditions, integrating
the accumulated data to determine the optimum electrical drive
condition for said sample of material,
characterizing said sample by the peak relative output of
said product at said optimum, and
driving said sample at said optimum input electrical drive
condition.
3
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REJECTIONS4
Claims 1-20 are rejected under 35 U.S.C. § 101 as inoperative and,
therefore, lacking utility.
Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 1-20 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.
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.
4 The Examiner also objected to the Specification under 35 U.S.C. §§ 101
and 112, first paragraph, on the ground the claimed method is inoperable and
for failing to provide an enabling disclosure (Final Act. 2-7). Because the
substance of the objections and rejections is the same, we address the
operability and enablement issues in our analysis of the rejections. Our
decision with respect to the rejections is, therefore, dispositive of the
corresponding objections.
4
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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
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.").
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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 1-20,
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 1-20 are directed to a method for improving a cold fusion process,
and that a person of ordinary skill in the art would reasonably doubt the
asserted utility of Appellant's claimed invention.
Appellant has not presented evidence sufficient to overcome the
Examiner's prima facie case of unpatentability, e.g., evidence sufficient to
establish the utility and operability of the claimed invention as of the
effective filing date, i.e., March 20, 1995, of the present application.
Therefore, we sustain the Examiner's rejections of claims 1-20 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 4 through 19 of the Examiner's Answer. We add
the following analysis with respect to§§ 101and112, first paragraph, for
emphasis only.
As described below in more detail, we do not sustain the Examiner's
rejection of claims 1-20 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, 3, and 15, and
claims 2, 4--14, and 16-20, which depend therefrom. Appellant asserts that
the claims are separately patentable, and do not stand or fall together (App.
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Br. 8, 77). Yet Appellant's arguments are all but exclusively directed to the
"invention" and/or "the claims" generally rather than to any individual claim
in particular. See, e.g., App. Br. 78-80, 95, 108, 114, and 142.5
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 15 as representative; the
remaining claims 1-14 and 16-20 stand or fall with claim 15. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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
5 To the extent that Appellant refers to claim 1 individually (see App.
Br. 84--86, and 212-213), Appellant merely references the language of the
claim, and concludes that the claim has utility. See id. at 86 ("Each step is
reasonable and has operability. Each step is able to each stand alone
(MPEP 2111.02) with respect to operability. Compliance of this is obvious
and demonstrated line by line. The result is the method thereby deriving an
optimum drive condition of said sample. That has considerable utility") and
213 ("Claim 1 has, and all the claims have, justifiable utility."). Appellant's
mere assertions of utility, without any persuasive argument or technical
reasoning, are not considered separate substantive arguments in support of
the patentability of claim 1.
7
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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 claim 15 recites, "[i]n a process for producing a
product from a sample of a material which is loaded with an isotopic fuel, a
method to maximize the quantity produced of said product by said sample."
The body of claim 15 recites, inter alia, "loading said sample with said
isotopic fuel," "monitoring said product obtained from said sample of
material," and "characterizing said sample by the peak relative output of
said product at said optimum [electrical drive condition for said sample of
material]" (emphasis added). The body of the claim, thus, expressly relies
on the preamble to provide antecedent basis for the terms "product,"
"isotopic fuel," and "sample." As such, the preamble is necessary to give
life and meaning to the claim, and is entitled to patentable weight.
The Examiner determined, and we agree, that "the claimed invention
[as construed in light of Appellant's Specification] is drawn to a method
[for] improving a cold fusion process" (Ans. 4) and that "the field of basic
research to which the invention belongs is called 'cold fusion"' (id. at 5). 6
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 1989, Martin Fleischmann and Stanley Pons
announced 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), and also reported
measuring small amounts of nuclear reaction by-products, including
neutrons and tritium.
8
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The Specification suggests that the explanation for "previous
'negative' experiments [attempting to demonstrate that nuclear reactions,
i.e., cold fusion reactions, do occur in deuterium-loaded palladium and some
other loaded and active materials] may reside in the calorimetric equipment,
and the paradigms, as well as the material itself' (Spec. 5), and that "[ m ]any
negative results may be, in part, due to inadequate loading ... the failure to
monitor said loading ... or the failure to activate" (id.). The Specification,
thus, 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;" to "evaluate and quantity [sic] the activity of said
sample;" to "detect specific materials which demonstrate the activity
required for potential bursts, or steady state levels, of these reactions;" to
"detect materials which can fill, or otherwise react with, the isotopic fuel
with shorter times until the onset of the desired reactions;" and to
"discriminate for optimal activity in a group of samples of said material" (id.
at 7). In other words, "[t]he principal objective of the invention is to
improve loading of the active samples of metal with isotopic fuel in the hope
and expectation that this improvement may explain the 'negative' results of
cold fusion as due to insufficient loading" (Ans. 5).
Independent claim 15 is directed to a method, comprising a number of
steps, implemented "[i]n a process for producing a product from a sample of
a material which is loaded with an isotopic fuel." Appellant argues that the
operability and utility of the claimed invention are independent of cold
fusion and excess heat (App. Br. 104--108). Yet, as described above, the
Specification discloses that "a principal object of the present invention [is] to
provide a novel method and system to examine a material for activity
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concerning the desired reactions" (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"
(Spec. 3). The Specification identifies excess heat as "[t]he chief product of
the cold fusion reaction" (Spec. 4). And helium, "ash," and other particles
(tritium, neutrons, rare heavy elements) are also identified as "product[s]
of ... cold fusion" (id.).
The only "desired reactions" that we find 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.
In light of this disclosure, claim 15, as properly construed, 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.
Having determined based on the record before us that representative
independent claim 15 is directed to a process for producing a cold fusion
product, we tum to the Examiner's rejections of claims 1-20 under
35 U.S.C. §§ 101 and 112.
Indefiniteness
The Examiner rejected claims 1-20 under 35 U.S.C. § 112, second
paragraph, as indefinite on two separate bases - ( 1) that the "metes and
bounds of the claimed invention are vague and ill-defined due to the
inadequacy of the written support, which does not enable the claimed
invention for its asserted utility;" and (2) "as being incomplete for omitting
essential elements" (Final Act. 8-9). However, the Examiner has failed to
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establish a prima facie case of indefiniteness under 35 U.S.C. § 112, second
paragraph, on either of these bases.
Regarding the first basis, the Examiner's reference to an "inadequacy
of the written support" suggests an inadequacy of the written description of
the Specification, not the claims, and as such, would appear to be more
properly directed to a written description or enablement rejection under
§ 112, first paragraph, rather than a indefiniteness rejection under§ 112,
second paragraph. Moreover, the Examiner fails to identify which claim
limitations are allegedly vague and ill-defined.
Regarding the second basis, the Examiner asserts that claims 1-20 are
incomplete for omitting essential elements.7 Yet the Examiner does not
identify any "essential step" of the claimed method that has been omitted.
Nor does the Examiner otherwise explain why a person of ordinary skill in
the art would be 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.").
7 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 (CCPA 1968).
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Representative claim 15, for example, recites, "[i]n a process for
producing a product from a sample of a material which is loaded with an
isotopic fuel," a method to maximize the quantity of product produced
comprising a number of steps. The Examiner does not maintain that any
step has been omitted in claim 15. Instead, the Examiner asserts that the
omitted element is the characterization of the "product" as a "cold fusion
product:"
The omitted elements are: the product as fusion reaction product,
which is what the specification elevates as the very goal of the
claimed method. See all of pages 1-35, from which it is clear
that the product is a cold fusion product.
(Final Act. 8-9). The Examiner, thus, proposes that the claim should be
amended to recite a "cold fusion" product. But that amendment would not
add an "essential" step that is missing or has been omitted. Nor would it
otherwise add anything to the claim that is not already there. It simply states
what is accomplished by performing the claimed steps- i.e., the production
of a cold fusion product, which the Examiner asserts is clear from the
Specification.
The Examiner has not established, based on Appellant's Specification,
that claims 1-20, as drafted, lack a step or structure essential to operation of
the claimed method. And, as such, the Examiner has not established a prima
facie case of indefiniteness.
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1-20 under 35 U.S.C. § 112, second paragraph.
Utility and Enablement
We address the rejections of claim 15 under 35 U.S.C. § 112, first
paragraph, and under 35 U.S.C. § 101 together inasmuch as the issues of
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utility under § 101 and enablement under § 112, first paragraph, are closely
related and tum on the single question of operability, see In re 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).
In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) 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." Id. 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.,
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evidence sufficient to convince a person of 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.
Citing multiple scientific publications (see Ans. 6-7 and 12-16),
including, in particular, a "Report of the Energy Research Advisory Board to
the United States Department of Energy," dated November 1989 (the
"USDOE 1989 Report") and a follow-up report to the USDOE 1989 Report
by the United States Department of Energy, entitled "Report of the Review
of Low Energy Nuclear Reactions," dated December 1, 2004 (the "USDOE
2004 Report"), the Examiner determined here that "there is ample evidence
showing that one of ordinary skill in the art would reasonably doubt the
asserted utility" of Appellant's claimed invention, as recited in claims 1-20
(Ans. 6). We agree with the Examiner that there is a reasonable basis to
doubt the asserted utility of claims 1-20, and adopt the Examiner's findings
and rationale, as set forth at pages 4 through 19 of the Answer, as our own.
The USDOE 1989 Report stemmed from a request by the Secretary of
Energy "that the Energy Research Advisory Board (ERAB) convene a panel
to assess the possibility of cold fusion" (USDOE 1989 Report, p. 1 ). Based
on the examination of published reports, reprints, numerous communications
to the Panel, and several site visits, the Panel concluded that "the
experimental results on excess heat from calorimetric cells reported to date
do not present convincing evidence that useful sources of energy will result
from the phenomena attributed to cold fusion" and further that "experiments
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reported to date do not present convincing evidence to associate the reported
anomalous heat with a nuclear process" (id).
The USDOE 1989 Report acknowledges "that some observations
attributed to cold fusion are not yet invalidated" (id.). However, the Panel
notes that "even the strongest proponents of cold fusion assert that the
experiments, for unknown reasons, are not consistent and reproducible at the
present time" (id. at 2) and that "[ n ]uclear fusion at room temperature, of the
type discussed in this report, would be contrary to all understanding gained
of nuclear reactions in the last half century; it would require the invention of
an entirely new nuclear process" (id. at 3). The Panel further concludes that
"[e]xperiments reporting fusion products (e.g., neutrons) at a very low level,
if confirmed, are of scientific interest but have no apparent current
application to the production of useful energy" (id. at 4).
The USDOE 2004 Report represents a follow-up investigation to the
USDOE 1989 Report in response to a 2003 request by a group of scientists
that the Department of Energy (DOE) "revisit the question of scientific
evidence for low energy nuclear reactions" (US DOE 2004 Report, p. 1 ).
The Department's Office of Science "agreed to a peer review of the
experimental data and supporting theory since the 1989 ERAB review" (id.),
and asked the requesting scientists to generate a review document that
identified the most significant experimental observations and publications,
and those areas where additional work would appear to be warranted. This
review document was submitted to DOE, together with supplemental
materials, and subsequently sent out (via mail) by DOE for peer review to
"[ n ]ine scientists with appropriate scientific backgrounds in experimental
and theoretical nuclear physics, material science, and electrochemistry" (id.).
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These scientists were given approximately one month to review the report
and supplemental materials (id.). A one-day review was later conducted; the
reviewers consisted of an additional nine scientists "chosen by DOE for their
expertise in relevant fields," who received anonymous comments from the
mail peer review and heard oral presentations by research scientists chosen
by the authors of the review document (id.).
DOE received, in total, 18 individual reviewer comments (id.). And,
based on the nearly unanimous opinion of these reviewers, the USDOE 2004
Report concludes that "[ w ]hile significant progress has been made in the
sophistication of calorimeters since the review of this subject in 1989, the
conclusions reached by the reviews today are similar to those found in the
1989 review" (id. at 5 (emphasis added)). 8
8 In one comment, Reviewer# 1 states, after "review[ing] the materials
provided, including the summary paper of Hagelstein et al. and the
accompanying manuscripts:"
This field is 15 years old. It has been characterized by a large
number of positive but internally inconsistent results, plus an even
larger number of negative results refuting many of the claims. By
in large those experiments done by experienced nuclear physics
groups have been negative.
As many have said, extraordinary results require extraordinary
proof. Such proof is lacking. Existing results are erratic; many past
results (excess tritium, charged-particle production, neutron bursts)
have been demonstrated to be wrong and retracted. A partial
summary of early retractions is given in Morrison's 1990 article.
It is impossible to prove a negative: that cold fusion does not occur
at any level. However, repeated retractions; erratic and inconsistent
claims of the levels of cold fusion; positive results clearly in
contradiction with other, negative ones; and clear evidence of
careless or even fraudulent work (such as the MIT analysis of the
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Appellant variously argues that the Examiner has failed to establish a
prima facie showing that claims 1-20 are not supported by a credible
asserted utility. (Reply Br. 47-63; see also App. Br. 211-235). But none of
Appellant's arguments is persuasive.
Appellant asserts at the outset that the Examiner has failed to:
establish a reason to doubt an invention's asserted utility, and
[that] the loading of an isotopic fuel into a material by an applied
electric field, and then at a later point in time applying a second
applied electric field to redistribute said isotopic fuel within said
material, means to control the distribution of the loaded isotopic
fuel within the material, means including barriers impermeable
to the flow of said isotopic fuel within said material and means
to extract product using magnetic field inhomogeneity, based
differential magnetic susceptibilities [cf Swartz and Straus
Declarations] is not 'incredible' or 'unbelievable' like the
Examiner appears to purport. This invention is quite believable.
Pons-Fleishmann gamma ray spectrum) have eroded all of this
field's credibility.
(USDOE Cold Fusion Review -Reviewer Comments, p. 1 ). In another
comment, Reviewer #6 remarks that "the data described in the position
paper [are] not consistent and systematic;" that "[t]hree miracles are required
for 'Cold Fusion' as described to occur" (id. at 10); and that "the weight of
the evidence present thus far is not strong enough to overcome the three
miracle requirement" id. at 13).
Reviewer #7 similarly concludes:
I find it a bit disheartening that, despite the efforts of the dedicated
researchers in this field during these past fifteen years, they have
been unable (a) to completely solve the nagging problem of non-
reproducibility of the experimental results, or (b) to elucidate and/or
nail down all the important parameters involved in the proposed
cold-fusion phenomena (plural nuclear mechanisms have been
proposed) or ( c) even to convince the broader scientific community
that cold fusion is real.
(Id.).
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(Reply Br. 7-8; see also id. at 35-36). But that argument is not persuasive
at least because it is not commensurate in scope with independent claim 15.
Claim 15 does not recite, for example, limitations directed to "barriers
impermeable to the flow of said isotopic fuel within said material" or
"extract[ing] product using magnetic field inhomogeneity, based differential
magnetic susceptibilities." It also is well established that limitations not
appearing in the claims cannot be relied on for patentability. See, e.g., In re
Self, 671F.2d1344, 1348 (CCPA 1982).
We also are not persuaded by Appellant's argument that the written
description provides a credible utility, and that the Examiner could only
have concluded otherwise by ignoring "the claims and specification of this
patent [application]" (Reply Br. 36; see also App. Br. 211-214). As
described above, we agree with the Examiner that when the claims are
construed as broadly as reasonable, in light of the Specification, Appellant's
claimed invention is drawn to a method for improving a cold fusion process
(see Ans. 4--10; see also Advisory Action, mailed March 5, 2012, at 2-3). 9
There also is substantial evidence of record (particularly including the
USDOE 2004 Report, which was published over nine years after the earliest
effective filing date, i.e., the filing date of the parent '457 application, and
over one year after the actual filing date of the present application) 10 that a
9 As discussed above, representative independent claim 15 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.
10 The present application, Serial No. 12/932,058, was filed on July 5, 2003,
but claims priority benefit as a continuation of application 08/406,457, filed
March 20, 1995.
18
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Application 12/932,058
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 established a prima facie case of lack of
utility and, therefore, lack of 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. ").
The burden, thus, 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 has submitted peer-reviewed published papers and
declarations that Appellant maintains prove that the claimed invention was
operative at the time the present application was filed (see, e.g., App.
Br. 86-88, 95-98, 214--220; see also Reply Br. 5-9, 48). For example,
Appellant contends that
[the] Straus and Swartz [declarations] contain factual statements
directly addressing how the specification adequately described
the subject matter recited in the claims and demonstrate that it
operates as stated. They also herald that a person of ordinary
skill in the art would have understood the inventor to have been
in possession of the claimed invention at the time of filing. Other
Declarants, such as Mallove, Rotegard, Straus, Storms, Fox,
Valone, McKubre, S. Chubb and T. Chubb demonstrate that the
above-entitled invention has great utility, heralding conformity
with the requirements of § 101.
(App. Br. 216; see also Reply Br. 48). Appellant also has submitted
declarations from Bass, Hagelstein, and Verner, which Appellant contends
19
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are more than sutlicient to convince a person of ordinary skill in the art of
the claimed invention's asserted utility (App. Br. 96-102).
Appellant charges that the Examiner ignored the submitted
declarations and other evidence (see e.g., App. Br. 216-217; see also Reply
Br. 54--55), and improperly removed and destroyed evidence from the record
(App. Br. 217-220; see also id. at 58---61, 68-70, and 72). 11 But we find no
indication that the Examiner ignored any evidence of the record. There also
is no evidence that any such materials were improperly removed or
destroyed.
The record shows that Appellant filed an Information Disclosure
Statement on August 22, 2011, identifying a large number of documents.
The Examiner indicates that these documents were made of record, "except
in those cases where either no copy was found in the file or the requisite
information on author, date, source, title are missing from the listing, or
both, in which case the entry is lined through" (Final Act. 2), and that the
documents were "fully considered but ... are not persuasive" (see id. at 9). 12
11 We note that Professor Peter Hagelstein, Dr. Michael McKubre, and
Dr. Talbot Chubb were involved in the preparation of the review document
associated with the USDOE 2004 Report (USDOE 2004 Report, p. 1 ); that
document focused on research in the field of low energy nuclear reactions,
including "issues associated with excess heat production in deuterated
metals" and "aspects of nuclear emissions from deuterated metals" (id. at 2).
Thus, much of the information that Appellant alleges has been ignored by
the Office has, in this regard, been considered.
12 Appellant filed another Information Disclosure Statement on May 19,
2012, however, these documents were submitted after the Final Office
Action, concurrently with Appellant's Appeal Brief, and thus, would not
have been considered by the Examiner absent "a showing of good and
sufficient reasons why the affidavit or other evidence is necessary and was
20
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Application 12/932,058
To the extent that Appellant maintains that the Examiner acted
improperly in denying entry of documents 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 (2010)
(the Board will not ordinarily hear a question that is reviewable by petition);
In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002).
It is not entirely clear that the documents presented in Appendix B of
Appellant's Appeal Brief were made of record in this application prior to the
appeal. Out of an abundance of caution, we have considered the supporting
documents and declarations that Appellant specifically addresses at
pages 95-98 of the Appeal Brief, and which Appellant maintains
"demonstrate ... operability, considerable utility, and therefore enablement
of the present invention" (App. Br. 96). However, as detailed below, none
of these documents is persuasive of error on the part of the Examiner at least
because they pertain to a different application, are from an interested party
(i.e., Appellant), and/or offer no specific opinion or facts regarding whether
Appellant's claimed invention is operative and reproducible and, therefore,
has utility.
Turning first to the declaration of the inventor, Dr. Mitchell Swartz
("Swartz Deel."), the Swartz Declaration was prepared in support of the
'457 application (i.e., the parent of the present application), and is dated
September 16, 1997. In the declaration, Dr. Swartz asserts that:
[c]ontrary to the Office's unfounded claim, positive reports of
cold fusion has [sic] appeared from various groups including the
U.S. Navy, the French Atomic Energy Agency, NASA, the Los
not earlier." See 3 7 C.F .R. § 1.116( e ). There is no indication in the record
that such a showing was made by Appellant.
21
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Application 12/932,058
Alamos National Laboratory and scores of other laboratories.
Nuclear products are created in cold fusion reactions; for
example helium-4 production from palladium properly loaded
with deuterium.
(Swartz Deel. i-f 3). Dr. Swartz states that "[ m ]y invention is operable and
the results have been published in peer reviewed journals" (id. i-f 6), and
references several of his publications for support (see id. i-fi-1 5-9).
For example, Dr. Swartz refers to "'Consistency of the Biphasic Nature of
Excess Enthalpy in Solid State Anomalous Phenomena with the Quasi-I-
Dimensional Model of Isotope Loading into a Material,' Fusion Technology,
_ll, 63-74, January 1997 issue (1997), M. Swartz [hereinafter, 'Swartz 97'];"
"'Biphasic Behavior In Thermal Electrolytic Generators Using Nickel
Cathodes,' M. Swartz, IECEC-97 Conference on to Conversion
Technologies, July (1997);" and "'Codeposition Of Palladium And
Deuterium[,]' M. Swartz, Fusion Technology, 32, 126-130 August 1997," to
support his assertion of operability (id. i-f 6). Yet Dr. Swartz does not
explain how these publications relate to the claimed invention, as set forth,
for example, in representative claim 15, or how they demonstrate that
Appellant's presently claimed invention is operative and reproducible.
Dr. Swartz asserts that the invention, as disclosed in the parent
'457 application, is different from Fleischmann and Pons, and that a
distinguishing factor is the calorimeter, i.e., the calorimeter disclosed by
Fleischmann and Pons features no more than two compartments whereas
"the present invention ... involves liquid filled rings three or more in
number" (Swartz Deel. i-fi-110-11). But it is not readily apparent how, and
22
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Application 12/932,058
Dr. Swartz does not explain how, this distinction is probative of the
operability of the claimed invention here on appeal. 13
We find the Swartz Declaration of little probative value. In particular,
we find no nexus between the Swartz Declaration and the invention "as
claimed." And although, Dr. Swartz points to differences between the
calorimeter described by Fleishmann and Pons and the calorimeter used in
the claimed invention, Dr. Swartz indicates in Swartz 97 that his experiment
achieved excess power results consistent with those obtained by
Fleischmann and Pons (see Swartz 97, pp. 69, 74)- an experiment that
Appellant acknowledges "had problems, including inefficient
reproducibility" (App. Br. 129).
The Swartz Declaration is merely testimonial and provides
conclusions about the inventor's work in the field without any discussion of
what is now claimed and how the cited publications relate to claim 15, in
particular. Dr. Swartz's bald assertion that "[m]y invention is operable" also
is nothing more than a self-serving statement that does not establish the truth
of the matter.
We find nothing in the Swartz Declaration that, in our opinion, would
convince a person of ordinary skill in the art that Appellant's invention, as
recited in representative claim 15, is operative and, therefore, has utility.
13 In fact, although Appellant points out differences between the calorimeter
described by Fleishmann and Pons and the calorimeter used in the claimed
invention, Swartz 97 states that "[t]he results of excess power in this loaded
electrode system are consistent with reports in some of the literature for
nickel light water, 1-7 heavy water,26-29 and other30-32 systems" (Swartz 97,
p. 69), which includes a Fleischmann and Pons 1989 publication referenced
in footnote 26 (id. at 74).
23
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Application 12/932,058
We next consider the declarations provided by Mr. Isidor Straus. The
first of the two declarations ("Straus I") was prepared in support of
Appellant's application Serial No. 07 /371,937 ("the '937 application"),
entitled "Systems to Monitor and Accelerate Electrochemically Induced
Nuclear Fusion Reactions," and is dated November 27, 1992. The second
Straus Declaration ("Straus II"), dated December 15, 2010, was prepared for
Appellant's application Serial No. 12/589,258 ("the '258 application"),
entitled "Apparatus and Process for Monitoring Loading."
In Straus I, Mr. Straus states that he has reviewed "the invention
described by Johnson (Patent 4,683,119) and the invention described ... in
present application, SIN 07/371,937" (Straus I, p. 2), and generally
distinguishes the Swartz invention from Johnson based on what Mr. Straus
describes as a "novel vibrating cathode" for directly measuring the loading
of an isotopic fuel, i.e., deuterium, into a palladium cathode from a heavy
water electrochemical cell (Straus I, pp. 2-5). In Straus II, Mr. Straus
further describes the Swartz method for directly measuring "the loading of
hydrogen or deuterium, via a novel vibrating cathode" (Straus II i-f 5). Yet
none of these discussions is probative of the operability of the claimed
invention, as set forth in representative claim 15, at least because neither
claim 15 nor any of the other claims on appeal is directed to a vibrating
cathode such as the one discussed in Straus I and II. Neither Straus I nor
Straus II touches on the issue of operability of Appellant's presently claimed
invention.
Turning next to the two declarations provided by
Dr. Eugene F. Mallove, the first declaration ("Mallove I") was prepared for
the '937 application, and is dated February 6, 1994. There, Dr. Mallove
24
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Application 12/932,058
addresses the Huizenga publication, 14 cited during prosecution of the
application (see, e.g., Mallove I, i-fi-1 5-8), and charges that Dr. Huizenga
ignores the positive evidence of cold fusion and the major cold fusion efforts
underway in Japan and elsewhere (id. i-fi-18-17). Dr. Mallove asserts that "it
is well known and reported in the open literature that McKubre' s groups,
and others, have achieved near reproducible excess power in cold fusion
cells" (emphasis added) (id. i-f 18), and notes that many groups have stated
that achieving high levels of deuterium-to-palladium atom loading (D/Pd
ratio) is key to provoking the phenomena (id.). Dr. Mallove concludes,
"[t ]herefore[,] any system to monitor the loading would have utility" (id.).
The second Mallove Declaration ("Mallove II") is dated August 13,
2001, and was prepared for the parent '457 application. In Mallove II,
Dr. Mallove indicates that he has reviewed "all of the relevant documents[,]
including the Board's Decision of July 29, 2001 (Mallove II i12), and asserts
that the Board erred in concluding that the "multi-ring calorimetric device
put forth by Dr. Swartz 'has no utility' in the measurement of activity levels
in samples" (id. i13; see also id. i-fi-14---6, 9, 12, 13). Dr. Mallove opines that
"[t]he allegation against Dr. Swartz's invention for 'lack of operability,' is
simply not valid. [Dr. Swartz] has published this matter in the peer-
reviewed joumal, Fusion Technology. It is quite clear that the measurement
of activity has great and obvious utility" (id. i-f 11 ). Dr. Mallove further
opines that "[t]he [Board's] Decision should have been able to separate
evident bias against cold fusion phenomena from an impartial evaluation of
14 Cold Fusion: Scientific Fiasco of the Century, University of Rochester
Press, 1992.
25
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Application 12/932,058
a calorimetric device that could, in my professional opinion, be of great
utility in a range of calorimetric studies" (id. i-f 12).
Dr. Mallove' s declarations are of little probative value at least because
they are for the most part conclusory. The declarations focus on explaining
why those who doubt the operability of cold fusion are incorrect, but the
declarations offer little or no specific opinion or facts regarding whether
Appellant's presently claimed invention is operative and reproducible. In
fact, in Mallove I, Dr. Mallove goes only so far as to say that there have
been experiments that "have achieved near reproducible excess power in
cold fusion cells" (Mallove I i-f 18 (emphasis added)).
We also give no weight to Dr. Mallove' s opinion that "any system to
monitor the loading would have utility" (id.) or to his opinion regarding the
utility of a "calorimetric device" (Mallove II i-f 3). Neither representative
claim 15 nor any of the other claims on appeal is directed to a system for
monitoring loading or to a calorimetric device.
Dr. Mallove also prepared an Amicus Brief (the "Mallove Amicus"),
dated March, 24, 2000, in support of Appellant's petition for writ of
certiorari in application Serial No. 0717 60,970 ("the '970 application"),
entitled "Systems to Control Nuclear Fusion of Isotopic Fuel within a
Material." However, the Amicus Brief is similarly of little probative value
at least because it fails to address whether the claims on appeal are operative
and reproducible. Instead, the Brief merely sets forth Dr. Mallove's opinion
that the Board, in its decision, relied on "flawed, historically-inconsistent"
documents (Mallove Amicus i-fi-1 1-3). Dr. Mallove also questions "[t]he
'credibility' of the early DOE ERAB panel" which the Examiner relies on in
the present appeal, noting that
26
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Application 12/932,058
one of the twenty two ERAB cold fusion panel people,
Dr. William Happer is on record as stating that ''just by looking
at Pons and Fleischmann on television, you could tell they were
incompetent boobs." (Taubes, Bad Science, p. 305). This
heralds the absence of integrity and credibility, and the presence
of bias, of said investigative panel cited by the Board.
(Id. i-f 4). We cannot speak to Dr. Rapper's statement inasmuch as the
Taubes reference is not of record. However, we give no weight to
Dr. Mallove's conclusory remark regarding the credibility of the DOE
ERAB panel, which merely reflects Dr. Mallove's subjective view of that
investigative panel, without any corroborating evidence. 15
We next consider the declaration of Dana Richard Rotegard (the
"Rotegard Deel."). The Rotegard Declaration, dated May 5, 1994, was
prepared for Appellant's application Serial No. 07 /339,976 ("the '976
application"), entitled "Systems to Increase the Efficiency Control, Safety
and Energy Utilization of Electrochemically Induced Fusion Reactions."
Mr. Rotegard indicates that he has a B.A. in Political Science and Music
(Rotegard Deel. i-f 1 ), and describes himself as "a writer in the field[ ]
of ... cold fusion" (id. i-f 2). Mr. Rotegard states that "[t]he Patent Office is
reported to have the opinion that cold fusion does not exist, and that
inventions in this area have no utility" (id. i-f 3), and concludes, without
offering any facts or explanation, that the "opinion of the Office is incorrect"
(id. i-f 4). Mr. Rotegard further opines that "[m]ost of the negative authority
cited by the Examiner [in the '976 application] has not approached cold
15 Dr. Mallove's negative opinion of the DOE ERAB panel notwithstanding,
it is worth noting that Appellant, Dr. Swartz, was asked to participate at least
in the follow-up USDOE 2004 Report (App. Br. 139). Dr. Swartz stated that
he "was not there, was asked for, [and] would have liked to have been there"
(id.).
27
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Application 12/932,058
fusion with a scientifically open mind" and "a number of the leading
academic laboratories in the USA have replicated the original Fleischmann
and Pons effect" (id.).
The Rotegard declaration is of little or no probative value at least
because it merely sets forth Mr. Rotegard's opinion, without disclosing the
underlying facts or data on which Mr. Rotegard's conclusions and opinions
are based. The declaration also fails to address the operability of the
claimed invention here on appeal.
Mr. Rotegard also prepared an Amicus Brief (the "Rotegard
Amicus"), dated February 21, 2001, in support of Appellant's petition for
writ of certiorari in the '937 and '970 applications. In the Amicus Brief, Mr.
Rotegard opines that the utility of Dr. Swartz's "new method" for measuring
the saturation of hydrogen in palladium metal is "straightforward;" that
"[h]undreds of scientists in the USA, Japan, Italy, India, the PRC, France,
Russia and elsewhere are investigating nuclear reactions in metals saturated
in hydrogen or deuterium;" and that "a proper method to measure the ratio of
deuterium in Palladium D/Pd is central and critical to the success, or failure,
of these types of experiments" (Rotegard Amicus 2-3). Yet Mr. Rotegard' s
opinion is of no probative value at least because the claims here on appeal
are not directed to a method for measuring hydrogen saturation in metals.
We next consider the Amicus Brief provided by Dr. Edmund Storms
(the "Storms Amicus"). Like the Rotegard Amicus, the Storm Amicus was
prepared in support of Appellant's petition for writ of certiorari in the '937
and '970 applications, and is dated February 21, 2001. In the Amicus Brief,
Dr. Storms asserts "I have reviewed [Dr. Swartz's] work and am writing this
to serve the truth. It is my personal belief based on a careful study of the
28
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Application 12/932,058
issues, that the patent in question is worthy of being granted" (Storms
Amicus 2). Dr. Storms further 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.
Id. at 3). But the Storms Amicus does not address the present claimed
invention, and, thus, offers no factual support related to its utility.
We next consider the two declarations by Hal Fox, Ph.D. The first
declaration ("Fox I") was prepared in support of the parent '457 application,
and is undated. The second declaration ("Fox II") was prepared to support
the '976 application, and is dated May 16, 1995.
In Fox I, Dr. Fox asserts:
[t]his writer, as one skilled in the art, was quick to recognize the
teachings of Dr. Swartz by which a multi-ring calorimeter with
measurement of noise, and with calibration could be used to
measure activity. It is my professional judgment that the method
of measuring the activity of sample in the above-entitled action
is clever, not obvious, and is an important invention with utility.
(Fox I i-f 3). In Fox II, Dr. Fox generally denigrates the Office's handling of
cold fusion patent applications (Fox II i-fi-16-10). 16 However, neither Fox I
nor Fox II provides any factual evidence to support Dr. Fox's assertions, and
neither addresses the presently claimed invention.
16 Dr. Fox also provided an Amicus Brief, dated February 21, 2001;
however, its contents are substantially similar to those of Fox I.
29
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Application 12/932,058
We next consider the Amicus Brief provided by Thomas Valone (the
"Valone Amicus") in support of the '937 application. Mr. Valone states he
has bachelor's and master's degrees in physics and a second bachelor's
degree in electrical engineering, and is a licensed professional engineer, a
retired college professor, and a former patent examiner at the USPTO
(Valone Amicus i-f 2). Mr. Valone identifies several purported errors in the
Board of Patent Appeals and Interferences decision in the '937 application
(i-fi-f 3-14). However, the Valone Amicus is otherwise unrelated to the claims
presently under appeal.
We next consider the Amicus Brief provided by Dr. Michael
McKubre (the "McKubre Amicus"), which was prepared for the '937 and
'970 applications, and is dated February 19, 2001. There, Dr. McKubre
states, "[i]n my considered view there is no doubt whatsoever that: a) the
device described in this application by Dr. Swartz provides an effective
means of determining the loading of hydrogen in metals, and
b) measurement of this sort have broad and important utility in a wide range
of applications and industries" (id. at 3).
The McKubre Amicus is of little or no probative value. Not only does
it provide mere conclusions, without any factual basis, but Dr. McKubre' s
views regarding Dr. Swartz's "device" also are not relevant to representative
claim 15 under appeal, which is directed to a process for producing a
product.
We next consider the declaration of Dr. Scott R. Chubb, Ph.D., MBA
(the "S. Chubb Deel."); the declaration was prepared in support of the parent
'457 application, and is undated. Dr. Chubb indicates that he has "read all of
the relevant documents including the Board's decision of July 29, 2001 and
30
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Application 12/932,058
the original above-entitled application [08/406,457]," and concludes that the
"patent application provides a well-defined procedure, understandable by
anyone skilled in the art, that can be used to implement the invention"
(S. Chubb Deel. i-fi-12-3). Dr. Chubb asserts that "Dr. Swartz has invented an
important, new device, whose purpose has value for measuring activity of a
sample" and further "assert[ s] that the invention has definite utility, simply
because the idea of using activity, as defined by the ratio of P[out]/P[in], set
forth in the invention has utility that transcends the immediate consequences
associated with the attainment of the 'cold fusion' effect which is seen with
adequate hydrogen (and deuterium) loading and transport in palladium and
other metals" (id. i1 4, citations omitted).
The S. Chubb Declaration recites conclusions with few facts to
buttress the conclusions and, as such, is of little, if any, probative value.
Moreover, Dr. Chubb's opinion regarding a "new device" is not probative of
the operability of the claimed invention, as recited in representative
claim 15, which is directed to a process of producing a cold fusion product.
We next consider the Amicus Brief, dated February 21, 2001,
submitted by Dr. Talbot A. Chubb, Ph.D. (the "T. Chubb Amicus"), which
was prepared to support the '937 and '970 applications. 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).
31
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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)."
We find the T. Chubb Amicus of little or no probative value. The
present claims under appeal are not directed to the measurement of
deuterium/metal ratio. The Amicus Brief, thus, provides little or no specific
opinion or facts directed to whether Appellant's claimed invention is
operative and reproducible.
We next consider the declaration of Robert W. Bass (the "Bass
Deel."); the declaration was prepared for the '976 application, and is dated
April 17, 1996. Dr. Bass states that he has experience with "hot" fusion
inventions and has drafted and submitted cold fusion applications to the
Patent Office (Bass i-f 2). Dr. Bass asserts that he has "noticed what has the
appearance of an appalling pattern of deliberate conduct on the part of the
Examiners" in their treatment of cold fusion patent applications (id. i-f 5), and
that this appears to be part of "an organized effort under Art Group 220 to
delay, obstruct, obfuscate, harass, or otherwise retard the issuance of patents
in this [cold fusion] category" (id. i-f 11; see also id. i-fi-1 12-17). Dr. Bass
refers to a "Notice from the Examiner Chi to Dr. Swartz dated March 29,
1996" and states that "[i]n my opinion, the Examiner is in error in
paragraph 1, claims must not be 'patentably distinct', but 'materially
distinct' as Dr. Swartz has attempted to explain within the papers associated
with above-entitled application"(id. i-f 9).
The Bass Declaration lacks any factual evidence to support Dr. Bass's
allegations regarding the Office's mishandling of cold fusion applications -
a matter that, in any event, is outside the jurisdiction of this Board - and
32
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does not address issues related to the operability of the presently claimed
invention. As such, the Bass Declaration is of little or no probative value.
We next consider the three declarations provided by Professor Peter
Hagelstein. The first declaration ("Hagelstein I") was prepared for the
'258 application, and is dated December 15, 2010. The second declaration
("Hagelstein II") was prepared for Appellant's application Serial
No. 10/646,143, and is dated October 10, 2007. The third declaration
("Hagelstein III"), dated December 15, 2010, was prepared for the
'976 application. 17
In Hagelstein I, Professor Hagelstein states "I have closely followed,
and participated in, the field of cold fusion since 1989" (Hagelstein I i-f 2),
and opines that
[t]he scientific results presented by Dr. Mitchell Swartz on his
Phusor experiments, in which excess power and total energy is
measured, looks [sic] very good. His results are competitive in
terms of reproducibility and power gain with the best results
obtained by other groups around the world. The reproducible
energy gains that he has reported are the highest so far reported
by any group.
Id. i-f 3. Professor Hagelstein states that "Swartz demonstrated his Phusor
experiment at MIT in connection with ICCF 10 in August 2003" and "[d]ata
from this experiment show significant excess heat" (id. i-f 4); that "Swartz's
Phusor experiments have shown energy gains at least up to 1 Ox" (id. i-f 5);
and that "[n]o one in the field considers Swartz's Phusor experiment to be
the same as what Fleischmann and Pons did" (id. i-f 6). Professor Hagelstein
attributes the negative results reported in other cold fusion experiments to
17 Hagelstein III is identical to Hagelstein I; therefore, we will not address
Hagelstein III separately.
33
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insutlicient loading of the palladium cathodes (id. iii! 8-9), and concludes
that "[t]he USPTO continues the tradition of assigning significance to these
negative experiments, which were not done in the relevant parameter regime
of high D/Pd loading" (id. if 10).
Turning to Hagelstein II, we note at the outset that the declaration
lacks a statement or oath recognizing that false statements are subject to
punishment under § 1001 of Title 18 of the United States Code, and as such,
lacks the indicia of accuracy and reliability necessary to serve as evidence.
See Ex parte Gray, 10 USPQ2d 1922, 1928 (BP AI 1989) ("The reason for
requiring evidence in declaration or affidavit form is to obtain the assurance
that any statements or representations made are correct, as provided by
35 U.S.C. § 25 and 18 U.S.C. § 1001."). Thus, the Hagelstein II
"declaration" may be considered, at best, a form of hearsay evidence, which
is not substantial evidence and which is uncorroborated by the declaration or
oath required by the USPTO Rules of Practice, 37 C.F.R. § 1.132. 18
See In re Yoder, 204 Ct. Cl. 931 (Ct. Cl. 1974) ("While we traditionally do
not require administrative proceedings to comply strictly with judicial rules
of evidence, we have recognized that the probative value of uncorroborated
hearsay may be insufficient to constitute substantial evidence supporting an
administrative determination.").
Professor Hagelstein addresses the USDOE 2004 Report in
Hagelstein II, and points out what he perceives to be deficiencies in the way
18 Section 1.132 states"[ w]hen any claim of an application or a patent under
reexamination is rejected or objected to, any evidence submitted to traverse
the rejection or objection on a basis not otherwise provided for must be by
way of an oath or declaration under this section." 37 C.F.R. § 1.132.
34
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the review was conducted, e.g., severe limitations were imposed on the
length of the review document, on supporting papers submitted, and on the
number of talks given; the review was limited to Fleischmann-Pons
experiments or modified Fleischmann-Pons experiments that were close to
the original experiments; reviewers did not make the effort to familiarize
themselves with the written materials; other reviewers did not have an
appropriate background (Hagelstein II i-fi-1 5-7). Professor Hagelstein also
responds to the negative comments provided by reviewers 1, 6, 7, 11, 12, 15,
17, and 18 (see id. i-fi-18-15), and summarily dismisses at least five of the
eight negative comments based on, in his opinion, their "fundamental lack of
understanding" (see e.g., id. i-f 12 ("[o]nce again we see a fundamental lack
of understanding on the part of the reviewer's [sic] of the most basic
theoretical statements and results.")). Professor Hagelstein concludes that
the remaining commenters are wrong, inter alia, because they have not put
much effort into the technical arguments made in the supplied
documentation (see, e.g., id. i18).
Regardless of whether Professor Hagelstein's criticism of the USDOE
review is justified, it does not, in our view, diminish the substantial
probative value of the USDOE 2004 Report. Professor Hagelstein's
statements in Hagelstein I regarding Dr. Swartz's Phusor experiments also
are of little, if any, probative value -Appellant's claims do not recite any
type of Phusor cathode. Appellant's Specification also is silent regarding
any Phusor experiments. And there is no evidence of record of any nexus
between the Phusor experiments and the claimed invention, i.e., any
evidence that the Phusor experiments were of the claimed invention.
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Regarding Professor Hagelstein's charges in Hagelstein l that "[t]he
USPTO continues the tradition of assigning significance to these negative
experiments, which were not done in the relevant parameter regime of high
D/Pd loading" (see Hagelstein I i-f 10), the US DOE 2004 Report, which the
Office fully considered, reflects the panel's review of evidence regarding
experiments in which "Dis introduced into Pd metal at very high
concentrations (D/Pd ~ 0.95)" (USDOE 2004 Report, p. 2). In this regard,
Reviewer #5 states,
Baranowski and coworkers (J. Less-Common Mets., 158 (1990)
347), who have had extensive experience with high pressure
loading of metals with H2 and D2 ... tried dynamic loading to
these high D/Pd ratios without any evidence of either nuclear
events or excess heat. The proponents of CF have failed to
convince me [if it is the case, that all electrodes achieving a
loading of 0.95 or greater exhibit heat excess more than 3 times
the measurement uncertainty] why loading to D/Pd > 0.95 in the
gas phase [in the Baranowski experiments] does not lead to CF
[cold fusion].
(2004 USDOE Cold Fusion Review - Reviewer Comments at 9).
Finally, we consider the Declaration of Gayle Verner (the "Verner
Deel."), dated September 16, 1997, which was prepared in support of the
parent '457 application. Mr. Verner describes himself as a journalist and
educator, and as a "published reporter who has written extensively in many
fields such as science and medicine, including energy conversion" (Verner
Deel. i-f 1). Mr. Verner asserts that "[c]ontrary to the Office's misguided
claim, positive results and reports of cold fusion successes have continued to
mount" (id. i-f 3), and also states that he "witnessed Dr. Swartz operate his
equipment in front of visitors to the laboratory including Professors Louis
Smullin and Keith Johnson from MIT and others" (id. i-f 4). However, the
36
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Verner Declaration is silent as to how the "equipment" corresponds to
representative claim 15, particularly, and provides no specific opinion or
facts regarding whether Appellant's presently claimed invention is operative
and reproducible.
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.
As discussed above, with particular reference to the USDOE Reports,
the evidence of record, on balance, casts considerable doubt on the
operability of cold fusion, and thus, the claimed invention. 19 The
USDOE 2004 Report concludes that "[t]he preponderance of the reviewers'
evaluations indicated that ... the occurrence of low energy nuclear
reactions, is not conclusively demonstrated by the evidence presented"
(USDOE 2004 Report, p. 4). That is, based on the recommendation of
eighteen scientists, deemed by the U.S. Department of Energy to have the
"appropriate scientific backgrounds in experimental and theoretical nuclear
physics, material science, and electrochemistry," as well as "expertise in
19 Appellant argues that the Office misstates what was reported in the
USDOE 2004 Report (App. Br. 139-141; see also Reply Br. 52); however,
Appellant does not specify what in particular was misstated. Appellant then
goes on to reproduce various quotations which Appellant purports to be from
the USDOE 2004 Report (see e.g., App. Br. 139-140); however, the
quotations cited by Appellant are from "Cold Fusion Times volume 12,
number 2," and lack any identifying citations to the USDOE 2004 Report.
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[other] relevant fields" (id. at 1 ), the 2004 Report came to the same
conclusion as the conclusion reached by the USDOE 1989 Report (id. at 5),
i.e., "that the experimental results on excess heat from calorimetric cells
reported to date do not present convincing evidence that useful sources of
energy will result from the phenomena attributed to cold fusion" (USDOE
1989 Report, p. 1).
Thus, not only does the evidence of record support the Examiner's
finding that, as of the filing date, a person of ordinary skill in the art would
reasonably have doubted the utility and operability of cold fusion, it shows
that over nine years after the earliest effective filing date, i.e., the filing date
of the parent '457 application, and over one year after the present application
was actually filed, 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.
We have considered Appellant's remaining arguments offered in the
Appeal Brief and Reply Brief, and find them unpersuasive. 20
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 15, and claims 1-14 and 16-20, which
fall with claim 15. For the same reasons, we also affirm the Examiner's
rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph. See In re
20 We note that many of Appellant's remaining arguments are directed to
matters that merely restate Appellant's position regarding issues already
addressed, and another substantial number of the remaining arguments relate
to matters outside the jurisdiction of this Board (e.g., the Examiner's alleged
failure to respond to Appellant's requests for constructive assistance in
drafting allowable claims (App. Br. 236)).
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Brana, 51 F.3d at 1564 ("Obviously, if a claimed invention does not have
utility, the specification cannot enable one to use it").
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112, first
paragraph, is affirmed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112,
second paragraph, is reversed.
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
39