Ex Parte Taleyarkhan

Patent Trial and Appeal Board

Aug 2, 2016

11653791 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111653,791 01/16/2007
132052 7590 08/04/2016
Hahn Loeser & Parks, LLP - Chicago
125 South Wacker Drive
Suite 2900
Chicago, IL 60606
FIRST NAMED INVENTOR
Rusi P. Taleyarkhan
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.
212164-30 5533
EXAMINER
MONDT, JOHANNES P
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
08/04/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@hahnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RUSI P. TALEYARKHAN
Appeal2014-002543
Application 11/653,791
Technology Center 2800
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
October 24, 2012 decision finally rejecting claims 1, 3-7, 22, and 23 ("Final
Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the Real Party in Interest as Sagamore/ Adams Laboratories
LLC. (Appeal Br. 3).
Appeal2015-002543
Application 11/653,791
CLAIMED SUBJECT MATTER
Appellant's invention is directed to an acoustic inertial confinement
nuclear fusion device (Abstract). The invention is said by Appellant to be
capable of generating a self-perpetuating nuclear reactor without the need for an
external nucleating source (Spec. i-f 16). Appellant "believes he has developed
an invention that is capable of causing nuclear fusion events, has described that
invention in the specification and how to use the invention and believes he has
demonstrated in the Tables of Figure [sic] 4-8 that the invention does create
nuclear fusion events" (Appeal Br. 8). Details of the claimed invention are set
forth in independent claim 1, which is reproduced below from the Claims
Appendix:
1. An acoustic inertial confinement reaction device for
inducing D-D or D-T reactions comprising:
an enclosure that holds a deuterated fluid wherein the
deuterated fluid comprises a plurality of liquids in a liquid
mixture comprising a liquid capable of dissolving a salt of an
alpha emitter and a dissolved alpha emitter, wherein the
enclosure is configured to be a self-perpetuating nucleating
reactor without a neutron source external to the enclosure, and
an acoustic wave energy generator coupled to the
enclosure, the acoustic wave energy generator configured to
harmonically drive the liquid mixture in the enclosure to induce
an acoustic standing wave in the liquid mixture,
wherein the acoustic standing wave comprises a negative
pressure antinode of maximum amplitude greater than the
threshold pressure for bubble nucleation from uranium or
thorium alpha recoils about -5 bar or less in the tensioned state
and
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Application 11/653,791
wherein the alpha emitters nucleate bubble clusters in the
liquid mixture as the fluid is driven by the generator, and
neutrons, tritium or gamma rays, or a combination thereof being
emitted from the liquid mixture.
REJECTIONS
I. Claims 1, 3-7, 22, and 23 are rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement.
II. Claims 1, 3-7, 22, and 23 are rejected under 35 U.S.C. § 101 as not
being supported by either a credible utility or a well-established
utility.
III. Claims 1, 3-7, 22, and 23 are rejected under 35 U.S.C. § 112, second
paragraph as failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
DISCUSSION
ii ..ppellant states that, for purposes of this appeal, all of the claims
stand or fall together (Appeal Br. 8). Thus, we focus our attention on the
rejections of claim 1.
The crux of this appeal is the Examiner's finding that "there is no
indication, from the specification nor from the literature and prior art, that
the device as disclosed is enabled to produce D-D or D-T reactions nor is
there enablement for the device as an inertial confinement device known in
the art ofD-D and D-T reactions" (Final Act. 4). The Examiner further
determines that Appellants have not provided "requisite experimental
evidence" to support a finding that they have shown that their device is
useful for Low Energy Nuclear Reactions (LENR) or "cold fusion" because
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nuclear fusion reactions of this type have not been verified as a reproducible
phenomenon (id.). 2
Appellant contends that he has proffered sufficient evidence to
overcome the enablement and utility rejections (see, e.g. Appeal Br. 8), and
urges us to conclude that this evidence is sufficient to require reversal of the
outstanding rejections (Appeal Br. 17).
Whether an application discloses a utility for a claimed invention is a
question of fact. In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993);
Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983).
"The PTO may establish a reason to doubt an invention's asserted
utility when the written description 'suggest[ s] an inherently unbelievable
undertaking or involve[s] implausible scientific principles."' In re
Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (quoting In re Brana, 51
F.3d 1560, 1566 (Fed. Cir. 1995)) (alteration in original). Stated differently,
the Examiner must present the evidence necessary to establish a reason for
one of ordinary skill in the art to question the objective truth of the statement
of utility. Id.
Once the examiner has provided evidence showing that one of
ordinary skill in the art would reasonably doubt the asserted utility, then the
burden shifts to Appellant to submit evidence sufficient to convince such a
person of the invention's asserted utility. Brana, 51 F.3d at 1566. See e.g.,
In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) ("the PTO provided several
2 The rejection under 35 U.S.C. § 112, i-f 2 depends upon these findings:
"The metes and bounds of the claimed invention are vague and ill-defined
due to inadequate written support related to and caused by a lack of ... a
credible asserted or well-established utility" (Final Act. 12).
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Application 11/653,791
references showing that results in the area of cold fusion were
irreproducible").
"While a patent covering a meritorious invention should not be struck
down because the patentee has misconceived the scientific principle of his
invention, the error cannot be overlooked when the misconception is
embodied in the claim." Raytheon, 724 F.2d at 956 (quoting Linde Air
Prods. Co. v. Graver Tank & Mfg. Co., 86 F. Supp. 191, 197 (N.D. Ind.
1947)). As stated by the Federal Circuit:
Because it is for the invention as claimed that enablement must
exist, and because the impossible cannot be enabled, a claim
containing a limitation impossible to meet may be held invalid
under§ 112. Moreover, when a claim requires a means for
accomplishing an unattainable result, the claimed invention
must be considered inoperative as claimed and the claim must
be held invalid under either§ 101or§112of35 U.S.C.
Raytheon, 724 F.2d at 956.
In this instance, the Examiner has provided a detailed explanation
with supporting evidence (Final Act. 3-9) as to why one of ordinary skill in
the art would reasonably doubt the asserted utility and enablement of the
claimed invention. The Examiner cites, inter alia, to a U.S. Department of
Energy Report from 2004 which, according to the Examiner, relegates the
field of Low Energy Nuclear Reactions (LENR) "to basic research with
essentially no progress in the credibility or reproducibility" (Final Act. 4). 3
3 The Examiner also cites other peer reviewed articles to support the
rejections (see, generally, Final Act.). The Examiner cites for the first time
in the Answer a review article by Goverdovski. We have considered
Goversdovski, as well as the rebuttal article authored by Nigmatulin et al.,
(which includes both Appellant and Declarant Dr. Lahey as co-authors)
which was submitted by Appellant with the Reply Brief.
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The Examiner further finds that Appellant "provides no experimental data,
and no systematic consideration of possible alternative explanations in terms
of other sources and, importantly, no error analysis was provided in the
[S]pecification" (id. 5).
As noted above, once the Examiner has provided evidence showing
that one of ordinary skill in the art would reasonably doubt the asserted
utility, then the burden shifts to Appellant to submit evidence sufficient to
convince such a person of the invention's asserted utility. Brana, 51 F.3d at
1566. In this case, the Examiner has provided sufficient evidence to shift the
burden of proving utility and enablement to Appellant.
In response, Appellant relies on declarations from Drs. Srinivasan,
West, Lahey and Bugg as allegedly demonstrating that the claimed invention
is both enabled and has utility (Appeal Br. 13-17). The declarations from
Drs. Srinivasan, West, and Lahey each make essentially the same arguments,
which are set forth at pages 13-17 of the Appeal Brief:
• a number of the discrediting references relied on by the Examiner
have themselves been discredited;
• the consistency between theoretical modeling and the results
actually obtained by Appellant;
• that there is experimental confirmation and it is generally
accepted that imploding bubbles produce fusion-like
conditions;
• the non-applicability of LENR physics to the present
invention, which is governed, instead, by the laws of
classical physics;
• on balance the scientific literature supports the credibility of
the Specification;
• research done to date actually confirms operation of the
invention;
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• the basis for each Declarant's conclusion that the
Specification would demonstrate to one of ordinary skill in
the art the operation of the invention;
• that the phrase inertial confinement is an accurate
description of the supercompression and heating of D-D
atoms;
• that the invention produced neutrons having the expected
energy range as measured by four distinct detector systems;
• that the description of the device, its operation and the
experimental data obtained from the device appear credible;
• that two research groups have reproduced Appellant's results
including Declarant Dr. Bugg. Dr. Bugg' s Declaration states, inter
alia, that he reproduced Appellant's work as reported in 2006. 4
Upon review of the totality of the evidence of record and based on the
preponderance of the evidence standard, we find that Appellant has not met
this burden. LENR and cavitation-induced fusion are not generally accepted
as credible in the scientific community, essentially for the reasons articulated
by the Examiner. As such, the existence of a relatively small number of
publications and declarations from a small group of proponents which
supports the utility and enablement of the invention is insufficient in our
judgment to overcome-for the purpose of meeting the utility and
enablement requirements-the strong scientific consensus which exists and
which doubts the enablement and/or utility of the claimed invention.
Accordingly, we affirm the appealed rejections.
4 The Examiner notes that the work referenced in the Bugg Declaration was
reported to Perdue University but was not reported in a refereed journal
(Ans. 2). According to Appellant, this was because Dr. Bugg was retired
and no longer in need of additional publications (Reply Br. 6).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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