Mitchell R. Swartz

Patent Trials and Appeals Board

Apr 2, 2020

14545475 - (D) (P.T.A.B. Apr. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/545,475 05/08/2015 Mitchell R. Swartz 15-Phonon 9166
7590 04/02/2020
Dr. Mitchell R. Swartz
16 Pembroke Road
Weston, MA 02493
EXAMINER
GARNER, LILY CRABTREE
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
04/02/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MITCHELL R. SWARTZ
____________________

Appeal 2019-002511
Application 14/545,475
Technology Center 3600
____________________

Before JOHN C. KERINS, EDWARD A. BROWN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–20.1 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as himself,
Mitchell R. Swartz. Appeal Br. 6.
Appeal 2019-002511
Application 14/545,475

2
THE INVENTION
Appellant’s claimed invention, according to the Specification, is
directed to “A Machine To Detect Phonon Gain to Control Desired
Reactions in An Electrically Driven Hydrogen Loaded Material.” Spec. 1
(Title of the Invention). Claims 1, 10, and 16 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A machine to detect phonon gain in an electrically driven
hydrogen loaded material to control desired reactions
comprising:

a container with at least two optical ports and at least two
electrical ports;

a material which can provide at least one desired reaction when
electrically driven;

a power supply and wiring connections to enable said electrical
driving of said material;

a power supply to drive at least two coherent optical sources at
two different frequencies;

an optical controller to regulate the output of said two coherent
optical sources;

a beam path to enable illumination of the sample;

a electrical power controller to regulate control of electric power
delivered to said material enabling driving in more than one state;

an optical detector system to examine the backscatter radiation
from the material which is illuminated;

a second beam path to enable said backscatter to reach said
detector system;

Appeal 2019-002511
Application 14/545,475

3
an means to separate the frequencies of said backscatter;

a computation system to determine the intensities and
distribution of said backscatter;

a second computation system to compare the desired intensities
and distribution of said backscatter, to determine the ratio of
antiStokes to Stokes amplitudes, and to compare that to what was
is preferred so as to derive the changes necessary for said electric
power controller to change said power supply driving said
material.

Appeal Br. 187 (Claims App.).
THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1–20 are rejected under 35 U.S.C. § 101 because the
claimed invention is inoperative and therefore lacks utility, Final Act. 16–
17;
2. Claims 1–20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement2, Final Act. 17;
3. Claims 1 and 16 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention, Final Act. 17–18; and

2 The Examiner also objected to the Specification under 35 U.S.C. § 112(a).
Final Act. 4–16. To the extent that this objection relates to the utility and
enablement rejections of claims 1–20, our decision with respect to the
rejections likewise is dispositive as to the corresponding § 112(a) objection.
Because we address the operability issue in our analysis of the rejections, the
Examiner may take appropriate action with respect to the objection
commensurate with our decision on the rejections.
Appeal 2019-002511
Application 14/545,475

4
4. Claims 1, 4, 6, 9, 10, 15, 16, and 19 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Chen (US 2017/0229724 A1,
published Aug. 10, 2017) and Maher et al., “Temperature-Dependent Anti-
Stokes/Stokes Ratios under Surface-Enhanced Raman Scattering
Conditions,” J.Phys.Chem. B 2006, 110, 6797–6803 (hereafter “Maher”),
Final Act. 19–26.
ANALYSIS
A. The Utility and Enablement Rejections
The Examiner, finding that the claimed subject matter is directed to
electrochemical cold fusion, rejected claims 1–20 under Section 101 as
being directed to an invention that is inoperative and therefore lacks utility.
Final Act. 4; 16–17. For the same reasons, the Examiner rejected those
claims under Section 112(a), as failing to comply with the enablement
requirement. Id. at 17; see also id. at 4–16; Ans. 4–14.
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner erred, and have not been apprised of error in
the utility and enablement rejections. We adopt as our own the Examiner’s
findings and conclusions regarding utility and enablement contained in the
Final Action on pages 4–17.
“The questions of whether a specification provides an enabling
disclosure under § 112, ¶ 1, and whether an application satisfies the utility
requirement of § 101 are closely related.” In re Swartz, 232 F.3d 862, 863
(Fed. Cir. 2000) (citation omitted) (hereafter “Swartz I”). The utility
requirement of § 101 requires that the claimed invention be operable to
achieve a useful result. Id. Where the invention is inoperative, the claims
also fail to satisfy the enablement requirement of § 112, first paragraph,
Appeal 2019-002511
Application 14/545,475

5
because a person of ordinary skill in the art cannot practice the invention.
Id. Whether the invention satisfies the utility requirement is a question of
fact, and enablement is a question of law based on underlying factual
inquiries. Id.
Before the PTO can reject a patent application for lack of utility, it
must have reason to doubt the objective truth of the statements provided in
the written description. In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995).
“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 Brana, 51 F.3d at
1566) (alterations in original). Once the PTO furnishes evidence that one of
ordinary skill in the art would reasonably doubt the asserted utility of the
claimed invention, the burden shifts to the applicant to provide evidence
sufficient to convince such a skilled individual of the invention’s asserted
utility. Swartz I, 232 F.3d at 864; see also Swartz v. Iancu, 743 F. App’x
426, 428 (Fed. Cir. 2018) (non-precedential), cert. denied sub nom., Swartz
v. U.S. Patent & Trademark Office, No. 18-961, 2019 WL 888147 (U.S.
Feb. 25, 2019) (hereafter “Swartz II”).
The Examiner finds that Appellant’s invention is
based on the concept of electrochemical [cold] fusion (ECF), the
incorporation of hydrogen isotopes into a crystal lattice where
the isotopes could somehow undergo nuclear fusion and release
energy (“phonon gain in an electrically driven hydrogen loaded
material to control desired reactions,” claim 1).
Ans. 3.
Appeal 2019-002511
Application 14/545,475

6
The Examiner has provided several references demonstrating that the
purportedly positive results of cold fusion experiments are not reproducible.
See, e.g., Ans. 5–12. As such, we determine that the Examiner has
established a reasonable basis for questioning the truth of Appellant’s stated
utility, and, specifically, has shown that one of ordinary skill in the art would
reasonably doubt the utility of Appellant’s invention. Accordingly, the
burden shifts to Appellant to submit evidence sufficient to convince one of
ordinary skill in the art of the invention’s utility. Swartz I, 232 F.3d at 864;
see also Swartz II, 743 F. App’x at 428 (“As we have held, cold fusion
suggests such an inherently unbelievable undertaking.” (Citing Swartz I, 232
F.3d at 864 ; id. at 429 (“[A]pplications that suggest inherently unbelievable
inventions satisfy the Board’s initial burden to show lack of utility, and we
have previously held that Dr. Swartz’s LENR-related inventions here
properly fall within that realm.”).
As was the case in Swartz II, Appellant takes two different and
inconsistent positions on this issue: that “this invention is NOT cold fusion,
but a novel spectroscopy and apparatus and method to enable it,” (Appeal
Br. 54); and also that he has succeeded, where others have failed, in
demonstrating how to reproducibly make cold fusion, produce excess heat
and lattice assisted nuclear reactions (LANR). See, e.g., App. Br. 60 (“the
Applicant’s disclosure does contain reputable evidence that is sufficient to
support his specification and claims that the invention produces excess
heat.”), 63 (Appellant describing “success albeit with considerable difficulty,
by several methods, of clean nonradioactive CF/LANR – including by
Appellant’s inventions (cited by the DIA and DTRA in the respective
Appeal 2019-002511
Application 14/545,475

7
reports.”;3 84 (“[Drs. Fleischmann and Pons] did not demonstrate how to
reproducibly make cold fusion. However, the Applicant has.” (Underlining
omitted)); 93 (“[T]wo decades of LANR R&D have confirmed excess heat
production”).
Appellant’s arguments that the invention does not involve cold fusion
are essentially that the present application included “no claim of excess
heat,” and that the Specification “states it is applicable to, and has utility for,
many fields – including 3D printing.” Appeal Br. 84, 59.
The assertion as to excess heat is belied by portions of the
Specification and other assertions made by Appellant. In discussing the
instant invention, Appellant notes, in a section of the Appeal Brief titled “(5)
Summary of Invention,” that the results of carrying out the invention are
shown in Figures 3–10 of the application. Appeal Br. 11. Elsewhere,
Figures 3–9 of the application are discussed, with Appellant noting that “the
sample illuminated was the core of a NANOR®-type LANR component
capable of being electrically driven.” Id. at 17. In other words, the
invention involves cold fusion. Further, in pointing out where claim 2 finds
support in the application as filed, Appellant cites to page 49 of the
Specification, where it is disclosed that “[i]n the preferred embodiment, the
central core generating the excess heat in the desired state,” involves the
types of materials recited in claim 2. Appeal Br. 28. Because claim 2
depends from independent claim 1, claim 1 itself encompasses an invention

3 In Appellant’s quote, “CF” refers to cold fusion; “LANR” refers to lattice
assisted nuclear reactions, another name for cold fusion; “DIA” refers to the
Defense Intelligence Agency; and “DTRA” refers to the Defense Threat
Reduction Agency.
Appeal 2019-002511
Application 14/545,475

8
involving generation of excess heat in a cold fusion context. The same is
true of independent claims 10 and 16, which have claims depending
therefrom (claims 11 and 17, respectively) reciting the same materials as
does claim 2.
This leads to Appellant’s further argument, that the invention has
utility other than in a cold fusion context, namely, in 3D printing. See, e.g.,
Appeal Br. 59. The alleged connection to 3D printing, however, is that
canola oil, which appears to be a known lubricant for certain nozzles
involved in 3D printing,4 is disclosed and claimed (see, e.g., claim 3) as
being a material having a desired reaction, and included in the machine
recited in claim 1.5 Appellant appears to assert that the results exhibited in
its Figure 10, involving the use of canola oil in the spectroscopy procedure,
“will lead to an entire new cohort of such materials because the phonon gain
required for such extruder enablement can be visualized.” Spec., p. 74.
The Examiner notes that the portions of the Specification that mention
3D printing are not described in enabling detail and the mention is simply in
passing. Ans. 6–7. The Examiner takes the position, we believe correctly,
that “the disclosure as filed is overwhelmingly directed towards a utility of
cold fusion.” Id. at 7. The Examiner further observes that “[a]ll of
Appellant’s [r]emarks, arguments, submitted Affidavits and submitted
references point to cold fusion as the utility of the clamed invention.” Id.

4 Appellant’s Specification states that the invention “permits recognition of
important new materials, such as Canola oil, which has great utility as a high
temperature nozzle lubricant, as used for 3D printing.” Spec., p. 71.
5 In its Appeal Brief, Appellant avers that “canola oil appears to have a
reaction[] with 3D printing filaments and/or their high temperature nozzles.”
Appeal Br. 15.
Appeal 2019-002511
Application 14/545,475

9
The “brief mention of 3D printing appears to be an attempt to veil the lack of
utility of the true subject matter.” Id.
Supporting the Examiner’s position is the fact that independent claims
1 and 16 are directed to controlling desired reactions in an electrically driven
hydrogen loaded material, and to detecting phonon gain in such materials.
Appeal Br., pp. 187, 189. Appellant’s Specification makes no attempt to
explain how canola oil fits the description of being a hydrogen loaded
material, a term used in discussing cold fusion processes. The same is true
of the term “phonon gain.” Independent claim 10 does not explicitly use the
term “hydrogen loaded material,” instead requiring only a “sample capable
of at least one desired reaction,” and “electrically driving the sample into its
desired reaction state, which parallels language appearing in claims 1 and
16. Id. at p. 188. The Specification is utterly silent as to what the desired
reaction of canola oil is,6 and fails as well to demonstrate how that reaction
is obtained through the use of electricity.
Appellant has not directed our attention to any persuasive evidence in
the record that would convince one of ordinary skill in the art of the claimed
invention’s utility. Appellant makes reference to various articles,
publications and Declarations purported to evidence or demonstrate utility.
See, e.g., Appeal Br., passim. Appellant accuses the Examiner of ignoring
or dismissing all of the evidence purporting to demonstrate utility. Id.

6 The Appeal Brief mentions that “canola oil appears to have a reaction[]
with 3D printing filaments and/or their high temperature nozzles.” Appeal
Br. 15. Appellant makes no attempt to describe or otherwise explain how,
even if true, that relates to either “hydrogen loaded material,” or that the
reaction is obtained through the use of electricity.
Appeal 2019-002511
Application 14/545,475

10
The Examiner does not accept as unquestionably true all of the
evidence submitted by Appellant; rather, the Examiner finds it lacking in
trustworthiness and otherwise not clearly demonstrating utility. As but one
example, Appellant asserts that the Examiner has ignored “the DIA report,”7
and “never even mention[s] the DTRA Report,”8 which Appellant asserts
lend credibility to the claimed invention. Appeal Br. 66–69. The Examiner
notes that neither is a peer-reviewed article, and the DIA report in particular
was treated by the Federal Circuit in Swartz II as not standing for the
propositions asserted by Appellant. Ans. 8.
The Federal Circuit had the following to say about these reports:
The DIA report cited Swartz’s research to support the statement,
“In May 2002, researchers at JET Thermal in Massachusetts
reported excess heat and optimal operating points for LENR
manifolds.” That same report indicates fundamental skepticism
about the result of the research. It notes that scientists from
various nations “are devoting significant resources to this work
in the hope of finding a new clean energy source. Scientists
worldwide have been reporting anomalous excess heat
production, as well as evidence of nuclear particles and
transmutation.” It also states, “If nuclear reactions in LENR
experiments are real and controllable, DIA assesses that whoever
produces the first commercialized LENR power source could
revolutionize energy production and storage for the future.” The
DIA report also states “much skepticism remains” about LENR
programs. The DTRA reference strikes a similar note. It
explains that LENR reactions “are showing some remarkable
progress . . . but experiments remain only thinly reproducible,”

7 “Technology Forecast: Worldwide Research on Low-Energy Nuclear
Reactions Increasing and Gaining Acceptance,” Defense Analysis Report
No. DIA-08-0911-003, Nov. 13, 2009, Defense Intelligence Agency.
8 Sutton et al., “High Energy Science & Technology Assessment,” Defense
Threat Reduction Agency, June 29, 2007.
Appeal 2019-002511
Application 14/545,475

11
that they “suffer[] from a basic lack of understanding of the
governing physics,” and that “it seems unlikely that
deployable/usable devices could be expected within a five to ten
year horizon.”
These references do little to overcome the presumption of no
utility. At best, they demonstrate some positive experimental
results obtained by Swartz, tempered by much remaining
skepticism and uncertainty about the utility of the discussed
technology.
Swartz II, 743 F.Appx at 428–29.
We determine that the Examiner did not err in finding that the utility
of Appellant’s invention has not been established. Because an inoperative
invention cannot be enabled, the Examiner also did not err in concluding that
Appellant’s claims fail to satisfy the enablement requirement. In light of
this, we need not reach the Examiner’s specific findings and evidence
directed to the Wands factors and undue experimentation. Final Act. 12–15
(citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)).
We sustain the utility and enablement rejections of claims 1–20 under
§§ 101 and 112(a).
B. The Indefiniteness Rejection
“Applying the broadest reasonable interpretation of a claim, . . . the
[Examiner] establishes a prima facie case of indefiniteness with a rejection
explaining how the metes and bounds of a pending claim are not clear
because the claim contains words or phrases whose meaning is unclear.”
Ex parte McAward, No. 2015-006416, 2017 WL 3669566, at *2 (PTAB
Aug. 25, 2017) (precedential) (citing, inter alia, In re Packard, 751 F.3d
1307, 1310 (Fed. Cir. 2014) (per curiam)).
Appeal 2019-002511
Application 14/545,475

12
The Examiner asserts that the expression in claim 1, reciting “at least
two coherent optical sources at two different frequencies,” is indefinite.
Final Act. 17–18. The Examiner states that the term “coherent” is used in
claim 1 to mean “at different frequencies,” whereas the accepted meaning is
“the same phase and the same frequency.” Id. at 18. The Examiner resolves
this purported inconsistency by interpreting the passage as requiring that the
optical sources are at two different frequencies. Id.
Appellant responds, in part, by presenting arguments that appear to be
directed to indefiniteness rejections that had been made at some point during
prosecution, but have been withdrawn. Appeal Br. 126–34. Appellant
addresses the current rejection at page 134 of the Appeal Brief, arguing that
the expression “coherent optical source” would be understood to mean
“laser” by persons of ordinary skill in the art. This appears to comport with
the Examiner’s position that “coherent” involves the same phase and same
frequency.
We do not see the same lack of clarity that the Examiner does, and
construe that claim in the same way noted by the Examiner, i.e., that there
are two optical sources each having its own frequency, but that the
frequency of one is different from that of the other.
The rejection of claims 1 and 16 as being indefinite is not sustained.

C. The Obviousness Rejections
The Examiner rejects independent claims 1, 10, and 16, and certain
dependent claims, as obvious over Chen and Maher. Final Act. 19–26.
Inasmuch as we sustain the Sections 101 and 112(a) rejections of all
pending claims, we do not reach the Section 103 art rejections of such
Appeal 2019-002511
Application 14/545,475

13
claims. See 37 C.F.R. § 41.50(a)(1) (explaining that the affirmance of the
rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the Examiner on that claim, except as to any
ground specifically reversed).
DECISION
The rejection of claims 1–20 under 35 U.S.C. § 101 because the
claimed invention is inoperative and therefore lacks utility is affirmed.
The rejection of claims 1–20 35 U.S.C. § 112(a) as failing to comply
with the enablement requirement is affirmed.
The rejection of claims 1 and 16 under 35 U.S.C. § 112(b) as being
indefinite is reversed.
We do not reach the merits of the rejection of claims 1, 4, 6, 9, 10, 15,
16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Chen and
Maher.
Appeal 2019-002511
Application 14/545,475

14
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed Not
Reached
1–20 101 Utility 1–20
1–20 112(a) Enablement 1–20
1, 16 112(b) Indefiniteness 1, 16
1, 4, 6, 9, 10,
15, 16, 19
103 Chen, Maher 1, 4, 6, 9,
10, 15, 16,
19
Overall
Outcome

1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED