UNIFIED GRAVITY CORPORATION

Patent Trials and Appeals Board

Sep 22, 2020

14892923 - (D) (P.T.A.B. Sep. 22, 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.
14/892,923 11/20/2015 Hubert M. Lipinski UGCO 1009-3 1074
22470 7590 09/22/2020
HAYNES BEFFEL & WOLFELD LLP
P O BOX 366
HALF MOON BAY, CA 94019
EXAMINER
DAVIS, SHARON M
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
docket@hmbay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HUBERT M. LIPINSKI and STEPHEN A. LIPINSKI
____________________

Appeal 2019-004924
Application 14/892,923
Technology Center 3600
____________________

Before MICHAEL C. ASTORINO, ANNETTE R. REIMERS, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–3 and 5–29.2 We have jurisdiction under
35 U.S.C. § 6(b). Appellant argued before the Board on August 10, 2020.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Unified Gravity Corporation is
the real party in interest. Appeal Br. 1.
2 We note the Examiner includes claims 28 and 29 in the rejection. Final
Action 1 (Office Action Summary), 2, 22, 24; see also Appeal Br. 1. We
further note, for the purposes of the subject appeal, the Examiner did not
enter claims 30 and 31 as proposed by Appellant in the Response to the
Final Office Action. Advisory Action 1 (dated July 7, 2017); see also
Response to Final Office Action 5, 6 (filed June 28, 2017).
Appeal 2019-004924
Application 14/892,923

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We AFFIRM IN PART.
Appellant’s disclosure relates to a “Hydrogen-Lithium Fusion Device
(HLFD) . . . [that] enables high efficiency proton-lithium fusion within a
reaction chamber, producing energetic helium ion fusion byproducts.”
Spec ¶ 2. Claim 1 is the sole independent claim. Below, we reproduce
claim 1 as representative of the appealed claims.
1. A method for creating energetic helium ions, said
method comprising:
imparting energy to protons in a reaction chamber so as
to generate at least a portion of protons with a kinetic energy in
a range of 100 eV to 5,000 eV; and
combining said portion of protons with lithium from a
lithium-containing species in a proton-lithium plasma to cause
nuclear fusion reactions resulting in production of energetic
helium ion fusion byproducts
wherein said portion of protons with kinetic energy in the
range of 100 eV to 5,000 eV is effective to produce the helium
ion fusion byproducts with a power ratio Q>1 and Q<64,840,
the power ratio describing output power of the said helium ion
fusion byproducts divided by input power used in forming the
said proton-lithium plasma and the said protons.
REJECTIONS AND PRIOR ART3
The Examiner rejects the claims as follows:

3 The Examiner also purports to object to the Specification under 35 U.S.C.
§ 112(a) “as failing to provide an adequate written description of the
invention and . . . for failing to provide an enabling disclosure.” Final
Action 13; see also id. at 13–14. Appellant argues against this objection.
See, e.g., Appeal Br. 56 (“The reversible errors discussed above respond to
objection[s] to the [S]pecification on grounds of written description and
enablement.”) (citation omitted) (formatting omitted). This matter is
reviewable by petitioning the Director in accordance with 37 C.F.R. § 1.181,
and may not be within the jurisdiction of the Board. See MPEP § 1201 (the
Board ordinarily will not hear a question that is reviewable by petition); In
Appeal 2019-004924
Application 14/892,923

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I. Claims 1–3 and 5–29 under 35 U.S.C. § 101 because the
claimed invention is inoperative and therefore lacks utility;
II. Claims 1–3 and 5–29 under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement; and
III. Claim 1 is rejected under 35 U.S.C. § 103 as obvious based on
Lipinski et al. (US 2009/0274256 A1, published Nov. 5, 2009)
(“Lipinski”).
ANALYSIS
Rejection I—Utility rejection of claims 1–3 and 5–29
As we state above, the Examiner rejects claims 1–3 and 5–29 under
35 U.S.C. § 101 “because the . . . [claimed] invention is inoperative and
therefore lacks utility.”4 Final Action 22. According to the Examiner,
Appellant’s claimed “invention . . . is considered as based on the ‘cold
fusion’ concept set forth by Fleischmann and Pons. . . . [T]his ‘cold fusion’
concept is still no more than just an unproven concept.” Final Action 14
(footnote omitted). Further,

re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating that there are many
kinds of decisions made by examiners which are not appealable to the Board
when they are not directly connected with the merits of issues involving
rejections of claims) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA
1971)). Accordingly, we do not expressly review the Examiner’s objections
to the Specification. Nevertheless, to the extent that these objections turn on
the same issues, or are premised on the same reasoning, as the §§ 101
and 112 rejections of the claims, our analysis and conclusions with respect to
the rejections are equally applicable to the objections.
4 Whether an application discloses a utility for a claimed invention is a
question of fact. Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir.
1983).
Appeal 2019-004924
Application 14/892,923

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[certain references of record in the application] demonstrate[]
that not only has the claimed method been attempted, it has
been categorically proven to be inoperable. There exists
nothing in the literature to demonstrate an energetically positive
result at the claimed energies. Given the overwhelming
evidence against the claims and the persistent history of fraud
in the art, one of ordinary skill would have cause to doubt the
operability of the claimed method.
. . . All claims are independently rejected as inoperable because
the alleged reaction rates are substantially greater than allowed
by the presently accepted theories of nuclear science.
Id. at 22–23.
Based on our review of the record, the Examiner does not support
adequately that Appellant’s claimed method is a method of performing a
cold fusion concept. For example, Appellant’s Specification itself describes
how Appellant’s claimed method differs from cold fusion. Spec. ¶ 94. The
Examiner does not otherwise adequately support that the claimed method is
analogous to cold fusion. Instead, to summarize, it appears that the
Examiner equates Appellant’s method to cold fusion based on an
inadequately-supported conclusion that “a[ny] device . . . [is a] ‘cold fusion’
[device] when it is alleged that the energy of the reactant is significantly
lower than the energy threshold required to fuse two nuclei.” Final Action 2.
We assume arguendo that certain references of record “demonstrate[]
that not only has the claimed method been attempted[, but that those
references disclose that the claimed method is] . . . inoperable.” Final
Action 22. Regardless, Appellant’s Specification itself provides sufficient
evidence of operability. Briefly, in more than forty pages of the
Specification, Appellant reports on twenty-fives series of tests, conducted
over approximately seven years, at four different facilities. Spec. ¶¶ 124–
Appeal 2019-004924
Application 14/892,923

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303. Some tests “failed to produce the desired levels of fusion,” while other
tests were successful. Id. ¶ 124. Notwithstanding that there exists no “peer-
reviewed discussion of the device, much less a review of any other device
capable of maintaining a lithium-proton fusion reaction at energies far below
the fusion threshold,” in view of the evidence Appellant provides, the
Examiner does not support adequately that Appellant’s claimed method is
inoperative. Final Action 6.
Consequently, we do not sustain the Examiner’s § 101 rejection of
claims 1–3 and 5–29.
Rejection II—Enablement rejection of claims 1–3 and 5–29
The Examiner’s rejects claims 1–3 and 5–29 under 35 U.S.C.
§ 112(a), as failing to comply with the enablement requirement, because
“any invention found to be inoperable is also legally non-enabled.” Final
Action 24–25 (citation omitted). For the reasons discussed above, however,
the Examiner does not support adequately that the claims are inoperative
(i.e., that the claims lack utility). Accordingly, we do not sustain the
Examiner’s enablement rejection of claims 1–3 and 5–29.
Rejection III—Obviousness rejection of claim 1
In the Final Office Action, the Examiner rejects Appellant’s claim 1 as
obvious based on Lipinski. Final Action 27. In response to Appellant’s
arguments in the Appeal Brief, the Examiner further relies on Lipinski’s
paragraphs 39–55 to support the rejection of Appellant’s claim 1. Appeal
Br. 61–62; Answer 16. Not unexpectedly, Appellant’s arguments in the
Appeal Brief do not argue against the cited paragraphs from Lipinski.
However, Appellant does not submit further arguments regarding the
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Application 14/892,923

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nonobviousness of claim 1 in the Reply Brief. Inasmuch as Appellant does
not persuade us that the Examiner errs by relying on Lipinski’s
paragraphs 39–55 to render claim 1 obvious, we sustain the Examiner’s
obviousness rejection of claim 1.
CONCLUSION
We REVERSE the Examiner’s §§ 101 and 112 rejections.
We AFFIRM the Examiner’s § 103 rejection.
In summary:
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.
§ 41.50(f).
AFFIRMED IN PART

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–3, 5–29 101 Utility 1–3, 5–29
1–3, 5–29 112(a) Enablement 1–3, 5–29
1 103 Lipinski 1
Overall
Outcome:
1 2, 3, 5–29