Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE JOHN DASH AND PATRICK S. KEEFE
Appeal No. 92-3536
November 24, 1992
Application for Patent filed April 16, 1990, Serial No. 07/509,585. Low Temperature Nuclear Fusion.
M.H. Hartwell et al. for appellants.
Harvey E. Behrend
Before Lindquist, Lynch and Stewart
This is a decision on the appeal under 35 USC 134 from the examiner's rejection of claims 1-5, all of the claims in the application.
The invention relates to the production of energy utilizing what is properly known as "cold fusion."
Claim 1, which is representative of the claimed subject matter, reads as follows:
1. A method of producing energy through electro-chemical charging of a palladium cathode which comprises:
applying voltage between a cathode and anode immersed in an electrolyte and the electrolyte including heavy water and an ionizable acid, and as the result of the applying of said voltage releasing at the cathode of 2H and 1H atoms which convert to 3H with the production of energy.
The examiner relied on the following references:
A. Jensen 4,447,508 May 08, 1984
B. von Sturm 4,146,446 Mar. 27, 1979
D. Spengler et al. (Spengler) 3,446,725 May 27, 1969
E. T.A. Edison 1,016,874 Feb. 06, 1912
F. Klein, et al. (Klein) 1,812,518 Jun. 18, 1970
G. Journal of Fusion Energy, Vol. 9, No. 4, (12/90), pages 517-524, Fleming et al.
H. The New York Times, (3/17/91) article by Broad on pages 1 and 30.
I. C+EN, (1/14/91) article by Dagani on pages 4 and 5.
J. Journal of Fusion Energy, Vol. 9, No. 4, (12/90), pages 475-477, Henderson et al.
K. Journal of Fusion Energy, Vol. 9, No. 2, (6/90), pages 165-186, Bosch et al.
L. Journal of Fusion Energy, Vol. 9, No. 4, (12/90) pages 483-485, Rogers et al.
M. Journal of Fusion Energy, Vol. 9, No. 2 (6/90) pages 133-148, Albagli et al.
N. The Washington Times, 3/24/89, page A5, article by D. Braaten.
O. The New York Times, 5/3/89, page A1, A22, article by M. Browne.
Q. Journal of Nuclear Science and Technology, Vol. 26, No. 7, (July 1989), pages 729-732, Ohashi et al.
R. Science, Vol. 246, No. 4931, 11/10/89, pages 793-796, Miskelly et al.
*2 S. Nature, Vol. 340, 8/17/89, pages 525-530, Lewis et al.
T. UCRL--101583, 7/89, Chapline, pages 1-9.
U. The Wall Street Journal, 4/26/89, page B4, article by D. Stipp.
V. The Washington Post, 5/2/89, page A1, A7, article by P. Hilts.
W. The Washington Post, 7/13/89, page A14.
X. Z. Physics A-Atomic Nuclei, col. 333 (1989), pages 319-320, Alber et al.
Y. ORNL/FTR-3341, 7/31/89, pages 2-15, Cooke.
Z. Journal of Radioanalytical Nuclear Chemistry, Letters, Vol. 137, No. 1 (8/21/89), pages 23-28, Horanyi.
BA. Solid State Communications, Vol. 72, No. 4 (1989), pages 309-313, Hajdas et al.
BB. Journal of Radioanalytical Nuclear Chemistry, Letters, Vol. 137, No. 1 (8/21/89), pages 9-16, Faller et al.
BC. Physical Review Letters, Vol. 62, No. 25, 6/19/89, pages 2929-2932, Ziegler et al.
BE. Physical Review Letters, Vol. 63, No. 18, 10/30/89, pages 1926-1929, Price et al.
BF. Physics Letters B, Vol. 228, No. 1, 9/7/89, pages 163-166, Cribier et al.
BG. Solid State Communications, Vol. 72, No. 1 (1989), pages 53-57, Shani et al.
BH. The Washington Post, 3/29/90, page A3.
BI. Nature, Vol. 344, 3/29/90, pages 401-405, Salamon et al.
BJ. Nature, Vol. 338, 4/27/89, pages 737-740, Jones et al.
BK. Journal of Electroanalytical Chemistry, Vol. 261, No. 2A (4/10/89), pages 301-308, Fleischmann et al.
Claims 1-5 stand rejected under 35 USC 112, first paragraph, as lacking enablement and an adequate written description. [FN1]
Claims 1-5 stand rejected under 35 USC 101, as inoperative and in lacking utility.
Claims 1-4 stand rejected under 35 USC 102 as anticipated by Jones.
Claims 1-4 stand rejected under 35 USC 103 as unpatentable over Fleischmann in view of von Sturm or Spengler.
Claims 1-5 stand rejected under 35 USC 103 as unpatentable over Jones in view of any of George, Edison, Jensen or Klein.
We have carefully reviewed the record in this appeal and, as a result thereof, we find that we agree with the examiner. Accordingly, we affirm.
We are in substantial agreement with the position of the examiner set forth on pages 1-19 of the Examiner's Answer. We would, however, add additional comments of our own.
At the bottom of page 13 of the Examiner's Answer, the examiner addresses the production of tritium. In the Jones reference (reference BJ), Equation 1 indicates that the normal products of the fusion of deuterium and hydrogen atoms (the starting constituents of appellants' claim) is 3He and not tritium. However, Equations 2a and 2b of the Jones show that the fusion of two deuterium atoms follows two paths. The first results in the production of He3 plus a neutron at 2.45 MeV. In addition, the fusion reaction produces tritium (1H 3) and a proton at 3.02 MeV. Page 476 of reference J indicates that the probabilities of the two different fusion product chains resulting from the fusion of deuterium atoms are approximately equal. Accordingly, if He3 is produced by the fusion of deuterium atoms, then one would expect tritium to be produced with equal probability.
*3 Further, we would note that the fusion of deuterium into tritium (or of deuterium and hydrogen into tritium) inherently produces energy by virtue of the differences between the rest masses of the beginning atoms and the fusion product(s). All of the reactions shown on page 476 of reference J show the production of energy either in the form of kinetic energy of the low mass particles produced or energy in the form of gamma rays.
Beginning at the bottom of page 4, appellants' states:
First of all, it is inaccurate to state that the results of Fleischmann et al. are not capable of being confirmed. The Examiner cites a body of material which takes issue with the findings of Fleischmann et al. However, and it is believed that the Examiner must concede this, there is also substantial literature to the effect that Fleischmann et al. have indeed made an important advance in the area and that their results are indeed confirmable.
First, the examiner did not make the statement attributed to him. Second, we disagree that there is substantial literature to the effect that Fleischmann and Pons results are "indeed confirmable." On the contrary, the 37 references cited by the examiner are universal in reporting the failure to confirm the results of Fleischmann and Pons. There were, initially, two reports confirming Fleischmann and Pons results. However, the results from one (Georgia Tech) were withdrawn (reference U) and the DeNinno results referred to in reference X were not confirmed. The "substantial literature" referred to by appellants is clearly not in the record of this case, if it exists.
On page 5 of appellants' brief, appellants cite two articles by William Broad "to the effect that there was something scientific about cold fusion." These articles do not have anywhere near the same degree of evidentiary value as articles subjected to peer review and published in scientific journals by experts in the field.
We conclude from the material contained in the 37 references that, unless experiments are very carefully controlled and instrumentation very carefully calibrated, false results are easy to obtain in the cold fusion area, regardless of good faith on the part of the investigators. The problems and difficulties associated with such experiments are set forth in some detail in reference K.
We are particularly troubled by the fact that the only evidence provided by appellants to support their claim for the fusion reaction given in the claims is an increased scintillation count rate after operation of the cell. Appellants' description of the operation of the cell does not discuss whether electrolyte was added during the course of the operation. As discussed in detail in reference K, this is a possible source of major contamination, since tritium is present in widely varying amounts in commercially available deuterium. Our doubts in this area are reinforced by the fact that the beginning count for sample D2B (page 6 of the specification) varies so widely from that of samples D1B and D3B. This seems to indicate a lack of experimental controls such as premixing of the electrolyte to ensure a standard batch for use throughout the experiments.
*4 The specification does not describe any attempt to detect and identify either particles (e.g. proton, neutron, electron) or gamma rays which might be expected to result from a fusion reaction. The absence of such routine efforts to confirm the existence of a nuclear reaction further casts doubt on the adequacy of the experimental design to provide evidence of a fusion reaction.
Finally, the only discussion of "excess heat" provided by the specification is found on page 5:
At the end of the five day period, it was calculated from observations made that the energy produced at the heavy water cell, i.e., cell # 1 was 25% greater than the energy produced at the regular water cell, i.e., cell # 2. This heat energy was calculated knowing the specific heats of the electrolytes in the two cells, the loss of energy to the environment through heat conduction, the time of the electrolysis, and the temperature levels in the two cells as determined by the thermocouples described.
Reference K discusses the importance of mixing to avoid false results due to temperature gradients within the cell. There is no indication that any measures were taken to avoid this source of error. Further, the specification is totally silent as to the experimental environment utilized in measuring the heat production and flows. Calorimetry is extremely sensitive to external perturbation and to any failure to account for heat sources. A possible source of error would be allowing the pre-charged (with deuterium) palladium cathode to extend into an oxygen environment where possibly unaccounted for heat would be released from the chemical combination of the deuterium and oxygen. Appellants' brief treatment of how "excess heat" was measured (quoted above) does not address any of the numerous sources of error in calorimetry discussed in the references. On the contrary, even in the face of repeated inoperative and enablement rejections, appellants have failed to come forward with any documentation which could dispel these doubts.
Beginning at the bottom of page 5 of appellants' brief, appellants' state:
In this application, the claims of the invention recite a method of producing energy through electro-chemical charging of a palladium cathode. The specification and drawings include a complete description of parameters employed in carrying out the invention. Voltage, size of electrodes, composition of electrolyte, times, heat, energy produced, etc. are all set forth. Anode and cathode details are set forth on page 2 of the specification. Cell construction is discussed in page 3, and illustrated in the drawing. Catalyst and electrolyte composition are set forth on page 4. Energy calculation is set forth on page 5. The invention is certainly reproducible from the disclosure in the application to one or (sic) ordinary skill in the art.
Appellants wish to point out that the apparatus and method which are disclosed in the application were incorporated in a thesis submitted by one of the inventors herein, namely Patrick S. Keefe, in fulfillment of the requirements of the degree of Master of Science in physics at Portland State University in 1990. The paper was approved by the members of the thesis committee.
*5 We disagree that the "energy calculation is set forth on page 5 (of the specification)." Page 5 of the specification, quoted above, states that appellants performed calculations, but appellants do not provide those calculations in the record. Appellants' statement that "the invention is certainly reproducible" means only that one can reproduce appellants' cell. It does not mean that appellants' cell can reproducibly generate the fusion reaction claimed or any other form of cold fusion.
The fact that appellants' apparatus and method were disclosed in a thesis submitted by one of the co-inventors, and that the thesis was approved, provides no information whatsoever about the qualifications of the members of the thesis committee and says absolutely nothing about the degree of experimental controls, the calibration of instrumentation, nor the conditions under which the experiments were conducted.
On page 6 of the Appeal Brief, appellants state that their "results are demonstrated by data confirmed in laboratory notes." Again, the laboratory notes are not part of the record on this appeal. Appellants had considerable opportunity to respond to the examiner's challenge to operability and has provided no information.
We will address the rejections of the claims under 35 USC 112, first paragraph, and under 35 USC 101 together. The lack of utility because of inoperativeness (a question of fact), and the absence of enablement (a question of law) are closely related grounds of unpatentability. Newman v. Quigg, 877 F.2d 1575, 11 USPQ2d 1340 (Fed.Cir.1989). A rejection under 35 USC 101 for lack of utility is tantamount to a rejection under the how-to-use provision of the enablement clause of the first paragraph of 35 USC 112. In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA1971).
A disclosure of a utility satisfies the utility requirement of section 101 unless there are reasons for the artisan to question the truth of such disclosure. In re Gaubert, 524 F.2d 1222, 187 USPQ 664 (CCPA1975); In re Langer, 503 F.2d 1380, 183 USPQ 288 (CCPA1974).
To comply with this clause of the first paragraph of 35 USC 112, the disclosure must adequately present the claimed invention so that the artisan could practice it without undue experimentation. In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA1974) and In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA1973). If the examiner's basis for questioning the sufficiency of the disclosure is reasonable the burden shifts to appellants to come forward with evidence to rebut this challenge. In re Doyle, 482 F.2d 1385, 179 USPQ 227 (CCPA1973); In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA1973) and In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA1971).
*6 In view of the compelling evidence that neither excess heat nor the traditional nuclear by-products of a fusion reaction have been detected by careful researchers conducting experiments under conditions that are highly analogous to appellants' electrolytic cell and, given the relative ease with which erroneous results can be achieved by failing to observe strict experiment design controls and calibration controls, all of which has been documented in some detail in references A-BK, we find that the examiner has established a reasonable basis for both challenging the operativeness of the claimed method as well as the utility of how to use the claimed method to achieve the fusion result claimed. This results in shifting the burden of proof to appellants. Appellants have produced no evidence to overcome the examiner's position. Accordingly, we will sustain the rejection of claims 1-5 under 35 USC 112, first paragraph, as lacking enablement. We will also sustain the rejection of claims 1-5 under USC 101 as inoperative and lacking utility.
Turning to the rejection of claims 1-4 under 35 USC 102, appellants challenge the disclosure of Jones with respect to the electrolyte. The claims only require that the electrolyte include heavy water and ionizable acid. Appellants disclose the use of sulfuric acid as the ionizable acid. The "prescription" utilized by Jones for his electrolyte is given on page 738, column 2 of reference BJ. That prescription includes HNO3. This, in itself, is sufficient to meet the "ionizable acid" limitation of the claim. However, in addition, Jones discloses the use of TiOSO4.H2SO4.8H2O. On page 9 of the Appeal Brief, appellants argue that the Jones prescription contains:
relatively insignificant amounts of various metal salts, some of which include bound sulfuric acid. This hardly can be compared with the electrolysis, disclosed in appellants' specification, where an electrolyte is used comprising 20 ml of heavy water and 3.5 ml of concentrated sulfuric acid.
It is clear that Jones discloses the composition of the salts in solid form, not in their solution form. Clearly, when the TiOSO4.H2SO4.8H2O is dissolved in water it will disassociate and the H2SO4 will be released as an ionizable acid. Appellants' argument that the sulfuric acid is bound in the Jones disclosure is misleading. Clearly, in solution it is free. Further, the claim language contains no restriction on the concentration of the ionizable acid.
On page 8 of appellants' brief, appellants argue that "there is no data presented in Jones et al. indicating that energy is produced in the reactions involved." As indicated above, this argument is specious. The nuclear reactions postulated and reportedly observed in Jones produce energy. Further, the production of energy is inherent in the use of the word "fusion" in the context in which Jones uses it.
*7 We will sustain the rejection of claims 1-4 under 35 USC 102 as unpatentable over Jones et al.
Turning to the rejections of claims 1-4 under 35 USC 103 over Fleischmann in view of von Sturm or Spengler, the Fleischmann reference differs from appellants' claimed invention in that Fleischmann utilizes LiOD as its electrolyte. Appellants' claim requires an ionizable acid.
The object of the von Sturm reference is "to reduce the amount of electric energy required in a method for generating hydrogen through the electrolysis of water or aqueous solutions ..." See column 1, lines 46-51.
Von Sturm further teaches (column 2, lines 62-67):
To increase the conductivity, it is advantageous in the method according to the invention to add, as is done in conventional water electrolysis, an alkali solution or acid to the water, preferably sodium hydroxide or sulfuric acid.
This teaches that sulfuric acid is an alterative to alkali solutions in the conduct of electrolysis. Von Sturm also teaches the use of palladium and platinum as electrode materials. (See column 3, line 26, et seq.) and discusses the incorporation of hydrogen into the crystal lattice of the cathode material (column 1, line 52, et seq.). We find that the substitution of sulfuric acid for the electrolyte of Fleischmann would have been prima facie obvious to achieve a reduction in the amount of electric energy required to perform the electrolysis.
Similarly, Spengler discloses an electrolysis cell which uses electrodes which can be made of platinum or palladium (column 2, lines 40-46) and electrolytes which include, alternatively "sulfuric acid" or bases such as "alkali hydroxides, and/or salts." (Column 2, lines 52-56).
We find that the use of sulfuric acid as an electrolyte in place of the LiOD of Fleischmann would have been prima facie obvious to achieve a "material reduction in the power consumption for the cell at a given current density and by consequence an increase in the operating efficiency of the cell." (See column 4, lines 11-14 of Spengler).
For the reasons given, we will sustain the rejection of claims 1-4 under 35 USC 103 as unpatentable over Fleischmann in view of von Sturm or Spengler.
The last two rejections add claim 5 to the claims rejected and include citations to George, Edison, Jensen, and Klein as additional evidence of obviousness.
Claim 5 is directed to the catalytic recombination of gases produced during electrolysis. The Edison, Jensen and George references all recognize a problem of potential explosion resulting from recombination of oxygen and hydrogen produced during electrolysis. All of the references added to this rejection disclose the use of catalytic recombination of hydrogen and oxygen produced at the electrodes during electrolysis into water.
It would have been prima facie obvious to utilize catalytic conversion of hydrogen and oxygen products of electrolysis (1) to prevent the loss of electrolyte, (2) to reduce the risk of explosion from accumulation of an explosive mixture of the gases, and (3) to permit operation in a sealed cell as taught by the references. Accordingly, we will sustain these rejections as well.
*8 We are not unaware that we are sustaining rejections under lack of enablement based on reasons which also apply to the prior art. If appellants overcome the lack of enablement of their claims, they will necessarily overcome the lack of enablement of the references. In fact, appellants have argued, as they must to defend the proposition that their own disclosure is enabled, that the references are enabling. If the references are enabled, then they apply to appellants' claims.
In summary, we sustain the rejection of claims 1-5 under 35 USC 112, first paragraph, as lacking enablement. We sustain the rejection of claims 1-5 under 35 USC 101 as inoperative and lacking utility. We sustain the rejection of claims 1-4 under 35 USC 102 as unpatentable over Jones. We sustain the rejection of claims 1-4 under 35 USC 103 as unpatentable over Fleischmann in view of von Sturm or Spengler. We sustain the rejection of claims 1-5 under 35 USC 103 as unpatentable over Jones in view of any of George, Edison, Jensen or Klein. Finally, we sustain the rejection of claims 1-5 under 35 USC 103 as unpatentable over Fleischmann in view of von Sturm or Spengler, either in view of George, Edison, Jensen or Klein.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
William F. Lindquist
Thomas E. Lynch
David L. Stewart
FN1. The examiner only argued the enablement rejection, however. Given the record as a whole, we consider the rejection based on written description to have been withdrawn.
This is in response to appellant's brief on appeal filed 12/5/91.
(1) Status of claims.
The statement of the status of claims contained in the brief is correct.
(2) Status of Amendments After Final.
The appellant's statement of the status of amendments after final rejection contained in the brief is correct.
The summary of invention contained in the brief is correct.
The appellant's statement of the issues in the brief is correct.
(5) Grouping of claims.
Appellant's brief includes a statement that claims 1-4 and claims 1-5 do not stand or fail together and provides reasons as set forth in 37 C.F.R. §§ 1.192(c)(5) and (c)(6).
(6) Claims appealed.
*9 The copy of the appealed claims contained in the Appendix to the brief is correct.
(7) Prior Art of record.
4,447,508 Jensen 5/84
4,146,446 von Sturm 3/79
3,464,860 George et al 2/69
3,446,725 Spengler et al 5/69
1,016,874 Edison 2/12
1,812,518 Klein et al 6/70
J. of Fusion Energy, col. 9, No. 4, (12/90), pp 517-524, Fleming et al.
The New York Times, (3/17/91) article by Broad on pages 1 and 30.
C+EN, (1/14/91) article by Dagani on pages 4 and 5.
J. of Fusion Energy, vol. 9, No. 4, (12/90), pp. 475-477, Henderson et al.
J. of Fusion Energy, vol. 9, No. 2, (6/90), pp 165-186, Bosch et al.
J. of Fusion Energy, vol. 9, No. 4, (12/90) pp 483-485, Rogers et al.
J. of Fusion Energy, vol. 9, No. 2 (6/90) pp 133-148, Albagli et al.
The Washington Times, 3/24/89, page A5, article by D. Braaten.
J. Electroanal. Chem. vol. 266, (1989) pp 437-450, Kreysa et al.
J. of Nucl. Sci. and Tech., vol. 26, No. 7, (July 1989), pp 729-732, Ohashi et al.
Science, vol. 246, No. 4931, 11/10/89, pp 793-796, MisKelly et al.
Nature, vol. 340, 8/17/89, pp 525-530, Lewis et al.
UCRL--101583, 7/89, Chapline, pp 1-9.
The Wall Street Journal, 4/26/89, page B4, article by D. Stipp.
The Washington Post, 5/2/89, pp A1, A7, article by P. Hilts.
The Washington Post, 7/13/89, p A14.
Z Phys. A- Atomic Nuclei, col. 333, (1989) pp 319-320, Alber et al
ORNL/FTR--3341, 7/31/89, pp 2-15, Cooke.
J. Radioanal. Nucl. Chem., Letters, vol 137, No. 1, (8/21/89), pp 23-28, Horanyi.
Solid State Communications, Vol. 72, No. 4, (1989) pp 309-313, Hajdas et al.
J. Radioanal. Nucl. Chem., Letters, vol 137, No. 1, (8/21/89), pp 9-16, Faller et al.
Physical Review Letters, Vol. 62, No. 25, 6/19/89, pp 2929-2932, Ziegler et al.
Physical Review Letters, vol. 63, No. 18, 10/30/89, pp 1926-1929, Price et al.
Physical Letters B, vol. 228, No. 1, 9/7/89, pp 163-166, Cribier et al.
Solid State Communications, vol. 72, No. 1, (1989) pp 53-57, Shani et al.
The Washington Post, 3/29/90, p. A3.
Nature, vol. 344, 3/29/90, pp 401-405, Salamon et al.
Nature, vol. 338, (4/27/89), pp 737-740, Jones et al.
J. Electroanal. Chem., vol. 261, (4/10/89), pp 301-308, Fleischmann et al.
(8) New prior art.
No new prior art has been applied in this examiner's answer.
(9) Grounds of rejection.
*10 The following ground(s) of rejection are applicable to the appealed claims.
The following is a quotation of the first paragraph of 35 U.S.C. 112:
"The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention."
The specification is objected to under 35 U.S.C. 112, first paragraph, as failing to provide an adequate written description of the invention and as failing to adequately teach how to make and/or use the invention, i.e. failing to provide an enabling disclosure.
There is no reputable evidence of record to support any allegations or claims that the invention involves nuclear fusion nor, that any allegations or claims of "excess heat" due to nuclear and/or chemical reactions, are valid and reproducible, nor that the invention as disclosed is capable of operating as indicated and capable of providing a useful output.
The invention (see for example pages 1+ of the specification) is considered as being based on the "cold fusion" concept set forth by Fleischmann and Pons (hereinafter, F and P) (see the 3/24/89 article by D. Braaten). This concept relies on the incorporation of deuterium into a metal lattice.
However, as set forth more fully below, this "cold fusion" concept is still no more than just an unproven concept.
Subsequent to the announcement of the cold fusion concept by F and P, many laboratories have attempted to confirm the results of F and P.
The results of these attempts at confirmation were primarily negative and even of the few initial positive results, these were generally either retracted or shown to be in error by subsequent experimentors (see for example, the article by Stipp in the Wall Street Journal and the article by Browne in The New York Times (particularly page A22)).
The general consensus by those skilled in the art and working at these various laboratories is that the assertions by F and P were based on experimental errors (e.g. see The New York Times article by Browne, Kreysa et al, Lewis et al, Hilts, Horanyi, Ohashi et al, Miskelly et al, and Chapline).
It was also the general consensus by those skilled in the art and working at these various laboratories that there is no reputable evidence of neutron, gamma ray, tritium or helium production to support the allegation or claim that nuclear fusion is taking place, nor is there any reputable evidence to support the allegation or claim of excess heat production, in such cold fusion systems. See for example (in addition to the above listed references), page A14, of the 7/13/89 edition of The Washington Post, Cooke, Alber et al, Faller et al, Cribier et al, Albagli et al, Bosch et al, Fleming et al, Henderson et al, Rogers et al, Hajdas et al, Shani et al, Ziegler et al, Price et al, Schrieder et al and page A3 of the 3/29/90 edition of the Washington Post.
*11 The Broad article in the 3/17/91 issue of the New York Times indicates some of the data relied on by F and P as showing evidence of fusion was faulty
The Dagani article in the 1/14/91 issue of C & EN states that the "cold fusion" claims are taken seriously by virtually none of the scientific community and that research at Utah's National Cold Fusion Institute (NCFI) as well as research elsewhere, have failed to establish the existence of cold fusion. This Dagani article (in regard to the alleged existence of cold fusion) ends with the telling statement, "Unfortunately, it's not reproducible".
Clearly, if something cannot be reproduced at will, there is also then, no adequate nor enabling disclosure which would enable one of ordinary skill in the art; to make and use it, as required by the statute (35 USC 112).
Of particular interest is page A3 of the 3/29/90 edition of The Washington Post (which refers to the negative findings of a physicist who had tested Pon's own cold fusion apparatus, for nuclear output (for a more complete analysis of said "negative findings", note the article by Salamon et al)). Also of interest in this respect is the Cooke reference which on pages 4 and 5, refers to the attempts at Harwell to obtain "cold fusion" and that Fleishmann (of F and P) had requested help from Harwell in verifying the cold fusion claims.
The last paragraph on said page 5 states:
"After three months of around-the-clock work at a cost of over half a million dollars, the project was terminated on June 15. This program is believed to be one of the most comprehensive worldwide with as many as 30 cells operating at a time and over 100 different experiments performed. The final result of this monumental effort in the words of the official press release was, "In none of these experiments was there any evidence of fusion taking place under electrochemical conditions." It should be added that there was no evidence of excess heat generated by any of their cells". (Underlining added).
The specification appears to indicate that tests were run wherein a heavy water cell produced tritium and "excess heat".
However, these indications or allegations of the production of tritium and excess heat due to a nuclear reaction, are not sufficient to overcome the numerous teachings by skilled artisans, (set forth above by the examiner) that the allegations of the obtainment of nuclear reactions, etc., in an electrochemical cell are not reproducible or even obtainable. It is not seen wherein the specification discloses any particular structure, etc., which is unique to appellants system and which would make appellants cold fusion system operative whereas the systems disclosed in the above referenced "numerous teachings by skilled artisans", were not operative.
There is no adequate description nor enabling disclosure of the parameters of an operative embodiment of the invention, including exact composition of the electrolyte, composition, size and dimensions of the electrodes, the current strength, voltage etc.
*12 It is apparent from the specification that applicants' concept or theory involving a nuclear fusion system based on the electrolytic system of F and P, is workable or operative, only if the system of F and P, is already operative.
However, as set forth above, the examiner has presented evidence showing that in a cold fusion system based on that of F and P, the claims of nuclear fusion and/or excess heat are not reproducible or even obtainable. It consequently must follow that the claims of nuclear fusion and/or excess heat are not reproducible or even obtainable with appellants invention. While appellant may have set forth theoretical concepts, it is well known in the nuclear fusion field that theory and reality have a habit of not coinciding. There is no evidence to indicate appellant has so succeeded where others have failed, in arriving at an operative cold fusion system i.e. that he has progressed his system beyond the point of an unproven theory or concept which still requires an undue amount of experimentation to enable the artisan to make and use the inventive system for its indicated purpose. This view is also considered supported by the failure to set forth a full example of the specific parameters for an operative cold fusion system (said parameters including the size or dimension of the electrodes, the exact composition of the electrodes, the applied currents, the composition of the electrolyte, the voltage, etc.). One cannot rely on the skill in the art for the selection of the proper quantitative values to present an operative nuclear "cold fusion" system, since those in the art do not know what these values would be. See Bank v. Rauland Corp. 64 U.S.P.Q. 93; In re Corneil et al. 145 U.S.P.Q. 697,
To reiterate briefly, the examiner has presented evidence, that neither the situation of nuclear fusion nor of "excess" heat, can reasonably be expected to be reproducible or even obtainable with the present invention.
There is no reputable evidence of record that would overcome the experimental showings in the above listed references, disproving this concept of "cold fusion".
Again, there is no evidence to indicate appellant has so succeeded where others have failed, in arriving at an operative system that produces nuclear fusion or even "excess" heat, i.e. that he has progressed his system beyond the point of an unproven theory or concept which still requires an undue amount of experimentation to enable the artisan to make and use the invention for its indicated purpose.
It is thus considered that the examiner (for the reasons set forth above) has set forth a reasonable and sufficient basis for challenging the adequacy of the disclosure. The statute requires the application itself to inform, not to direct others to find out for themselves; In re Gardner et al, 166 USPQ 138, In re Scarbrough, 182 USPQ 298. Note that the disclosure must enable a person skilled in the art, to practice the invention without having to design structure not shown to be readily available in the art; In re Hirsch, 131 USPQ 198.
*13 Claims 1-5 are rejected under 35 U.S.C. 112, first paragraph, for the reasons set forth in the objection to the specification.
35 U.S.C. 101 reads as follows:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title".
Claims 1-5 are rejected under 35 U.S.C. 101 because the invention as disclosed is inoperative and therefore lacks utility.
The reasons that the invention as disclosed is inoperative are the same as the reasons set forth above as to why the specification is objected to and the reasons set forth above are accordingly incorporated herein.
There is no reputable evidence of record to indicate the invention has been reduced to the point of providing in current available form, an operative cold fusion system. The invention is not considered as meeting the requirements of 35 USC 101 in being "useful". Note in this respect, page A14 of the 7/13/89 edition of The Washington Post which indicates that there is no convincing evidence that the "phenomena attributed to cold fusion would produce useful sources of energy".
Appellant at best, has set forth what may be considered a concept or an object of scientific research. However, it has been held such that does not present a utility within the meaning of 35 U.S.C. 101. See Brenner v. Manson 148 U.S.P.Q. 689.
Additionally, it is well established that where as here, the utility of the claimed invention is based upon allegations that border on the incredible or allegations that would not be readily accepted by a substantial portion of the scientific community, sufficient substantiating evidence of operability must be submitted by the applicant. Note In re Houghton, 167 USPQ 687 (CCPA1970); In re Ferens 163 USPQ 609 (CCPA 19690); Puharich v. Brenner, 162 USPQ 136 (CADC1969); In re Pottier, 153 USPQ 407 (CCPA1967); In re Ruskin, 148 USPQ 221 (CCPA1966); In re Irons, 144 USPQ 351 (CCPA1965); In re Citron 139 USPQ 516 (CCPA1963); and In re Novak, 134 USPQ 335 (CCPA1962).
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
"A person shall be entitled to a patent unless--
*14 (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent."
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Subject matter developed by another person, which qualifies as prior art only under subsection (f) and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
Claims 1-4 are rejected under 35 U.S.C. § 102(a) as being clearly anticipated by Jones et al.
Jones et al show a system for obtaining nuclear fusion reactions in an electrochemical system having a palladium cathode and an anode immersed in an electrolyte (note the second column on page 737 and the first column on page 739). The electrolyte contains D2O and sulfuric acid (note the second column on page 738). Page 737 refers to three conventionally known nuclear fusion reactions (identified therein as reactions (1), (2a) and (2b)). Reactions (2a) and (2b) are conventionally considered as occuring at approximately the same rate. While Jones et al utilizer the symbol p for proton, d for deuteron or deuterium and t for tritium, appellant utilizes the symbols 1H, 2H and 3H, respectively.
While it is conventionally known in the art (as shown for example by page 737 of Jones et al) that 2H and 1H combine to form 3He, rather than 3H as appellant's claim 1 implies, it is noted that appellant has presented no reputable evidence to show that in his system 2H and 1H specifically combine to produce 3H nor is appellant arguing that this reaction defines his claims over Jones et al.
Instead, appellant argues that his claims define over Jones et al in that energy is not produced in the nuclear reactions of Jones et al. The examiner does not agree.
In this respect, the examiner on pages 5 and 6 of the 5/28/91 final rejection, had made the following statement.
"First, it is pointed out that the claims do not recite the producing of a particular amount or degree of energy. Thus, the claims read on any amount of heat or energy being produced in Jones et al. Jones et al state that nuclear fusion reactions are taking place and in the first column on page 737, Jones et al show that these nuclear fusion reactions are energy producing reactions rather than energy consuming reactions. Applicants claims read on the obtainment of these nuclear fusion, energy producing reactions in Jones et al."
*15 Appellant has not taken issue with the above statement or shown it to be in error. Note that the reactions (1), (2a), (2b) on said page 737 of Jones et al, indicate the amount of energy produced.
Second, since Jones et al show the same structure as that recited in appellants claims and because it is acted or operated in the same manner as in appellants case (i.e. a voltage is applied between a palladium cathode and an anode immersed in an electrolyte which includes heavy water and sulfuric acid), the system of Jones et al must inherently function in the same manner as appellant's system and, produce the same results.
It is noteworthy that appellant does not argue that the structure recited in his claims differs from that of Jones et al. Instead, appellant argues that Jones et al do not show his particular disclosed electrolyte composition of 20 ml. of heavy water and 3.5 ml of concentrated sulfuric acid (which is disclosed in his specification but not recited in his claims).
Such arguments however, are clearly not commensurate in scope with the subject matter recited in the claims. Arguments not commensurate in scope with the claims are not convincing of the patentability of the subject matter that is recited in the claims. Moreover, arguments directed to elements and arrangements not recited in the claims do not thereby incorporate the elements and arrangements into the claims.
The primary reference shows an electrolysis system and method substantially as claimed except that the electrolyte is an alkali water solution rather than a sulfuric acid water solution.
However, it is conventionally known in water electrolysis systems that the electrolyte solution can be either alkali or acidic (such as by using sulfuric acid). As evidence that these two solutions are known alternatives, resort may be led to the teachings thereof in either von Sturm (note col. 2 lines 63+) or Spengler et al (note col. 2 lines 53+).
Accordingly, it would have been prima facie obvious to have utilized a sulfuric acid solution rather than an alkali solution in the primary reference, in view of the above referenced teachings that such are conventionally known alternatives.
Note that claims 4 does not actually require the recombining of gases produced by electrolysis. Claim 4 only requires a space above the electrolyte in which such recombining could take place. It is a conventional expedient in this art (and hence obvious) to provide a space above the electrolyte.
Appellants arguments are unpersuasive as appellant has not shown that the manner in which the examiner combined the teachings of the references, is improper or in error.
Note that all three references are to electrolysis systems wherein hydrogen and oxygen are generated by electrolytic action. The secondary references each clearly show that in such electrolysis systems, an acidic electrolyte is a conventionally known alternative to an alkali electrolyte.
*16 Appellant on page 11 of of the brief argues that claims 2 and 3 are separately patentable because they recite the electrolyte as including sulfuric acid. However, the above quoted portions of the secondary references (i.e. col. 2 lines 63+ of von Sturm and col. 2 lines 53+ of Spengler et al) specifically refer to the use of sulfuric acid in the electrolyte.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al in view of any of George et al, Edison, Jensen or Klein et al.
Jones et al as discussed above, show an electrolysis system that is alleged to produce nuclear fusion.
It is conventionally known that the electrolysis system of Jones et al will produce hydrogen and oxygen gases in the space above the heavy water electrolyte. It is also conventionally known to be advantageous in such electrolysis systems to provide a catalyst above the electrolyte for effecting the recombining of the hydrogen and oxygen. It would accordingly have been prima facie obvious to have provided above the electrolyte in Jones et al, a catalyst for effecting the recombination of hydrogen and oxygen as such is a conventional technique in the art.
If necessary, resort may be had to the teachings of any of the secondary references for a showing that it is old and advantageous (and hence obvious) to include a catalyst in a closed container for effecting the recombination of hydrogen and oxygen gases (e.g. note the abstracts of Jensen, George et al, and Klein et al; and page 1 lines 20+ and page 2 lines 13+ of Edison).
Appellants arguments are unpersuasive. Appellant has not shown that the manner in which the examiner combined the teachings of the references, is improper or in error.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Fleischmann et al in view of either von Sturm or Spengler et al as applied to claims 1-4 above, and further in view of any of George et al, Edison, Jensen or Klein et al.
It is conventionally known that the electrolysis system of Fleischmann et al will produce hydrogen and oxygen gases in the space above the heavy water electrolyte. It is also conventionally known to be advantageous in such electrolysis systems to provide a catalyst above the electrolyte for effecting the recombining of the hydrogen and oxygen. It would accordingly have been prima facie obvious to have provided above the electrolyte in Fleischman et al, a catalyst for effecting the recombination of hydrogen and oxygen as such is a conventional technique in the art.
If necessary, resort may be had to the teachings of any of Jensen, Klein et al, Edison or George et al, for a showing that it is old and advantageous (and hence obvious) to include a catalyst in a closed container for effecting the recombination of hydrogen and oxygen gases (e.g. note the abstracts of Jensen, George et al, Klein et al and; pages 1 lines 29+ and page 2 lines 13+ of Edison).
*17 Appellant's arguments are unpersuasive. Appellant has not shown that the manner in which the examiner combined the teachings of the references is improper or in error.
(10) New ground of rejection.
This Examiner's Answer does not contain any new ground of rejection.
(11) Response to argument.
In regard to appellant's arguments concerning the objections to the disclosure and the rejection under 35 USC 112 first paragraph, the examiner does not agree that the result of F and P have been confirmed.
Appellant has not presented any reputable factual evidence to show that the examiner's reasons for holding appellants' disclosure to be insufficient and non-enabling, were improper or in error.
The two articles relied on by appellant on page 5 of the brief (and attached as an appendix to the brief) are insufficient in this regard. For example, it is stated in "The New York Times National" that the team of Dr. Mayer and Dr. Reitz have done no experiments themselves and instead, are relying on their theory. Clearly however, a "theory" is not sufficient to overcome the numerous negative experimental results in the documents cited by the examiner, concerning the obtainment of nuclear fusion reactions in an electrolytic system. Dr. Mills of the other team referred to in said "The New York Times National" alleges that a chemical reaction rather than a nuclear reaction is taking place (such reference to a chemical reaction clearly cannot provide support for appellants disclosure and claims that a nuclear reaction is taking place in the Pd cathode). The New York Times article (which is the other article relied on by appellant in his brief) does not categorically state that the existence of nuclear fusion in an electrolysis system has been confirmed and that the result is reproducible. Note for example, the second to the last paragraph in said article which states:
"Despite the activity, skepticism remains strong. Dr. Robert K. Adair, a Yale physicist who was on a panel that met with Dr. Pons last November and reviewed copious amounts of cold-fusion data, recently declared that "no result was convincing." Some experts have questioned the recent results from the Naval Weapons Center, saying they could be marred by contamination."
Said article in The New York Times also refers to a new book by Dr. Frank Close, "Too Hot to Handle", which the article states, charges that crucial evidence in the original claim of nuclear fusion was so skewed as to be "invented".
Note particularly that appellants claims imply the presence of a p + d nuclear fusion reaction and that the examiner has cited documents showing no evidence of the occurrence in an electrolytic cell, of this particular nuclear fusion reaction (e.g. note Henderson et al (pp 475-477), Salamon et al (the second column on page 404), Alber et al (the first column on page 319), and Lewis et al (the second column on page 526).
*18 Note also that Lewis et al in table 1 on page 526 refers to the amount of energy released in various known nuclear fusion reactions.
Note particularly that Kreysa et al found no evidence of nuclear fusion in a system having an electrolyte of heavy water and sulfuric acid (which is the same electrolyte utilized by appellant (e.g. see pages 438 and 441 of Kreysa et al)).
Alber et al also found negative results using the "Jones et al" system (wherein the electrolyte included sulfuric acid, e.g. note the paragraph bridging pages 319 and 320).
Accordingly, it is the examiner's position that the documents relied on by the examiner (in the objection to the specification under 35 USC 112 first paragraph) provide irrefutable evidence of the inoperability of a "cold fusion" system of the type set forth by F and P (as well as appellant's system) and, appellant has not shown this evidence to be in error.
Note that these documents cited by the examiner show how experimental data, etc., can be misinterpreted as providing evidence of the operability of cold fusion systems.
Note particularly that appellant is relying on the production of tritium as evidence of nuclear fusion taking place in his system. However, the test data on page 6 of appellants specification is incomplete and inconclusive. For example, there is no identification of why one would obtain different counts from different samples from the same cell electrolyte. Further and even more importantly, no showing has been made that the increase in tritium does not arise from non-nuclear reactions, such as the isotope separation factor of deuterium/tritium upon electrolysis or, that the alleged increase in tritium arises from scintillation-cocktail chemiluminescence of unneutralized basic solutions.
Note that even though this issue of the incompleteness and inconclusiveness of appellant's test data was previous pointed out to appellant on pages 2 and 3 of the 5/28/91 Office action, appellant has not commented thereon.
Note in this same respect that the examiner had already cited documents showing that the alleged increase in tritium in the electrolyte, can not properly be relied on as evidence of nuclear reactions taking place (e.g. see page 528 of Lewis et al; pages 438, 448, 449 of Kreysa et al; Stipp; and page 12 of Faller et al). Appellant (even in his brief) has failed to comment on the above referenced teachings of any of these documents. Absent reputable evidence to the contrary, the showings in the above referenced documents are presumed correct and appellants' results on page 6 of the specification are not evidence of nuclear reactions taking place.
As further evidence that tritium measurements (such as those of appellant) can not be relied on as evidence of nuclear reactions, resort may be had to the teachings in Schreider et al, Albagli et al (note page 137), in Rogers et al (note the paragraph bridging pages 484, 485), in Bosch et al (note pages 182- 184), and in Henderson et al (note page 476).
*19 In addition to documents showings no evidence of tritium in "cold fusion" experiments, the examiner had cited documents showing no evidence of "excess heat" in "cold fusion" experiments (see for example, Browne, Kreysa et al, Ohashi et al, Miskelly et al, Lewis et al, Stipp, Cooke, Salmon et al, Albagli et al, Fleming et al, and Bosch et al). Again, appellant has not directed commented on the teachings set forth in said documents nor has he shown how or wherein the publications he is relying on, have overcome the problems of false readings or misinterpretation of instrument readings, etc., discussed in these documents.
In addition to documents showing no evidence of tritium or "excess heat" in "cold fusion" experiments, the examiner had also cited documents showing no evidence of neutrons in "cold fusion" experiments and also, showing various way in which the detectors could give readings which other experimenters have misinterpreted as being evidence of cold fusion taking place (see for example, Kreysa et al, Lewis et al, Hilts, Alber et al, Faller et al, Browne, Hajdas et al, Schreider et al, Salamon et al, Cribier et al, Shani et al, Albagli et al, Bosch et al, Broad, Henderson et al and Rogers et al). Appellant has not directly commented on the teachings set forth in said documents nor had he shown how or wherein the publications he is relying on, have overcome the problems of false readings or misinterpretation of instrument readings, etc., discussed in these documents.
In regard to the arguments concerning the rejection under 35 USC 101 (see page 8 of the brief) the examiner's position is that the invention as disclosed is inoperative and therefore lacks utility. The above discussion of appellant's arguments concerning the objection to the specification under 35 112 first paragraph, is also pertinent here and is incorporated herein.
Note that the examiner has relied on documents as setting forth experimental evidence that the utility of the claimed invention is based upon allegations that border on the incredible or allegations that would not be readily accepted by a substantial portion of the scientific community, and, has set forth case law in support thereof. As already discussed above, appellant has not present sufficient substantiating evidence of operability to overcome the evidence relied on by the examiner.
For the above reasons, it is believed that the rejections should be sustained.
HARVEY E. BEHREND