Alpha Ring International, Ltd.

Patent Trials and Appeals Board

Feb 2, 2022

2021005551 (P.T.A.B. Feb. 2, 2022)

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. 16/611,828 11/07/2019 Alfred Y. Wong 2687-0010US12 8456 137713 7590 02/02/2022 Potomac Law Group, PLLC 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER WASIL, DANIEL D ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): eofficeaction@appcoll.com patents@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALFRED Y. WONG Appeal 2021-005551 Application 16/611,828 Technology Center 3600 Before BRETT C. MARTIN, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-4, 6, 8, 9, 11-20, 23, 24, 28, 30-33, 39, and 43-46. Claims 5, 7, 10, 21, 22, 25, 26, 29, 34-38, and 40-42 were canceled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Alpha Ring International, Ltd. Appeal Br. 1. Appeal 2021-005551 Application 16/611,828 2 CLAIMED SUBJECT MATTER The claims are directed “to inter-nuclear reactions and reactors for initiating and maintaining these reactions.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus comprising: a confining wall having a substantially cylindrical inner surface that has an axis, wherein the confining wall at least partially encloses a confinement region; a plurality of electrodes azimuthally distributed along the confining wall; an inlet to the confinement region for permitting introduction of neutrals to the confinement region; a control system comprising a voltage and/or current source configured to sequentially apply one or more potentials to each of the plurality of electrodes to thereby induce and/or maintain rotational movement of ions and the neutrals in the confinement region; and a reactant attached to or embedded in the confining wall such that, during operation, repeated collisions between the neutrals and the reactant produce an interaction with the reactant that gives off energy and produces a product having a nuclear mass that is different from a nuclear mass of any of the nuclei of the neutrals and the reactant. REJECTIONS Claim 39 stands rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 2. Claims 1-4, 6, 8, 9, 11-20, 23, 24, 28, 30-33, 39, and 43-46 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. Ans. 3. Claims 1-4, 6, 8, 9, 11-20, 23, 24, 28, 30-33, 39, and 43-46 stand rejected under 35 U.S.C. § 101 as being inoperative and therefore lacking utility. Id. Appeal 2021-005551 Application 16/611,828 3 OPINION Indefiniteness Appellant does not dispute the Examiner’s rejection and states that the issue can be resolved via amendment during continued prosecution. Appeal Br. 10. As such, we summarily affirm this rejection. The Utility and Enablement Rejections The Examiner, finding that the claimed subject matter is directed to low energy/temperature nuclear fusion, rejected the claims under Section 101 as being directed to an invention that is inoperative and therefore lacks utility. Final Act. 3. For the same reasons, the Examiner rejected those claims under Section 112(a), as failing to comply with the enablement requirement. Id. 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 3-6. See also, Non-final Act. 2-5. “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 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 Appeal 2021-005551 Application 16/611,828 4 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 directed to an apparatus that via nuclear fusion “gives off energy and produces a product having a nuclear mass that is different from a nuclear mass of any of the nuclei of the neutrals and the reactant.” Final Act. 3 (citing claim 1) The Examiner has provided several references demonstrating that the purportedly positive results of cold fusion experiments are not reproducible. See, e.g., Non-final Act. 3. As such, we determine that the Examiner has established a reasonable basis for questioning the truth of Appellant’s stated Appeal 2021-005551 Application 16/611,828 5 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.) Similar to the case in Swartz II, Appellant takes two different and inconsistent positions on this issue: that “the claimed invention does not claim performing nuclear fusion at any specified temperature,” (Appeal Br. 6); and also that the Specification discloses that Applicant has succeeded, where others have failed, in demonstrating how to reproducibly make cold fusion. See, e.g., Appeal Br. 7. Appellant’s arguments that the invention does not involve cold fusion are essentially that the present “claims do not require the production of net energy” and that “the invention still would be useful under 35 U.S.C. § 101 as a source of helium.” Reply Br. 3. The Examiner, however, “contends that the specification does not teach the skilled artisan how to make and use the full scope of the claimed invention…because the full scope of the claimed invention allows for a (cold) fusion reaction that occurs at an unreasonably low energy/temperature of 0.15 eV.” Ans. 4. As the Examiner states, “Federal Circuit precedent has shown that claims which are broad enough to encompass significant non-enabled subject matter will be found non-enabled.” Id. (citing Sitrick v. Dreamworks, LLC, 516 F.3d 993, 997-1000 (Fed. Cir. 2008), and Automotive Technologies Intern., Appeal 2021-005551 Application 16/611,828 6 Inc. v. BMW of North America, Inc., 501 F.3d 1274, 1285 (Fed. Cir. 007)). Appellant essentially admits this fact by stating that, “Appellant could simply delete paragraph [0107] giving an example of electron temperature, as such is merely an observation and not a manufacturing instruction” and that “[d]oing so would remove the only bases for the examiner’s contention without altering the scope of the disclosure in any way.” Reply Br. 2. As such, it is clear that Appellant believes that the disclosure supports cold fusion. Appellant also does not propose any amendments to the claims to coincide with the proposed deleted written description, and as such it appears that the claimed invention is alleged to be capable of achieving cold fusion even if it is not specifically claimed. Thus, the Examiner is correct in rejecting the claims as being broad enough to encompass significant non- enabled subject matter. 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. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 39 112 Indefiniteness 39 1-4, 6, 8, 9, 11-20, 23, 24, 28, 30- 112 Enablement 1-4, 6, 8, 9, 11-20, 23, 24, 28, 30- Appeal 2021-005551 Application 16/611,828 7 33, 39, 43- 46 33, 39, 43- 46 1-4, 6, 8, 9, 11-20, 23, 24, 28, 30- 33, 39, 43- 46 101 Utility 1-4, 6, 8, 9, 11-20, 23, 24, 28, 30- 33, 39, 43- 46 Overall Outcome 1-4, 6, 8, 9, 11-20, 23, 24, 28, 30- 33, 39, 43- 46 TIME PERIOD FOR RESPONSE 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