Ex Parte Santilli

Patent Trial and Appeal Board

Sep 28, 2018

13197836 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/197,836 08/04/2011
75394 7590 10/02/2018
THE BREVETTO LAW GROUP, PLLC
P.O. Box 808
QUINCY, IL 62306-0808
FIRST NAMED INVENTOR
Ruggero Maria Santilli
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
TEC-0101 6604
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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@patent-counsel.com
scr@patent-counsel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUGGERO MARIA SANTILLI
Appeal 2018-001159
Application 13/197,836
Technology Center 3600
Before STEVEN D.A. MCCARTHY, ANNETTE R. REIMERS, and
JILL D. HILL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ruggero Maria Santilli (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 21--45. Claims 1-20 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2018-001159
Application 13/197,836
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to the field of producing usable
heat and more particularly to a system for producing usable heat without the
emission of harmful radiation or the production of radioactive waste." Spec.
1: 12-15, Fig. 1. Claims 21, 31, and 44 are independent. Claim 21,
reproduced below, illustrates the claimed subject matter:
21. A method of exposing nuclei of light, natural and
stable elements, the method comprising:
toroidal polarizing of electron clouds of two light, natural
and stable elements;
exposing both of the two light, natural and stable
elements to large magnetic fields of sufficient strength to align
the spins of the nuclei of each of the two light, natural and
stable elements in a parallel and axial direction; and
compressing the nuclei of a first of the two light, natural
and stable elements against the nuclei of a second of the two
light, natural and stable elements, the compressing having an
energy with a sufficient value as to release heat, but the energy
having an insufficient value as to produce neutron radiation or
radioactive waste.
2
Appeal 2018-001159
Application 13/197,836
REJECTIONS 1,2
I. Claims 21--45 stand rejected under 35 U.S.C. § 101 as inoperable.
II. Claims 21--45 stand rejected under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
III. Claims 21--45 rejected under 35 U.S.C. § 112, second paragraph,
for indefiniteness.
IV. Claims 31 and 44 stand rejected under 35 U.S.C. § I02(e) as
anticipated by Wessel (US 2011/0182392 Al, published July 28,
2011).
Appellant presents additional evidence in ( 1) the Declaration of Appellant,
Ruggero Maria Santilli, the "Santilli Declaration" filed under 3 7 C.F .R.
§ 1.132 on April 4, 2012; and (2) Robert Brenna et al., Verification of
Intermediate Nuclear Fusions without Harmful Radiation and the Production
of Magnecular Clusters, 5 New Advances in Physics 9-17 (2011). See
Supplemental Appeal Brief 32, Evidence App. (hereinafter "Appeal Br.")
(filed Aug. 21, 2017).
1 See Examiner's Answer 2 (hereinafter "Ans.") (dated Oct. 11, 2017).
2 We note that Appellant presents arguments regarding the subject application
being "improperly subjected to inequitable examination standards under the
SAWS program." See Appeal Br. 7-9; see also Reply Br. 8-10. Recourse is
available by way of petition, in that matters involving inequitable examination
standards are not within the jurisdiction of the Board. Accordingly, these
arguments are not before us for review.
3
Appeal 2018-001159
Application 13/197,836
ANALYSIS
Operability Rejection
Independent claim 21 recites the step of "toroidal polarizing of
electron clouds of two light, natural and stable elements." Appeal Br. 24,
Claims App. Appellant discloses and claims forming toroidal polarization of
electron clouds of two light, natural and stable elements in each of
independent claims 21, 31, and 44. See id. at 24, 26, 29, Claims App.
The Examiner determines that claims 21--45 are inoperable. In
particular, the Examiner determines that the "[S]pecification fails to provide
evaluated, experimental data demonstrating that the asserted utility of
useable heat has been achieved." Final Act. 8; see also id. at 6-7. 3
According to the Examiner, "[t]his is quite remarkable, because of the non-
established nature of [Appellant's] claims as far as the scientific peer
community is concerned. But it is especially so in view of the extraordinary
nature of the asserted utility: extraordinary assertions require solid evidence,
while [Appellant] has presented none." Final Act. 8. In summary, the
Examiner determines that the subject invention is inoperable because (1) "it
operates in a temperature regime many times below the known threshold for
nuclear fusion"; (2) "it purports to 'toroidally polarize' electrons in a way
that violates the basic [tenets] of quantum mechanics"; and (3) "in view of
the prolix submissions, not a single reference can verify operation in a
credible manner." Ans. 6.
3 Final Office Action (hereinafter "Final Act.") (dated Sept. 19, 2016).
4
Appeal 2018-001159
Application 13/197,836
In response, Appellant does not appear to provide any scientific
evidence for forming toroidal polarization of electron clouds of two light,
natural and stable elements. See Appeal Br. 10-14; see also Reply Br. 11-
16. 4 Rather than providing scientific evidence to show forming toroidal
polarization of electron clouds, Appellant discusses the two prong utility
test. See Appeal Br. 10-16; see also Reply Br. 11-16. We acknowledge
Appellant's contention that "[t]he claimed invention produces heat. Heat is
useful, and thus has utility." Appeal Br. 11; see also id. at 16 ("[T]he
method proscribed in claim 21 and the apparatus defined in claim 44
produces some heat------that is, the claimed invention is capable of
performing some beneficial function."); see also Reply Br. 12, 25.
However, producing heat relies and heavily hinges on the theory of "toroidal
polarization." We further acknowledge Appellant's contention that "the
[S]pecification does contain experimental data" and that Appellant "filed a
signed affidavit and copies of experimental data from tests performed by an
independent laboratory." See Appeal Br. 11-12; see also Reply Br. 12-13.
However, neither the experimental data discussed in the Specification nor
the experimental data provided in Appellant's affidavit persuasively
confirms the theory of toroidal polarization of electron clouds. See Spec.
37:18--43:3; see also the Santilli Declaration.
Appellant also presents additional references to verify/prove the
forming of toroidal polarization of electron clouds (see Reply Br. 18, 21 );
however, we do not find scientific evidence to show forming toroidal
polarization of electron clouds in these references as well. Further, the
4 Reply Brief (hereinafter "Reply Br.") (filed Nov. 12, 2017).
5
Appeal 2018-001159
Application 13/197,836
Examiner correctly points out that "[ n Jone of the references [ cited by
Appellant] include[s] a published, peer-reviewed evaluation of the theory or
the [ cold fusion] device." See Ans. 2-3; see also id. at 6.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claims 21--45 under 35 U.S.C. § 101 as inoperable.
Enablement Rejection
When rejecting a claim for lack of enablement, "the [United States
Patent and Trademark Office] bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the description of the
invention provided in the specification of the application .... " In re Wright,
999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d
220, 223-24 (CCPA 1971)). The test for compliance with the enablement
requirement is whether the disclosure, as filed, is sufficiently complete to
enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988). Some experimentation, even a considerable amount, is not "undue"
if, e.g., it is merely routine, or if the specification provides a reasonable
amount of guidance as to the direction in which the experimentation should
proceed. Id. The "undue experimentation" analysis involves the
consideration of several factors, including: ( 1) the quantity of
experimentation; (2) the amount of direction or guidance presented; (3) the
presence or absence of working examples; (4) the nature of the invention;
( 5) the state of the prior art; ( 6) the relative skill of those in the art; (7) the
predictability or unpredictability of the art; and (8) the breadth of the claims.
Wands, 858 F.2d at 737.
6
Appeal 2018-001159
Application 13/197,836
As an initial matter, we disagree with Appellant that "none of [the
Wands] factors are discussed or considered" in the Examiner's enablement
rejection. See Appeal Br. 17; see also Reply Br. 26. To the contrary, the
Examiner determines that Appellant has failed to provide a disclosure of the
invention which would enable one of ordinary skill in the art to make and/or
use the invention without undue experimentation by stating the following:
Undue experimentation would be needed to practice the
invention: because the nature of the invention, the goal of
fusion energy pursued for over half a century through worldwide
collaborative research, applicant's allegation as disclosed, of
useable heat, requires extraordinarily detailed evidence while in
contrast no evidence has been provided at all. The state of the
art demonstrates the severe shortcoming in this regard because
to date there is no useable heat through fusion reactions from any
device as a utility of the device. Moreover, conditions similar to
those described vaguely in the specification must be interpreted
to mean that there is a preponderance of evidence against the
emergence of useable heat under physical conditions similar to
those alleged to lead to [Appellant's] useable heat from nuclear
fusion, as witnessed, for instance, by Golberg et al.
Consequently, the level of skill required to practice the invention
appear to far exceed, and a fortiori to be well above the level of
ordinary skill in the art of nuclear fusion. Because of the above-
mentioned paucity of description of experimental conditions the
breadth of the claims are inadequate given the enormous task
to practice the invention for the asserted utility. Since no further
directions by [Appellant] are provided and no detailed
working examples are included in the specification, the level of
predictability of the results of carrying out the method steps of
the invention are to be deemed extremely poor. For the above
reasons, the pertinent factors (In re Wands, 858 F.2d at 737, 8
U.S.P.Q. 2d at 1404 (Fed. Cir. 1988) in establishing the need for
undue experimentation, appear amply satisfied (See MPEP
2164.01 (a)).
Final Act. 6, 11-12 (emphasis added).
7
Appeal 2018-001159
Application 13/197,836
Appellant does not present persuasive arguments or evidence that
suggests any error in these findings pertaining to the Wands factors. See
Appeal Br. 14--19; see also Reply Br. 18-20, 26-28. Appellant contends
that Figures 6-13 of the subject invention "provide detailed drawings of
apparatus for practicing various embodiments of the present invention" and
that pages 33 to 67 of the Specification "disclose text descriptions of the
apparatus and explanations for their use and for carrying out the various
method embodiments of the invention." Appeal Br. 14; see also Reply Br.
19. However, the Specification and/or Figures provide(s) no working
examples of detailed experimental data, with error analysis, showing useable
energy production. See Final Act. 9. Further, the Specification is silent as to
how toroidal polarization occurs. Stated differently, Appellant fails to
provide any scientific evidence, e.g., a published, peer-reviewed evaluation,
in the Specification or as a secondary consideration of forming toroidal
polarization of electron clouds. See Ans. 2-3, 6.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claims 21--45 under 35 U.S.C. § 112, first paragraph, for lack of
enablement.
Specification Objection
The Examiner also appears to have objected to the Specification for
lack of utility and enablement. See Final Act. 6-12; see also Appeal Br. 7;
Reply Br. 8, 10. Ordinarily, an objection is reviewable by petition under
3 7 C.F .R. § 1.181 and a rejection is appealable to the Patent Trial and
Appeal Board. In this case, to the extent that the objection to the
Specification in the Final Office Action turns on the same issue( s) as the
8
Appeal 2018-001159
Application 13/197,836
rejections under 35 U.S.C. § 101 and 35 U.S.C. § 112, first paragraph, our
decision with respect to the rejections is dispositive as to the corresponding
objection.
Indefiniteness Rejection
The Examiner rejects claims 21--45 as indefinite by merely stating that
"[t]he metes and bounds of the claimed invention are vague and ill-defined
due to inadequate written support, with reference to the rejections under
35 U.S.C. 112, 1st par., as set forth above, whereby the claims are rendered
indefinite." Final Act. 13-14. We agree with Appellant that the Examiner
fails to "identif[y] any particular claim element as being rejected under
35 U.S.C. § 112, second paragraph." Reply Br. 30; see also id. at 29; Appeal
Br. 20; Ans. 7.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 21--45 under 35 U.S.C. § 112, second
paragraph, for indefiniteness.
Anticipation Rejection
The Examiner rejects claims 31 and 44 as anticipated by Wessel and
finds the following:
[Wessel] disclose[s] an invention that meets the claim language:
aneutronic fusion in an ultra-high (> 10 MG) macroscopic
magnetic field produced by 17 MA (17,000,000 A) ([0023]) an
to which atoms participating in a nuclear fusion reaction are
exposed, within a pressurized chamber (Z-pinch chamber 10:
[0023]), hence meeting all limitations of claim [31]; and the
method by [Wessel] includes a step of providing a trigger forcing
the fusion process, namely: adiabatic compression ([0023]). See
9
Appeal 2018-001159
Application 13/197,836
paragraphs [0023]-[0031]. Regarding claim 44, the claimed
"electrodes" are met by the "discharge electrodes" ([0072]), the
Z-pinch power is pulsed and applied to the electrodes; the step of
filling the pressure chamber with gas is met by the filling
comprising Xe gas (see [0022]); the switched source is inherent
in the pulsed power operation of the Z-pinch (see abstract and
Figure 1; for further details of the equipment see Figures 13-14
and their discussion).
Final Act. 14--15.
To anticipate a claim, a reference must disclose, expressly or
inherently, every element of the claim. See Verdegaal Bros., Inc. v. Union
Oil Co. of Cal., 814 F .2d 628, 631 (Fed. Cir. 1987). In this case, we agree
with Appellant that the Examiner fails to address every limitation of claims
31 and 44 and fails to respond to Appellant's contentions regarding Wessel' s
failure to disclose particular limitations of claims 31 and 44. See Appeal Br.
20-22; see also id. at 26, 29, Claims App.; Reply Br. 30-34; Final Act. 14--
15; Ans. 7-8; Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997)
(the PTO must create a record that includes "specific fact findings for each
contested limitation and satisfactory explanations for such findings.").
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 31 and 44 under 35 U.S.C. § 102(e) as
anticipated by Wessel.
DECISION
We AFFIRM the decision of the Examiner to reject claims 21--45
under 35 U.S.C. § 101 as inoperable.
We AFFIRM the decision of the Examiner to reject claims 21--45
under 35 U.S.C. § 112, first paragraph, for lack of enablement.
10
Appeal 2018-001159
Application 13/197,836
We REVERSE the decision of the Examiner to reject claims 21--45
under 35 U.S.C. § 112, second paragraph, for indefiniteness.
We REVERSE the decision of the Examiner to reject claims 31 and
44 under 35 U.S.C. § 102(e) as anticipated by Wessel.
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.
§ 1.13 6( a )(l)(iv ).
AFFIRMED
11