Alpha Ring International, Ltd.

Patent Trials and Appeals Board

Jan 26, 2022

2021005553 (P.T.A.B. Jan. 26, 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. 15/973,439 05/07/2018 Alfred Y. Wong 2687-0019US03 9476 137713 7590 01/26/2022 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 01/26/2022 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 2021-005553 Application 15/973,439 Technology Center 3600 ____________ Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 3, and 5-34. 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. Appellant identifies the real party in interest as Alpha Ring International, Ltd. (Appeal Br. 1.) Appeal 2021-005553 Application 15/973,439 2 CLAIMED SUBJECT MATTER Appellant’s invention “relates to inter-nuclear reactions and reactors for initiating and maintaining these reactions.” (Spec. ¶ 3.) Claim 1 is the sole independent claim on appeal. It recites:2 1. An apparatus for producing helium-3, the apparatus comprising: a reactor comprising: a substantially confining wall that has a longitudinal axis and at least partially enclosing a confinement region within which charged particles can rotate, a plurality of electrodes adjacent or proximate to the confinement region, an inlet to the confinement region for permitting introduction of a fluid to the confinement region, the fluid containing a first reactant, a second reactant, and an electron emitter disposed in or adjacent to the confinement region such that, during operation, the electron emitter generates electrons in the confinement region; and a control system comprising one or both of a voltage source and a current source and configured to apply an electric potential between at least two of the plurality of electrodes that generates both an electric field and an electrical current between the at least two electrodes, wherein: the electrical current generates, from the first reactant, an ionized plasma of ions and neutrals; the generated electrons from said electron emitter form a high density thin layer of electrons which creates a negative electric potential between adjacent fusion reactant nuclei, thereby decreasing the positive Coulomb barrier between the positive nuclei of the first and second reactants; 2 The paragraphing of claim 1 shown in the Appendix to the Appeal Brief (Appeal Br. 11), differs from the paragraphing of claim 1 as entered by the Examiner. We use the paragraphing in accordance with claim 1 as entered. Appeal 2021-005553 Application 15/973,439 3 the electric field, alone or in conjunction with a magnetic field, induces or maintains azimuthal rotation of the ions in the confinement region around the longitudinal axis, the azimuthal rotation of the ions configured to (i) impart azimuthal rotation to neutrals of the first reactant, and (ii) promote repeated collisions between one or both of the ions and the neutrals with the second reactant; and during operation repeated collisions produce an interaction with the second reactant that produces a product having a nuclear mass that is different from a nuclear mass of any of the nuclei of the neutrals and the second reactant, the product including helium-3. REJECTIONS Claims 1, 3, and 5-34 are rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Claims 1, 3, and 5-34 are rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. Claims 1, 3, and 5-34 are rejected under 35 U.S.C. § 101 as inoperative and therefore lacking utility. ANALYSIS The § 112(b) rejections A claim must “particularly point[] out and distinctly claim[] the subject matter which the inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112(b). Specifically, § 112(b) contains two requirements: “first, [the claim] must set forth what ‘the applicant regards as [the] invention,’ and second, it must do so with sufficient particularity and distinctness, i.e., the claim must be sufficiently ‘definite.’” Solomon v. Kimberly-Clark Appeal 2021-005553 Application 15/973,439 4 Corp., 216 F.3d 1372, 1377 . . . (Fed.Cir.2000). In determining whether the claim is sufficiently definite, we must analyze whether “one skilled in the art would understand the bounds of the claim when read in light of the specification.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002) (first brackets in original). “[W]e employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). Procedurally, when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). High density thin layer of electrons The Examiner determines that the term “high density thin layer of electrons” in claim 1 is unclear. (Final Action 2.) Specifically, the Examiner determines that “it is unclear how a high density layer of electrons differs from a non-high density layer of electrons,” that “the border that distinguishes a high density from a non-high density is unknown,” and that “a density value range of a ‘high’ density layer of electrons [is not] defined in the specification.” (Id.) Appellant argues that the claim term “the generated electrons from said electron emitter form a high density thin layer of electrons which creates a negative electric potential between adjacent fusion reactant nuclei, thereby decreasing the positive Coulomb barrier between the positive nuclei Appeal 2021-005553 Application 15/973,439 5 of the first and second reactants” “is described in the Specification as filed inter alia at ¶ ¶ [0085], [0091] and [0099] - [0117], such that a person of ordinary skill in the art would understand what is meant by the phrase ‘a high density thin layer of electrons.’” (Appeal Br. 3.) The Examiner answers only that “[t]he examiner respectfully disagrees.” (Answer 3.) Here, the Examiner presents a well-grounded rejection identifying why the term “high density thin layer of electrons” is unclear in this context. (See Final Action 2.) However, the Examiner does not sufficiently explain why Appellant’s response is not satisfactory. Therefore, we will reverse this rejection. Fusion reactant nuclei The Examiner determines that the term “fusion reactant nuclei” in claim 1 is unclear. (Id. at 3.) Specifically, the Examiner determines that “it is unclear whether ‘fusion reactant nuclei’ are a part of the first reactant, the second reactant, the ions, the neutrals, or a combination thereof,” and “whether the ‘fusion reactant nuclei’ differ from the ‘nuclei of the first and second reactants’ and the ‘nuclei of the neutrals’.” (Id.) Appellant does not address this rejection in the Appeal Brief. Therefore, we will summarily affirm this rejection. The positive nuclei of the first and second reactants The Examiner determines that the term “the positive nuclei of the first and second reactants” in claim 1 lacks proper antecedent basis. Appellant does not address this rejection in the Appeal Brief. Therefore, we will summarily affirm this rejection. Appeal 2021-005553 Application 15/973,439 6 The § 112(a) rejection The Examiner determines that claim 1 fails to comply with the enablement requirement. (Final Action 3 (citing Non-Final Action mailed Mar. 10, 2020 and Final Action mailed Aug. 21, 2019).) Specifically, the Examiner determines that claim 1 cover[s] alleged nuclear fusion which can occur at a very low energy/temperature. For example, note the . . . application: “fusion occurs in the temperature range of about 1000K to 3000K” [88]; “embodiments of the present disclosure employ much lower temperatures; e.g., on the order of 2000K (0.17 eV) in fusion reactions” [100]; “temperature: about 1800-2000 K (about 0.15 to 0.17 eV)” [115]; and “permits for fusion to occur at substantially lower temperatures, such as those reproducible by various embodiments of the reactors discussed earlier, namely on the order of 2000K (0.17 eV)” [307]. However, neither the claims nor the specification provide sufficient information on how such slow rotational movement of particles at these low energies/temperatures would enable one skilled in the art to produce a product having a different nuclear mass (e.g., helium-3). Nor is there any evidence of record that electron screening and/or electric field will sufficiently reduce Coloumb [sic] barrier to allow for nuclear fusion at such low energy/temperatures. (Final Action mailed Aug. 21, 2019 at 3-4 (bracketed paragraph numbers modified to reflect paragraph numbering in Specification as filed).) Appellant argues that notwithstanding that Appellant maintains that the disclosed invention is in fact operative, the claims do not require that nuclear fusion be achieved ‘at unreasonably low energy/temperatures’ as alleged in the Office action. The Specification provides an exhaustive, detailed disclosure that enables a person having actual skill in the art to make and the use the claimed invention. (Appeal Br. 4 (emphasis omitted).) Specifically, Appellant argues that Appeal 2021-005553 Application 15/973,439 7 rather than failing to provide sufficient disclosure that would enable a person having skill in the art to make and use the invention under 35 U.S.C. 112(a), it appears that the examiner’s objection relates to the examiner’s questioning of whether certain statements made in the Specification ‘border on the incredible’ and ‘would not be readily accepted by a substantial portion of the scientific community’.[] Appellant respectfully submits that such allegation on the part of the examiner does not form a proper basis for rejecting the claims under 35 U.S.C. 101. (Id. at 4-5 (emphasis omitted).) We separately address the issues of enablement and utility. The test for compliance with the enablement requirement is whether the Specification, as filed, is sufficiently complete to enable any person skilled in the art to make and use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); see also In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). When rejecting a claim for lack of enablement, “the PTO 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 at 1561-62. Factors to be considered in determining whether a disclosure would require undue experimentation . . . include (1) the quantity of experimentation necessary, (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. In re Wands, 858 F.2d at 737. In addressing the Wands factors, the Examiner finds that the Specification Appeal 2021-005553 Application 15/973,439 8 alleges that “fusion occurs in the temperature range of about 1000K to 3000K” [88]. That is, the specification [88, 100, 115, 307] alleges that fusion will occur using only 0.15 - 0.17 e[V] (e.g., 1000-3000 °K; 1340-4940 °F). Additionally, the Coulomb barrier is somehow overcome (to allow nuclei to get close enough to fuse) at these unreasonably low energy/temperatures. (Final Action 4 (bracketed paragraph numbers modified to reflect paragraph numbering in Specification as filed).) The Examiner also finds that “there is no evidence of record that electron screening and/or an electric field will sufficiently reduce the Coulomb barrier to allow fusion at such a low temperature/energy,” that “[t]he disclosure does not provide sufficient information on how such a slow rotational movement of particles at these low energies/temperatures would enable one skilled in the art to produce a product having a different nuclear mass (e.g., helium-3),” that “the broad scientific community (and courts) has generally concluded that reactions using low energy/temperature in th[e] manner [recited in the Specification] do not give rise to nuclear fusion,” and that the article by Berlinguette (“Revisiting the cold case of cold fusion”, Nature 2019) notes that a multiyear research regarding LENR [(low energy nuclear reaction)] found no evidence of anomalous effects. Rather, Berlinguette indicates that known fusion processes require particle energies corresponding to temperatures above 20 million degrees kelvin. Berlinguette also implies that use of Coulomb barrier screening (which Applicant relies upon) would not be sufficient to allow for nuclear fusion at low energy/temperatures. (Id. at 5.) Additionally, “[t]he Examiner notes that Appellant does not argue (or present evidence) that fusion products were produced at the disclosed unreasonably low energy/temperature of 0.15 eV.” (Answer 5.) In short, the Examiner has set forth a reasonable explanation as to why the full scope of the claim is not adequately enabled by the Specification. Appeal 2021-005553 Application 15/973,439 9 Appellant replies that the examiner appears to recognize and acknowledge that the claims also allow for embodiments that achieve nuclear fusion at “reasonable” energy/temperatures; consequently the 35 U.S.C. 101 and 112(a) rejections are respectfully submitted to be unduly founded. In particular, Appellant emphasizes that the claimed invention does not claim performing nuclear fusion at any specified temperature. Indeed, the flaw in the rejection may be readily recognized by considering the fact that the parameters listed in paragraphs [0109] to [0116] are merely exemplary characterizations and are not required in order for the claimed invention to be made and used according to the full disclosure in the Specification. (Reply Br. 2-3 (emphasis omitted).) We agree with Appellant that claim 1 does not recite any particular temperature or energy level. However, as discussed above, the Specification recites both temperatures and energy levels at which the invention is asserted to operate. Appellant does not persuasively argue why the Examiner erred in determining that the Specification does not adequately enable one of ordinary skill in the art to practice the full scope of the claimed invention, e.g., to practice the invention at the temperature and energy levels disclosed in paragraphs 109-116 of the Specification, without undue experimentation. (See Answer 5-6.) Moreover, Appellant does not cite to the Specification to support Appellant’s implied argument that the claimed invention operates at other than low energy/temperature levels. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1 under § 112(a). Claims 3 and 5-34 are not separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-005553 Application 15/973,439 10 The § 101 rejection Section 101 recites that “[w]hoever 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 [Title 35 of the United States Code].” The PTO has the initial burden of challenging a patent applicant’s presumptively correct assertion of utility. In re Brana, 51 F.3d 1560, 1566 . . . (Fed.Cir.1995). If the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility, however, the burden shifts to the applicant to submit evidence sufficient to convince such a person of the invention’s asserted utility. Id. In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000). As discussed above, the Examiner finds that “there is no evidence of record that electron screening and/or an electric field will sufficiently reduce the Coulomb barrier to allow [low temperature/energy] fusion,” that “the broad scientific community (and courts) has generally concluded that reactions using low energy/temperature in th[e] manner [recited in the Specification] do not give rise to nuclear fusion,” that “the article by Berlinguette indicates that known fusion processes require particle energies corresponding to temperatures above 20 million degrees kelvin,” and that “Berlinguette also implies that use of Coulomb barrier screening (which Applicant relies upon) would not be sufficient to allow for nuclear fusion at low energy/temperatures.” (Final Action 5.) Additionally, the Examiner cites to articles by Nagel (David J. Nagel, From Cold Fusion to Low Energy Nuclear Reactions and Beyond (TC 3600 Tech Fair, U.S. Patent and Trademark Office, June 7, 2018)), Lindstrom (Richard M. Lindstrom, Believable statements of uncertainty and believable Appeal 2021-005553 Application 15/973,439 11 science, 311 J. Radioanalytical and Nuclear Chemistry 1019-22 (2017)), and Berkovich (Simon Berkovich, Calendar variations in the phenomena of Nature and the apparition of two Higgs bosons (Dept. of Computer Science, The George Washington Univ. (2013))). (Final Action 6.) Specifically, the Examiner finds that Nagel (2018) indicates that LENR experiments still lack reproducibility. Factors may include equipment, protocols, and the materials being used in the experiments. For example, materials can be highly variable in both composition (e.g., what atoms are actually therein) and structure (e.g., how these atoms are arranged). Lindstrom (2017) indicates that workers are unable to duplicate publicized LENR work, and that research therein has nearly stopped. Berkovich indicates that LENR contradicts “the existing body of knowledge in the atomic physics” (page 8) and is irreproducible. (Id.) In short, the Examiner has presented evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility, i.e., would reasonably doubt the operability of the claimed invention. Appellant argues that in a paper “by the present inventor . . . , the Appellant has established that fusion reactions are estimated to occur, at least where coulombic barrier reduction techniques are employed, when reactant energy is in the range of 20-40eV.” (Appeal Br. 8-9 (citing Alfred Y. Wong & Chun-Ching Shih, Approach to Nuclear Fusion Utilizing Dynamics of High-Density Electrons and Neutrals (2019), available at https://arxiv.org//ftp/arxiv/papers/1908/1908.11068.pdf).) Appellant argues that “there is evidence that production of fusion products results from practicing the techniques taught by the present Specification. Appellant has submitted into the record the manuscript ‘Electron Catalyzed Fusion’ which presents experimental data that has been generated in Appellant’s Appeal 2021-005553 Application 15/973,439 12 laboratories.” (Id. at 9 (citing A. Y. Wong, et al., Electron Catalyzed Fusion (2020)); see also Amendment filed September 10, 2020, at 14 (submitting A. Y. Wong, et al., Electron Catalyzed Fusion (2020)).) Specifically, Appellant argues that “[b]y comparing and analyzing the diameters and depths of penetration the [sic] computer simulated model, Appellant was able to reach the conclusion that fusion product MeV energies are observed in the present invention as disclosed.” (Id.) The Examiner answers that Appellant’s evidence only shows that “fusion reactions are estimated to occur” and that “Appellant was able to reach the conclusion that fusion product of MeV energies [were] observed.” (Answer 5 (quoting Appeal Br. 8-9) (emphasis added by Examiner).) In particular, the Examiner finds “that Appellant does not argue (or present evidence) that fusion products were produced at the disclosed unreasonably low energy/temperature of 0.15 eV (e.g., [S]pecification at [115])” and that “[t]here is no evidence of record that Appellant’s invention involving low temperature nuclear fusion is reproducible.” (Id.) And, as noted above, Appellant does not indicate where the Specification discloses operation of the claimed invention at other than low energy/temperature levels. Appellant argues that a declaration by the inventor, dated June 13, 2013, was submitted and that [n]otwithstanding certain distinctions between the prototype apparatus described in the Declaration and the present invention, the present invention, similarly to the prototype apparatus, contemplates creating and azimuthally accelerating a weakly ionized high neutral density plasma in which at least some collisions between reactant species result in a fusion reaction, for example, the known aneutronic reaction 1p +11B  4He + 8.7 MeV. (Appeal Br. 9-10.) Appeal 2021-005553 Application 15/973,439 13 The Examiner, however, finds that the scientific community requires that this aneutronic reaction have a much higher energy/temperature than that relied upon by Applicant. For example, note the previously cited Ruggiero [(Alessandro G. Ruggiero, Nuclear Fusion of Protons with Boron (Conference on Prospects for Heavy Ion Inertial Fusion, Sept. 26-Oct. 1, 1992))], Hare [(Jack Hare, New calculations show proton-boron fusion is still difficult (June 25, 2019), https://fusionandthings.eu/2019/06/05/new-calculations-show- proton-boron-fusion-is-still-difficult/)], and Wikipedia [(Wikipedia, https://en.wikipedia.org/wiki/Aneutronic_fusion (March 2020))] references. Ruggiero requires “around 675 keV”; Hare requires 300 keV; and Wikipedia requires 123 keV. As can be seen, these energies are much higher than Applicant’s 0.17 eV mentioned in Applicant’s application [100, 307, 313]. (Final Action 6.) Moreover, Appellant acknowledges that the prototype referred to in the June 13, 2013 declaration has “certain distinctions” from that of the present invention, and that both merely “contemplate[] creating and azimuthally accelerating a weakly ionized high neutral density plasma in which at least some collisions between reactant species result in a fusion reaction.” (Appeal Br. 9-10 (emphasis added).) In view of the above, and particularly in view of the evidence presented by the Examiner that one of ordinary skill in the art would have reasonable doubt as to the operability and, thus, the utility of the claimed invention, we are not persuaded that the Examiner erred in rejecting claim 1 under § 101. Claims 3 and 5-34 are not separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-005553 Application 15/973,439 14 CONCLUSION The Examiner’s rejection of claims 1, 3, and 5-34 under 35 U.S.C. § 112(b) regarding the claim term “high density thin layer of electrons” is reversed. The Examiner’s rejection of claims 1, 3, and 5-34 under 35 U.S.C. § 112(b) regarding the claim term “fusion reactant nuclei” is summarily affirmed. The Examiner’s rejection of claims 1, 3, and 5-34 under 35 U.S.C. § 112(b) regarding the claim term “the positive nuclei of the first and second reactants” is summarily affirmed. The Examiner’s rejection of claims 1, 3, and 5-34 under 35 U.S.C. § 112(a) is affirmed. The Examiner’s rejection of claims 1, 3, and 5-34 under 35 U.S.C. § 101 is affirmed. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5-34 112(b) Indefiniteness 1, 3, 5-34 1, 3, 5-34 112(a) Enablement 1, 3, 5-34 1, 3, 5-34 101 Utility 1, 3, 5-34 Overall Outcome 1, 3, 5-34 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