Roger Stringham

Patent Trials and Appeals Board

Feb 1, 2022

2021005299 (P.T.A.B. Feb. 1, 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. 16/867,455 05/05/2020 Roger Sherman Stringham TUP56632 3772 62439 7590 02/01/2022 Sinorica LLC dba Thoughts to Paper 20251 Century Blvd Ste 140 Germantown, MD 20874 EXAMINER WASIL, DANIEL D ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): SINORICA@GMAIL.COM pair@sinorica.com sinorica@outlook.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROGER SHERMAN STRINGHAM Appeal 2021-005299 Application 16/867,455 Technology Center 3600 Before BRETT C. MARTIN, ANNETTE R. REIMERS, and BRANDON J. WARNER, 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 1-12 and 15-18. Claims 13 and 14 were canceled during prosecution. Appeal Br. 2. 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 Roger Sherman Stringham. Appeal Br. 2. Appeal 2021-005299 Application 16/867,455 2 CLAIMED SUBJECT MATTER The claims are directed “to an apparatus that can be used to collect experimentation data for producing heat through cavitation by utilizing a piezo-disk antenna to agitate a reservoir of deuterium oxide.” Spec. 1, ll. 13-15. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An experimentation apparatus to test for heat produced by cavitation comprising: heating chamber; a quantity of heavy water; a piezo-disk antenna; a target foil; a transmission line; a signal generator; a control unit; at least one internal sensor; a signal amplifier; an antenna tuner; a user interface; the quantity of heavy water being retained within the heating chamber; the piezo-disk antenna and the target foil being mounted within the heating chamber; the piezo-disk antenna and the target foil being positioned offset from each other by a gap distance; the piezo-disk antenna and the target foil being in vibrational communication with each other through the quantity of heavy water; the piezo-disk antenna being electrically connected to the signal generator by the transmission line; the signal generator being electronically connected to the control unit; the at least one internal sensor being mounted within the heating chamber; the signal amplifier and the antenna tuner being electrically integrated along the transmission line; Appeal 2021-005299 Application 16/867,455 3 the at least one internal sensor, the signal amplifier, the antenna tuner, and the user interface being electronically connected to the control unit; at least one acoustic sensor; the at least one acoustic sensor being externally mounted to the heating chamber; the at least one acoustic sensor being positioned adjacent to the gap distance; the at least one acoustic sensor being electronically connected to the control unit; an oscilloscope; and the oscilloscope being electronically connected to the control unit. REJECTIONS Claims 1-12 and 15-18 stand rejected under 35 U.S.C. § 112(a) as failing to comply with both the written description requirement and the enablement requirement. Final Act. 2. Claims 1-12 and 15-18 stand rejected under 35 U.S.C. § 101 because the disclosed invention is inoperative and therefore lacks utility. Id. OPINION 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 Appeal 2021-005299 Application 16/867,455 4 Examiner’s findings and conclusions regarding utility and enablement contained in the Final Action on pages 3-4. See also Ans. 4-9. “The questions of whether a specification provides an enabling disclosure under § 112, ¶ 1 [(now 112(a))], 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(a) 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 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 Appeal 2021-005299 Application 16/867,455 5 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 considered to be based on a questionable and unproven concept/type of nuclear fusion. There is no disclosed utility other than testing/measuring heat which comes from alleged cavitation-induced nuclear fusion. The mainstream scientific community has generally concluded that reactions using deuterons in the manner (cavitation) relied upon by Applicant do not give rise to nuclear fusion. That is, the alleged nuclear fusion relied upon by Applicant is deemed inoperable by the mainstream scientific community. Also, when the only utility relies on questionable nuclear fusion, like here, then courts have generally held that utility to be inoperable. Note the legal citations in the prior Office actions. Final Act. 3; see also Ans. 4-9 (discussing the absence of factual evidence in the record to show that Appellant has credibly and reproducibly reduced to practice the invention claimed). The Examiner has provided several references demonstrating that the purportedly positive results of cold fusion experiments are not reproducible. See, e.g., Ans. 5. As such, we determine that the Examiner has established a reasonable basis for questioning the veracity of Appellant’s stated 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.”)) As Appeal 2021-005299 Application 16/867,455 6 the Examiner correctly notes, “Appellant provides no specific arguments against the rejections.” Ans. 9; see Appeal Br. 5-7. The Examiner also points out, “[t]here 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 / LENR [(low energy nuclear reaction)] system.” Ans. 8. Accordingly, Appellant has not provided a satisfactory rebuttal to the Examiner’s rejections. We further note that in the brief arguments presented, Appellant uses words such as “potentially,” “could,” “predicted,” and “possibility” in describing the asserted utility of the invention more than a dozen times. This further indicates that Appellant has no functioning cold fusion apparatus and that the results are purely hypothetical when it comes to producing energy from cold fusion. We agree with the Examiner that “there is no disclosed utility other than cavitation-induced nuclear fusion (and heat therefrom), which is deemed inoperable.” Ans. 7. 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 written description/enablement requirement. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-12, 15- 18 101 Utility 1-12, 15- 18 Appeal 2021-005299 Application 16/867,455 7 1-12, 15- 18 112(a) Written Description/Enablement 1-12, 15- 18 Overall Outcome 1-12, 15- 18 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