Petition for Writ of Certiorari — Swartz v. Patent & Trademark Office, Board of Patent Appeals & Interferences

IN THE

Supreme Court of the United States

Mitchell R. Swartz, Petitioner

Vv.

Nicholas P. Godici,

Commissioner for Patents,

Respondent

On Petition For A Writ Of Certiorari

To United States Court Of Appeals

For The Federal Circuit

02 - 1240

(Serial No.: 08-406,457)

IN RE MITCHELL R. SWARTZ

Appeal from the Board of Patent Appeals

and Interferences

(No. 98-2593)

PETITION FOR A WRIT OF CERTIORARI

Mitchell R. Swartz, ScD, MD, EE

P.O. Box 81135

Wellesley Hills, MA 02481-0001

April 17, 2003

QUESTIONS PRESENTED

Did the Decision Misread the Claims of the Present

Application under 35 U.S.C. §101 and 35 U.S.C.

§112.

Whether The Office Failed The Standards Of Review By

Ignoring Testimony of Declarants Skilled-in-the -art

under 35 U.S.C. §112 and 35 U.S.C. §101.

Whether The Office Failed The Standards Of Review By

Ignoring Evidence Including Fusion Technology '97

under 35 U.S.C. §112 and 35 U.S.C. §101.

Whether The Office Failed The Standards Of Review

And 18 U.S.C. §1001 By Making False Statements or

Writings of Temperature and Voltage.

Whether The Office Has Complied with the Authority of

the United States Constitution and Congressional

Will

wee NT

LIST OF PARTIES

Not all parties appear in the caption of the case on the cover

page. | |

The list of all parties proceedings in the Court is as follows:

Petitioner, previously Applicant then Appellant, Dr. Mitchell

Swartz, P.O. Box 81135, Wellesley Hills, MA 02481-0001.

Respondent is the Office of Patent and Trademarks [the U.S.

Patent and Trademark Office and the Board of Patent Appeals

and Interferences, hereinafter "Office"]. The Examiner has

been. Mr. Daniel Wasil Mr. Nicholas P. Godici, is

Commissioner for Patents.

The Respondent's attorney of record is Attorney Thomas

Krause, Associate Solicitor, 2121 Crystal Drive, P.O. Box

15667, Arlington, Virginia, 22215. With him has been John

Whealan, Solicitor, U.S. Patent and Trademark Office, of

Arlington, Virginia, and Stephen Walsh.

The amici curiae who have submitted Briefs to this court

previously in 00-1191, and who submitted their unentered

briefs to the court of appeals in the above-entitled case after

receiving permission to enter said brief from the respondents,

are

Eugene F. Mallove, Sc.D., amicus curiae, New Energy

Research Laboratory (NERL), P.O. Box 2816, Concord, New

Hampshire 03302-2816

Scott R. Chubb, Ph.D., amicus curiae, Research Systems, Inc.,

9822 Pebble Weigh CT., Burke, VA 220215-3378

Hal Fox, Ph.D., amicus curiae, Engineer, Editor, 3084 E. 3300

South, Salt Lake City, UT 84109-2154

The panel in the court below, U.S. Court of Appeals for the

Federal Circuit, were Judges Clevenger, Friedman and Prost.

‘Table Of Contents Of Petition

‘Review By Ignoring Testimony of Declarants

- Skilled-in-the-art under 35 U.S.C.§112 and 35

U.S.C. §101.

Page

Questions Presented i

List Of Parties ii

Table Of Contents iti

Table Of Authorities Cited’ v

Opinions Below 1

Jurisdicti 1

Const’!utional And Statutory Provisions Involved 1

Basis Df Federal Jurisdiction In The Court Of First 2

Instance

CONCISE STATEMENT 3

OF THE MATERIAL FACTS

REASONS FOR GRANTING THE WRIT 9

QUESTIONS PRESENTED 12

Did the Decision Misread the Claims of the 2

Present Application under 35U.S.C.$101 and

35 U.S.C.§112.

Whether The Office Failed The Standards Of 16

oe]

oe

Whether The Office Failed: The Standards Of ‘=

Review By Ignoring evidence Including Fusion

Technology '97 under 35 U.S.C.§112 and 35

U.S.C. §101.

Whether The Office Failed The Standards Of 24

Review And 18 U.S.C.§1001 By making false

statements or writings of Temperature and

Voltage. |

Whether The Office Has complied with the 25

authority of the United States Constitution

and Congressional will.

CONCLUSION 28

APPENDIX A - Opinion of the United States court of

appeals | 32

APPENDIX B - Order about Rehearing 36

denying rehearing

APPENDIX C - Decision of Board Of Patent Appeals 37

And Interferences [Oct 9, 1998]

APPENDIX D -Order Remanding To Examiner from 60

the: Board Of Patent Appeals And Interferences [Oct

9, 1998] ~ ;

APPENDIX E - Claims of Subject Matter 61

APPENDIX F - Table of the False Statements in the 62

Decision involving "ecific operative embodiment’

APPENDIX G - Multiring Calorimeter 63

APPENDIX H - Output of Multiring Calorimeter 64

~“ .The other notations used herein are to the Petitioner's. original

patent specification (OS) to the Patent Office, the Appeal Brief to the

Board of Patent Appeals and Interferences (APB), the Board

Decision (D), and the Appendix was submitted with the Appeal

Brief to the US Court of Appeals For The Federal Circuit (A).

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Table of Authorities —

Selected Statutes

U.S.Rep. No. 1979, 82d Cong,, 2d Sess., 5 (1952); H.R | 1,26,29

Rep. No. 1923, 82d: Cong., 2d Sess., 6 (1952) ..........

Selected Federal Case Law |

Bivens v. Six Unknown Named Agents of Fed. Bureau 27

EI sg cicetsisiie ate ieeetaees eres ey Rae Se

Bloom v. Illinois, 88 Ct. 499 S.Ct. 1477 ....................... .

Bonito Boats, Inc. v. Thunder Craft Boats, Inc, 489 U.S. 28

141 (1989), 489 U.S. 141, No. 87-1346, quoting Graham v.

John Deere Co. of Kansas City, 383 U.S. 1, 6 (1966) .......

Chelebda v.H.E. Fortuna & Brothers Inch 609 F.2d 1022 20

(1st Cir. 1979)

Chisum on Patents, 4.04[4] [1983] .......00000000..., sae | 10

Cross v.lizuka, 753 F.2d 1040, 1044 n.7, 224 USPQ 739, 19

FOE BT OU, Cie, TID nes vi snnvcosvcnssevisessoscces ereoeieiad

Diamond v. Chakrabarty, 447 U.S. 303 (1980), 447 U.S.| 1,29

303, No. 79-136, quoting Deepsouth Packing Co. v.

Laitram Corp., 406 U.S. 518, 530 -531 (1972) }

Diamond v. Diehr, 450 U.S. 175 (1981), 450 U.S.175,No.| 2

TPP COE. Dima By BOI sissies ove evn vievecaincvececsce L

Donatelli v. National Hockey League, 893 F.2 459, 465 25

CG TR Vacca Gaberkotdedas tution eaernak eons os

Duncan v. Louisiana, 88 S.Ct.1444 200, 4

El. da Pont de Nemours & Co. v.Berkley & 10

| Co.,620F.2d1247,1258 n.10,1260 n17,205

USPQ1,8n10,10n.17(8th Cir.1980) 2.000... ec cece eee

i

“?

| Environtech Corp. v. ng eng 730 F.2d 753, 762,! 11,19

221 USPQ 473, 480 (Fed. Cir. 1984)

MOA III «..<..0:cccealiccncee eee oe

Ex parte Gray [10 USPQ2d — 1928 (Bd. Pat. App. &

RE EEE x. «akc esaeaukeneabddveintassepsaeetiesdslivaseeta !

Ex parte Porter 25 USPQ2d 1144, 1147 (Bd. of Pat. App.| 20

SUE divasdcasensnsouncsediansanlcnbnesanda

Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. &| 20

Frontiero v. Richardson, 93 S.Ct. 1736, 411 U.S. 677 ........, 27

I, © sve scckiadvkonavaccads es cetcubeciwe Lo

EE POT SY. TE oo

Gottschalk v. Benson [409 U.S. 63 (1972), 409 U.S. 63 23

DOD, TIES oy anescnnsscresicrensonecassorsesenssarssavenssnenasins

Graham v. John Deere Co., 383 U.S. 1, 7 -10 (1966) 1,29

Griffin v. Breckenridge, 91S Ct179D ................. bend a. 3

In re Alton [94-1495, S.N. 06/483,451] 18

In re Brana, 51 F.3d 1560, 1564 n.12, 34 USPQ2d 1436, | 18,20,23

BI Fr i Gs BT sh ilesonins ches biccsesrmecemmerasesios

In re Chilowsky, 229 F.2d 457, 462, 108 USPQ 321, 325; 19,23

I IIIs s-cincasdcncensneshaanahiensnamiinioinssietmammmetnele

In re Eltgroth, 419 F.2d 918, 164 USPQ 221 (CCPA 1970) | 23

-|In re Ferens 417 F.2d 1072, 1074, 163 USPQ 609, 611 15

Et MEE 5s ss nvsivehutiie siciasaarachaaeanlpenimate een eolanel :

In re Fouche 439 F.2d 1237, 1243, 169 mite 429, 434, 24

Ee TD xu. cevnwvdnaarnecmmaanescobeltaniate dan cn oidlettade

In re Gazave, 379 F.2d 973, 978, 154 USPQ 92,96 (CCPA| 19,23

I aides sakes ean corinne ripen ees ted a ee '

In re Hogan, 559 F.2d 595, 60S, 194 USPQ 527, 537 22

I NEE 5 ckkcnvontcshinceeycseubaeh team biatieren eee

In re Irons 52 CCPA 938, 340 F.2d 974, 144 USPQ 351 20

BI 0 xcahsssicnceswniiostntncie sie leiieslacincamonamene iets laine ota

In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980) ...., 19,23

In re Marzocchi, 439 F.2d 220, 223; 169 USPQ 367, 369 20

a

7

-

In re Morris 127 F.3d 1048, 1053-36, 44 USPQ2d 1023, | 15,17

1027-30 (Fed. Cir. 1997)] oo... cceeccccceteceecccccecceee.

In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 9,19,23

I UE octet ca eae

In re Prater 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) 15

In re Swartz [00-1107, 00-1108] 15

a ee ee ee 20

(Fed. Cir. 1991)

In re Wands 858 F.2d 731, 737, 8 USPQ2d 1400, 1404

(Fed. Cir. 1988)

In re Wertheim [541 F.2d at 263, 191 USPQ at 97] 19

In re Ziegler 992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603! 21

(Fed. Cir. 1993)

In re Zletz 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 15

1989)

In re Zurko 142 F.3d 1447, 1449, 46 USPQ2d 1691, 1693 19

(Fed. Cir.), cert. granted, 119 S. Ct. 401 (1998)

Krantz and Croix v.Olin, 148 USPQ 659, 661462 (CCPA| 10

1966)

Leasco Data Processing Equip. Corp. v. Maxwell, 468 25

F.2d 1326 (2d Cir. 1972)

Lewis v.Bours, 119 Wn.2d 667, 670, 1992 20

Marbury v. Madison, 1 Cranch 137, 177 (1803) 27

Marino v.Hyatt Corporation, 793 F.2d 427, 430 (1st Cir. 20

1986) :

Mayberry v. Penna., 91 S.8. 2

Morrill v.Tong, 390 Mass. 1207 129 (1983) 20

Newman v. Quigg, 877 F.2d 1575, 1581, 11 USPQ2d| 15

1340, 1345 (Fed. Cir. 1989)

Niehot'f v. Sahagian, 103 A.2d 211 (Me. 1954) 24

Peckham v. Continental Casualty Ins. Co., 895 F.2d 830, 25

836 (Ist Cir. 1990) |

People v. Pierce, 66 Cal. 2d 53 (1967) 25

Pizarro v. Hotels Concorde Int'l C.A., 907 F.2d 1256 (1st 24

Cir. ms

“e

“.

Rannard v. Lockined Aiscoat Comp. 26 Cal. 2d 149

(1945)

Raytheon Company V.Roper Corporation, U.S.C.A,,

Federal Circuit, 1983, 724 F.2d 951, 220 USPQ 592

- 10,19

Sawtelle v. Farrell, 70 F.3d 1381, 1387 (1st Cir. 1995)

Standard Oil Co. (Indiana) v.Montedison, S.P.A., 664

F.2d 356, 375, 212 USPQ 327, 344 (3rd Cir. 1981), cert.

denied, 456 U.S. 915, 102 S.Ct. 1769, 72 L.Ed.2d 174

(1982)

U. S. v. Price, 86 S. Ct. 1152, 1157

U.S. Rep, 404, 520-521 (1972)

United States v. Nixon, 418 U.S. 683 (1974)

Weiss v. Weiss, 436 N.Y.S. 2d. 862, 52 N.Y. 2d. 170

(1981)

Wood v. Strickland, 95 S Ct 952

Selected Published Peer-Reviewed Authorities

Swartz, M., Fusion Technology, 22, 2, 296-300, 1992

Swartz, M., Fusion Technology, 26, 4T, 74-77, 1994

Swartz. M., Vol. 4. "Proceedings: ICCF4", sponsored by

EPRI and the Office of Naval Research, 1994

Swartz, M., Fusion Technology, 32, 126-130, 1997

Swartz, M., Journal of New Energy, 1, 4, 26-33, 1997

MIT RLE Progress Report, P. Hagelstein, M. Swartz, 13%

1, 1-13 (1997)

Swartz, M, Transactions of the American Nuclear

Association, Nashville, Tenn, 1998 Meeting,

(ISSN:0003-018X publisher LaGrange, Ill) 78, 84-85,

1998

OPINIONS BELOW

The opinion of the court of appeals [United States Court Of

Appeals For The Federal Circuit ("CAFC")] appears at -

Appendix A to this Petition.

JURISDICTION

The jurisdiction of this Court is invoked under 35 U.S.C.

§101 and 35 U.S.C. §112 and the United States Constitution

[Article I, Section 8, Clause 8, Article III, Article IV, and the

Fifth and Fourteenth Amendments], and Congress's demand

for progress [Diamond v. Chakrabarty], ingenuity [447 U.S. 303,

309]] and important patentable statutory subject matter.

Venue of this judicial district is appropriate, including in

view of 35 U.S.C. §145, §146, and §306. .

The date on which the court of appeals decided Petitioner's

case was 11/8/02 [Appendix A]. A timely petition for

rehearing was submitted and denied by the court of appeals

on.12/3/2002 [Appendix B]. : |

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED .

This Petition involves a direct grant of authority mad2

under the provision of Article I, §8, cl. 8 of the United States

Constitution, which reads:

"Congress shall have Power (t)o promote the

Progress of Science and useful Arts, by securing for —

limited Times to Authors and Inventors the exclusive

Right to their respective Writings and Discoveries".

This Petition has authority because Congress has

"encourage(d) progress” [Diamond 0. Chakrabarty, 447 U.S. 303

(1980), 447 U.S. 303, No. 79-136, quoting Deepsouth Packing Co.

0. Lattram Corp., 406 U.S. 518, 530 -531 (1972); Graham 2. John

Deere Co., 383 U.S. 1, 7 -10 (1966)] and ingenuity [447 U.S. 303,

309], and has precisely defined patentable statutory subject

matter to include

"anything under the sun that is made by man."

[S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep.

No. 1923, 82d Cong., 2d Sess., 6 (1952)].

This Petition has authority because in this case, the Office of

Patents and Trademarks ("Office") has systematically ignored

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unrebutted timely-submitted Declarations pertaining to issues

of fact, has ignored its own rules, and has created an arbitrary

standard of review for patentability under color of federal law

[Osborn 0. Bank of United States, 22 U.S. (9 Wheat) 738 (1824)].

This Petition has authority because given Art. I, §8, cl. 8

then there is more than the mere possibility that a question of

federal law arises sufficient to satisfy the "arising under”

jurisdictional authorization of Article III. Given this and that

Congress has spoken, the United States Supreme Court

should consider to exercise its supervisory power [Marbury 0.

Madison, 1 Cranch 137, 177 (1803)].

This court is the Petitioner's last and only source of relief.

The court of appeals has decided an important federal

question that conflicts with more than a dozen relevant

decisions of the US Supreme Court and other courts of appeal,

and has thus far departed from the accepted and usual course -

of judicial proceedings.

BASIS OF FEDERAL JURISDICTION

IN THE COURT OF FIRST INSTANCE |

Federal jurisdiction is authorized by Article I, §8, cl. 8,

Article II], Article VI, the 5th and 14th Amendments, and 35

U.S.C. §145, §146, §306, §112 and §101.

In its Decision [hereinafter "Decision", Appendix C, Appeal

No. 98-2593] regarding the above-entitled patent application

[serial number No. 08-406,457; "the '457 application"; A148;

claims A188], the Board of Patent Appeals and Interferences

affirmed the rejections of the appealed claims 13, 14, 21, 22

and 24 through 59 under 35 U.S.C. $101 and 35 U.S.C. §112,

first paragraph, and reversed the examiner's rejection of some

of the appealed claims under Section 108 of the statute. The

date of the Decision was 7/27/01. The Request for

Reconsideration was denied on 12/11/01.

Petitioner thereafter filed a timely Notice of Appeal in the

United States Court Of Appeals For The Federal Circuit [serial

number No. 02-1240] and appealed the Decision constituting

the rejection upheld by the Board of Patent Appeals and

Interferences of all pending claims of the '457 application

ant to 35 U.S.C. §112 and 35 US.C. §101. Petitioner,

then Appellant, requested a hearing, but was denied. Four

Amicus Curiae received permission to enter briefs from the

2

Appellees, then took the time to prepare their

timely-submitted Briefs for the court. They were not entered,

even on Motion, and even after Motion for Reconsideration.

On 11/8/022, the Court Of Appeals affirmed the Board's

decision for putative lack of enablement under 35 U.S.C. §112,

{1, and indefiniteness and puitative lack of utility under 35

U.S.C. §101. The Appellant requested a rehearing, and it was

denied on 12/3/02. , .

CONCISE STATEMENT OF MATERIAL FACTS

Nf |

Fact 1 - '457 Teaches and Claims a Calorimeter and

Method to Evaluation Specimens

Petitioner ["Applicant", "Inventor", "Appellant"], Mitchell

Swartz, ScD, MD is a USS. citizen and inventor who filed

patent application S.N. 08-406,457 ("the '457 application")

which is the subject matter of the above-entitled action. '457

teaches and claims invention of a novel calorimeter

(heat-measuring instrument) and method used to examine

and compare, heat-generating metal samples with full thermal

controls. The invention measures the heat which the samples

produce when electricity is driven through them [A183 in

‘457, A72 in Swartz (97), A178; A193-195, and A261-268]. The ~

heat measured by '457 characterized what is called "activity"

of the sample, which is defined as the ratio of the output heat

power given off by the sample compared to the electrical

input power delivered. Some of the heat is generated from the

loading of hydrogen (a fuel) into palladium (a metal which

absorbs hydrogen in the same way that a sponge fills with

water).

'457 teaches a multiring calorimeter [Appendix G, A183,

A72; also A178; and page OS17, lines 2-12]. '457 produces

data characterizing the samples [Appendix H, A184, A76].

Outside the calorimeter, the heat given off by the samples is

carefully monitored over time and compared with controls as

taught in the original specification. Appendix H shows the

output of the multiring calorimeter in '457. '457 complied and

conformed with the Patent Act by teaching the subject matter

defined by each of the rejected claims, and then set forth the

best mode contemplated.

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Fact 2 - The Claims Of '457 Have Operability

Independent Claim 13 (Appendix E, A188) cine the

method of measuring the heat production of a sample "to

determine the optimum electrical drive condition for said

sample and thereby characterize said sample" for its optimum

input electrical power (in watts) drive condition. Specifically,

claim 13 claims "holding said sample" [OS page 17, lines 2-12],

"loading ... said material" [OS page 16, lines 11-14, and in

Swartz (1992; A92), Swartz (1993), Swartz (1994; A97)]. Claim

13 then claims "thermally monitoring” [OS page 18, line 3

through page 19, line 3, and also page 10, lines 14-18] and

"deriving the thermal response of said sample by

computational means including accounting for the mass and

temperature distribution of at least one barrier between said

rings" [OS page 22, lines 3-11 and line 18 through page 23, line

14, also page 23, lines 21 through page 24 line 6, and lines

14-17, and page 25, lines 411]. Claim 13 then claims

"increasing throt 2h a series of at least three incremental steps

the electric pow: r drive conditions of said electrical circuit"

followed by means for "deriving for each said step data

consisting of the thermal output relationship of said sample as

function of said drive steps, thereby deriving an optimum

drive condition of said sample" [OS page 15, lines 15-20, and

page 23, lines 14-17].

il

Fact 3 - Peer-Reviewed Papers Are Evidence

To support utility and operability of '457 and to

demonstrate enablement, the inventor came forward with

solid substantial, and timely, evidence of operativeness and

utility proven by his peer-reviewed paper published by the

American Nuclear Society {hereafter "Swartz(97)"; A71,

Swartz, M., 1997, Fusion Technology, 31, 63-74; A71, also A83,

A90]. The figures, graphs, and equations of Swartz(97) are is

identical to what was taught in the original specification and

claims on the date of the original filing. A preprint of the

cited paper was included with the original specification.

Swartz(97) proves that the present invention was operable

and correctly taught in the original specification and claims

on the filing date of the application, and this is validation.

Applicant submitted this sterling relevant reference eleven

(11) times to the Office. All eleven (11) copies [A10-A13, Table

a

ad

1 (A18)] were received by the Office and Board. The paper

was submitted, then resubmitted repeatedly, in the

expectation that it would be recorded and considered. In fact,

peer-reviewed Swartz(97) was specifically discussed with the

Examiner, and discussed in the Appeal Brief to the Board on

page 40, in the Reply Brief including on page 6-7, 9-10, 19,

24-25, and in the Second Reply Brief including on pages 3-4.

Egregiously, despite being submitted and received,

Swartz(97) was ignored and systematically removed from the

file [A197,A240,A323-325,A327-A330,A339]. To this day,

Swartz(97) is not listed on the Office's first Docket (A3) nor on

the Office's revised "second Docket" (A6), nor is it even listed

~let alone substantively addressed— in the Decision which

began this Appeal (Appendix C). *-1

IV

Fact 4 - Declarations Are Evidence

Supporting utility amd operability of ‘457 and

demonstrating enablement, the inventor submitted several

“* - 1 Eleven copies of Swartz(97) [Fusion Technology, 31, 63-74,

1997; A71], demonstrating enablement existed at the time of the

original filing, were submitted. On 3/12/97 a second copy was

submitted and discussed it in the Response to the Examiner [pages

50 and 51]. Thereafter, Applicant was informed by Examiner Daniel

Wasil that said published paper was "missing" and had been

removed from the file folder. On 5/26/97, Applicant replaced the

paper with a third copy, and discussed it in the Response to the

Examiner [pages 2 and 3]. After it was ignored, on 11/8/97,

Appellant sent additional copies to the Board (in triplicate) and

discussed it in the Appeal Brief [pages 47, 57]. After it was ignored,

on 6/25/98, Applicant sent the eighth, ninth, and tenth copies of the

published paper to the Board, bound to each copy of the Reply Brief.

Receipt of Swartz(97) is documented at least five (5) ways.

First, on the original specification, the preprint is listed.

Second, there are the numerous datestamps of the Patent Office

[A10-A13, summarized in Table 1(A18)].

Third, Swartz(97) was listed on Forms 1440 (A14,A10-A13).

Fourth, Swartz(97) was discussed in the Response to the Examiner

(pages 50 and 51] of the 3/12/97 Response, and pages 2 and 3 in the

3/26/97 Response, and in the Appeal Brief [pages 47 and 57]..

Fifth, the Board admitted it received material "attached to

Declaration of Dr. Mitchell Swartz Supporting Appeal Brief.” (Paper

No. 25)" [on page 21 of said Decision] and said Declaration was

physically bound to Swartz{97).

5

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Declarations [A52,A55,A56,A58,A61, A28,A32,A36,A38,A44,

A47,A49,A50)] which delivered substantive arguments to the

Examiner's rejections. The Declarations were received

[A10-A13, A18]. The Declarations contained factual

statements with particularity directly addressing how the

specification adequately described the subject matter recited

in Claim 13, and demonstrating that it operated as stated and

that a person of ordinary skill in the art would have

understood the inventor to have been in possession of the

claimed invention at the time of filing.

The Declarants substantially and fully addressed all matters

and issues criticized by the Office and explicitly rebutted each

and every issue with solid substantive evidence. The

Declarations have proven that an adequately written

description requirement is met because they demonstrate that

the present invention works as taught in the original

specification: and claims, and thus contain averments

r-garding evidence establishing the utility, validation, and

o2erab:. tity of the Applicant's cla:med subject matter. Some of

the Diclarants rebutted whai the Office falsely and

evregiously claimed they said. Other Declarants state that the

'457 has utility and that the Office's cited art has nothing to do

with the Applicant's precise invention.

Discussion of the Declarations was made in the Appeal

Brief and Reply Brief to the Board [Appeal Brief pages 40-43,

Reply Brief pages 14, 15, 25-26, Second Reply page 3] and in

other responses to the Examiner [A198, A248-A249,256,

285-286,298, A319-320, A329, A334-335, A342-343, A358-360,

A380-385]. **** - 2

There has been a lack of due process. The Declarations

remain substantively ignored with respect to their factual

“+ _ 2 The datestamp of the Office demonstrates said Declarations

were received [A10-A13,A18]. Each Declaration was accompanied

by statements ; ing their introduction including full and

explicit showing of good cause and sufficient reasons why they were

not presented earlier. Said unrebutted Declarations include the

Swartz Declaration (A28, 9/16/97, Fox declaration (A44, 5/16/95;

Mallove Declaration (A38, 2/6/94; Verner Declaration (A36,

9/16/97), Rotegard Declaration (A47, 5/15/94), Bass Declaration

(A32, 4/17/96) and testimony from Drs. Melvin Miles (A49), Brian

Ahern (A50) and Ray Kurzweil (A51).

6

$ s

engineering content regarding operability and utility because

they accurately and absolutely refute the Decision's erroneous

statements and position. This has continued in the face of

Orders to address them and the Briefs which did refer to them.

[Appendix D]. In this light, it cannot be determined from the

record which - if any - of: these submitted substantive

averments by the Declarants were formally considered in the

writing of the Decision.

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Fact 5 - The Office's Own Witnesses Provide

Impeccible Evidence

The Office's own witness inaccurately cited by the Office,

Dr. Michael Schaffer (A55, 8/7/01) said,

"I do not see how anyone could construe anything

that I wrote at Scientific American's site to imply

that there is "no utility” in cold fusion, much less in

instruments that might be used in cold fusion and

other scientific experiment :. ... It appean. tha: the

Board of Patent Appeals considers me an expert on

this subject. As an expert... I would agree [Dr. al

Swartz’s invention] ... does have utility". | :

, i Jed Rothwell (A61), accurately

cited by the Office, said, |

"None of my _ statements referred to the

functionality, operability or performance of Dr.

Swartz's multiring calorimeter. Nothing I have

published or heard from scientists casts doubt on the

claimed capabilities of Dr. Swartz's invention. ... I

interviewed many people and some scientists, such

as Dr. Michael McKubre, were enthusiastic about Dr.

Swartz's device. Therefore I stated that it may well

be a "superb research tool" in the article quoted."

ice’ j Dr. Rehn, US Navy, inaccurately

cited by the Office, said,

"Perhaps the clearest scientific fact, at this time, is

the hardest for physicists to accept: nuclear reactions

apparently do occur in deuterium-loaded Pd, Ti, and

probably in other solids."

[Office of Naval Research, NAVSO P-3580, 18, 1/93].

7

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‘ i Dr. Will, inaccurately cited by

the Office, said,

"Significant positive results have been obtained

(by) 100 groups from more than 12 countries"

(Final Report NCFI (1991)].

VI .

Fact 6 - Petitioner's Declarants Provide Additional

Evidence

Dr. Scott Chubb (A52, 8/13/2001) said,

"Dr. Swartz has invented an important, new device,

whose purpose has value for measuring activity of a

sample."

Dr. Eugene F. Mallove said (A58, 8/13/2001),

"The activity of a sample is an important issue and

its measurement has great utility... The invention

does not require the reproducibility of cold fusion

phenomena... Rothwell actually praises ('457’ stating)

"This could be a superb research tool...

Dr. Hal Fox (A56,8/13/2001) said,

"... the method of measuring the activity ot sample

in the above-entitled action is clever, not obvious,

and is an important invention with utility."

Dr. Michael McKubre [in the article cited by the Office,

Infinite Energy, 4, 20, 34-35, (98)] said,

"For me .. perhaps the best report at this

conference, was that of Mitch Swartz."

VII

Fact 7 - Petitioner's Submitted Exhibits Are Evidence

Petitioner submitted Exhibits which substantively dispute

the Office and discussed them with the Office and in the

Appeal Brief [pages 45, 55-59], Reply Brief [pages 3-6, 12-13,

15-16, 18-20], and Second Reply Brief [pages 1-6]. The Exhibits

included hundreds of peer-reviewed published papers [Table

2 (A19)] including Swartz(92), Swartz(94) and Swartz(99)

[A92,A90,A83], Mallove pp246-248, Storms(90,93); Arata(90);

Celani(90); Pons(90); Bockris(90); Szpak(91B); McKubre(91);

Chene(90); Rout(91); Notoya(93, 94A,94B); Will(91,93,94);

8

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Bush(91),. Miles(94C,91,93B,94C); Mizuno(94); and McKubre,

SRI, "Summary During ICCF-7", Infinite Energy, 4, 20,

pp.34-35, (1998)]. However, like Swartz(97) and the submitted

unrebutted Declarations (A52,A55,A56,A58,A61,

A28,A32,A36,A38,A44, A47,A49,A50), theses Exhibits ~also

supplied in the expectation that they would be read and

substantively considered were (in violation of federal

regulations and normal custom) not even recorded on the

Docket sheet. When the Examiner informed the Petitioner that

they were removed from the file folder, the Petitioner re-sent

them, and then again re-sent some of them [including

Swartz(97)] eleven times.

The standards of review require that the Decision be based

upon the invention which measures heat release and the

activity of a sample. Instead this Decision commits clear error

when it purports that the invention did not have utility or

validation based on its sole reference to other art. Here, the

Office ignored tae evidence, ignored the invention, and "hand

waved" away from '457, instead pointing to 'cold fusion’ as if

it were a forbidc =n word. It is merely, one of several scientific

and research er.viromments in which the present invention

finds utility.

Only by such improper action as systematically ignoring ~

evidence can the Office and Board purport that this invention

has no utility. As amicus curiae Fox stated, ,

"... (A)ithough an estimated 300 patent applications

have been sent to the U.S. Office of Patents and

Trademarks by inventors of new cold fusion devices

and systems, no patents have issued citing the prior

art. .. Inventors in other countries have been

successful in obtaining patent protection by the

governments. Over 100 low-energy nuclear reactions

patents have issued in Japan and many more in

various European countries ..."

REASONS FOR GRANTING THE WRIT

I

Briefly, the gravamen of this case is that the Office has (and

thereafter the Board have) not properly followed customary

standards of review and not complied with the authority of

Article I, Section 8, Clause 8 and its enablement through

Congressional directive and statute. A Decision arising under

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Article [, Section 8, Clause 8 should be accurate, and it should

be consistent with the record, and rendered with full and just

consideration of submitted Exhibits and Declarations, but this

one does not. This Decision does not read on the original

specification and claims.

The writ should be granted because if the Decision must

rely upon reference to art cut of a cloth other than the

above-entitled specification and claims, then the Office's case

must indeed be rather weak and that alone should dictate

allowance of the present invention.

I

The Amicus Curiae were silenced both by denial of a

Hearing and thereafter by the court's failure to docket their

four (4) laboriously-prepared and timely-submitted Amicus

Curiae Briefs. even though their input was acceptable to the

Appellees (here Respondents). The writ should be granted

because instead of fairness, the Decision substantively ignored

the unrebutted Declarants, skilled-ir-the-art, who have

disputed the Office and attest to conformation with 35 U.S.C.

§101. The Declarations demonstrate that the original

ification and claims clearly defin2 subject matter of

considerable utility, and that therefore, the Applicant has fully

conformed with, and satisfied, the requirements of §101 of the

Patent Act and met at least one (1) stated objective [Standard

Oil Co. (Indiana) 0. Montedison, S.P.A., 664 F.2d 356, 375, 212

USPQ 327, 344 (3rd Cir. 1981), cert. denied, 456 U.S. 915, 102

S.Ct. 1769, 72 L.Ed.2d 174 (1982); E.I. du Pont de Nemours & Co.

v.Berkley & (Co.,620F.2d1247,1258 n.10,1260 117,205

USPQ1,8n10,10n.17(8th Cir.1980); Krantz and Croix v.Olin, 148

USPQ 659, 661-62 (CCPA 1966); Chisum on Patents, 4.04[4]

[1983]; Raytheon Company 0. Roper Corporation, U.S.C.A.,

Federal Circuit, 1983, 724 F.2d 951, 220 USPQ 592].

Il

The writ should be granted because the Decision

substantively ignored Swartz (97) which demonstrates

enablement at the time of the initial filing despite that

validation only comes through peer-review. Eleven (11) date

stamps of the Patent Office are impeccable and undeniable

evidence which demonstrates submission and receipt of

Petitioner's peer-reviewed publication. It proves utility and

10

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enablement as of the filing date of this application, such that

one of skill in the art could conduct this patent without undue-

experimentation (A136). |

: IV

The writ should be ganied because the Decision ignores

the standards of review and ignored violations of the Office's

own rules and the authority of the U.S. Constitution.

The normal standard of review requires the Office address

the invention as it was actually taught in the original

specification and claims, but here the Office did not.

The normal standard of review requires discussion of the

submitted (but not docketed by the Office) Declarations

because they prove utility and enablement.

The normal standard of review requires the Office

substantively address Swartz(97) after it was discussed in the

Appeal Brief on page 40 [also pages 20-24, and 29-39], and in

the Reply Brief on page 6-7, 9-10, 19, 24-25.

The normal standard of review requires the Office to

provide reason to doubt the objective truth of any of the

Declarants’ statements [Envtrontech Corp. 0. Al George, Inc., 730

F.2d 753, 762, 221 USPQ 473, 480 (Fed. Cir. 1984)]. It has not.

It just ignores them and makes no mention of exactly why

relevant evidence has not been substantively addressed.

The normal standard of review requires the Office not

repeat disingenuous misstatements

The normal standard of review requires the Office to

address the Office's. misstatements which are directly

contradicted by evidence already in the record.

The normai standard of review requires the Office ‘admit

that there is absolute impeccable and indelible evidence of the

Office's own date-stamp (eleven times, and documented in the

record) showing that the Office received the relevant Exhibits.

Tr.e writ should be granted because the Office inaccurately

stated without evidence that the present invention has a

putative lack of operability and utility under 35 U.S.C. §112,

41 and §101, even in the face of the USA at War and the

unrebutted skilled-in-the-art Declarant and timely-submitted

Exhibits. If the Office must rely upon reference to art cut of a

cloth not even made from the original specifications and

claims, and must systematically ignore wunrebutted

duly-submitted Declarations and Exhibits, then the Office's

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position is weak — which should dictate allowance of the

peewee invention. : |

V

The writ should be: granted. because the original

ication and claims complied and.conformed with the

Patent Act and taught :the subject matter defined by each of

the rejected claims, set forth the best mode contemplated, and

distinctly point out and claim the subject matter which

constitutes the invention. This is forever corroborated by

unrebutted Declarations, ignored amicus curiae Briefs, and

_ published peer-reviewed paper timely submitted with

evidence including the impeccable date stamp of the Office.

The writ should be granted because enablement and

validation of the present invention are an issue of fact,

supported by unrebuttec. Declarants, unrebutted Exhibits, and

Swartz(97). Said enablement and operability of the invention

ae grounds supporting patentability.

QUESTIONS PRESENTED

Did the Decision Misread the Claims of the Present

A>plication Under 35 U.S.C. §101 and 35 U.S.C. §112?

I

Deviating from the normal standards of review, the

Decision has misread the claims of '457 far from that fact that

it is a novel calorimeter (ie., a heat-measuring instrument) ’

[A183 in '457, A72 in Swartz(97), A178; also A193-195, and

A261-268] and a "method to ... characterize (a) sample".

Petitioner discussed this invention, pursuant to 35 U.S.C.

§112,] in the Appeal Brief [APB 30-60] and Reply Brief [pages

2-10, 12-13]. And yet, even though the present invention's

subject matter regarding measurement of heat activity, and of

characterization of samples was discussed. NONE of the

words which encompass the invention and the claims are

mentioned in the Decision. Instead, the Decision of the Board

inaccurately substitutes the words "cold fusion" repeatedly for

the words “heat production", and for the word "activity", and

for the words "electric power drive", and for "thermally

monitoring”, "thermal output", "optimum drive condition",

and even for "multiring calorimeter". Documenting this

forever, the Decision refers to "cold fusion" eighty-six (86)

times, but the above words not at all Further

rubber-stamping the Office's error, and denying justice and

12

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od

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the American way, the Decision of the Appellate Court uses

the words "cold fusion" 14 times, but "calorimeter" not even

once **** - 3,

An invention (in its structure, operation and composition) is

defined by the claims and the original specification. However,

this Decision has failed to correctly describe the invention and

then is about art cut of cloth made of other than the present

invention and claims. This Decision does not accurately

discuss the t_ invention. Onlv two sentences in the

entire Decision accurately discuss the present invention, and

they are direct quotes from the original specification.

The misreading of claims and subject. matter is the Office's

segue to cite totally irrelevant art ("FP" for Drs. Fleischmann

and Pons) which then constitutes the entire Decision which

then ignores the present invention as it lectures on the work,

ectivities, and mistakes, of others, specifically Dr.

Fleischmann and Pons (FP) from 1989 — and not the original

s.:ecification and claims of the above-entitled invention

[:.ppendices E,G,H]. Thus, the Decision leads away from the

present invention. Corroborating this, the Decision did not

rebut the Declarations, or the Exhibits, or Swartz(97), but only

_ refers to other irrelevan’ immaterial art. As a result, none of

the Decision of Board (28 pages) pertains to the present

invention but rather to the Office's now fourteen (14) year

long attack on cold fusion and those poor American citizens

who have dared to research and develop it as an alternative

energy source for America. It is only by the Office calling the

present invention "cold fusion" instead of a novel multiring

wt -3 The Decision did not discuss claim 13. It is a fact that the

invention measures the HEAT GENERATION from a sample, as

discussed in the original specification and claims. The Decision

discusses it zero (0) times. Similarly, each of the key features of

claim 13 are absolutely and totally i in the Decision.

Claim 13 teaches and claims y monitoring”, but the

Decision discusses "thermally monitoring” zero (0) times.

Claim 13 teaches and claims "electric power drive", but the Decision

discusses "electric power drive" zero (0) times.

Claim 13 teaches and claims "thermal output", but the Decision

discusses "thermal output" zero (0) times.

Claim 13 teaches and daims "optimum drive condition", but the

Decision discusses that zero (0) times.

Claim 13 teaches and claims “multiring calorimeter", but the

Decision discusses that, zero (0) times.

13

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calorimeter and method to. measure heat producing activity, _

that-the Office can get away with its patent nonsense such as. .

claiming that heat measurement is an "unattainable result"

when Appendix H herein from the record below heralds

otherwise. =

Such malicious "boilerplate" attack by the Patent Office on

the words "cold fusion" is well-known and is contrary to the

commonsense interests of United States security. As the

amicus curiae Eugene F. Mallove, Sc.D has stated,

"The most notable characteristic of the attack

against the Swartz patent application at hand is its

_ stale fixation with misrepresented events of 1989, its

citation of erroneous reports, and its continued

argument from supposed authority, rather than from

evolved science and meticulous experiment."

The Decisions’ continual referral to "cold fusion" rather than

'457 is systematic prejudice because the present invention is

not "cold fusion", but rather, '457 is a means to evaluate, to

measure, a sample's heat-producing activity. It could detect

cold fusion, and it could characterize samples used for cold

fusion. It also makes better home water heaters, and safer

more efficient energy systems. It is more than unfortunate

that with U.S. at War, the Office continues to be fixated on

using disingenuity, systematic false statements, and reliance

upon fraud. “““*-4

LAW

Point 1 - The Office is Inaccurate and Disingenuous about

the Subject Matter

Because of its errors, and its basis upon disingenuous

notions, the Decision is necessarily inconsistent with several

*«t* 4 The present invention, '457, has been used to measure data

for MIT and has already been escribed in publications by the

American Nuclear Society. Their work is impeccible and does not

explain why with the USA at War, the Office continues to be

ous and discriminate and violate the US Constitution and

Congrenstcad directive, just so that a few under color of law can

further deny the USA access to an available alternative energy

source. It is reprehensible that in this case, the Office ignores input

to from scientists, and from those whe serve the military, NASA and

and other agencies. It is le that in this case, the Office

coverup continues in the federal system without accountability.

14

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standards of review and case lawThe Office has ‘acted very

unfairly to avoid the controlling authority of the Constitution. -

The Decision rejects the reasoning of In re Morris [127 F.3d

1048, 1053-56, 44 USPQ2d 1023, 1027-30 (Fed. Cir. 1997)]

demanding that the interpretation of operability and utility is

predicated. upon that which one who is skilled-in-the-art

would reach. The Office should have given the claims their

broadest reasonable interpretation consistent with that which

those skilled-in-the-art ~ ie.. Declarants and silenced amicus

curiae ~ would reach.

The Decision rejects the reasoning of In re Prater [415 F.2d

1393, 162 USPQ 541 (CCPA 1969)] because the pending claims

must be given the broadest reasonable interpretation

consistent with the specification.

The Decision rejects the reasoning of In re Zletz [893 F.2d

319, 13 USPQ2d 1320 (Fed. Cir. 1989)] because the

specification clearly and explicitly stated the meaning of the

terms in the claims which involve an invention used to

measure heat-producing ability, or activity, of a sample.

The Decision rejects the reasoning of In re Prater [415 F.2d

1393, 162 USPQ 541 (CCPA 1969)] because the Decision relies

solely on art cut of a cloth other than the present specification

and claims. The Decision rejects the reasoning of In re Ferens

[417 F.2d 1072, 1074, 163 USPQ 609, 611 (CCPA 1969)] and In

re Oberwener [115 F.2d 826, 829, 47 USPQ 455, 458 (CCPA

1940)] because the Office falsely purports that the invention is

"cold fusion" rather than a method to measure the heat

generating activity of a sample.

The Decision rejects the reasoning of Newman 0. Quigg [877

F.2d 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989)]

because the Office derides the present invention with

reference to cold fusion but, in fact, measurement of heat

generation of a sample has absolutely nothing to do with

perpetual motion but has been shown to work [Appendix H].

The Decision rejects the reasoning of In re Swartz because

there are other uses for the present invention than just "cold

fusion". '457 is applicable to calorimetric science, water

-%

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heating, laboratory testing, el@ctronic engineering, arid other

fields. In this case, the inventor mentioned many uses

including the measurement of activity of a sample (Original

Specification, page 7) and the sorting of samples for the

amount of heat which they give off or absorb. Thus, the

t invention is useful for determining the efficiency of

present water heaters as discussed and demonstrated in the

original ication. This diversity of use is consistent with

the directive of the appellate court (00-1107 and 00-1108]

where, not coincidentally but maliciously, two other

inventions were also labeled "cold fusion" by the Office. ***-5

Whether The Office Failed The Standards Of Review

By ing Testimony Of Declarants

Skilled-In-The-Art Under 35 U.S.C. §112 And 35 U.S.C.

§101. ,

Despite the normal standards of review, the Office [and

Decision] did err in failing to give substar tial weight to

unrebutted Declarants of probative valie who are

skilled-in-the-art (****-6) and whose testimony did rebut and

refute the Office's [and Decision's] unsupportec disingenuous

statements and erroneous conclusion. The Declarants,

corroborated by the amici curiae, prove that Petitioner taught

material that was understood by persons with normal

engineering skill They prove that as of the filing date,

scientists skilled-in-the-art considered loading, and heat

“ _ 5 It is against the US Constitution that the Patent Office

routinely atta Petitioner's {and others'] research using

misstatements and deceptive obfuscatory boilerplate argument, as

in the above-entitled record below. As palpable examples to this

court, attention is direct to the fact that in this court [00-1191, fom

In re Swartz 00-1107] the Office falsely called that invention, for

measuring the loading of the hydrogen into a metal sample using a

vibration of that sample (A345-347,A357], "cold fusion", too, so as to

demean it. Similarly, the Office, in this Court (00-1191, In re Swartz

00-1108], falsely called that invention using a two-step system to

drive hydrogen diffusion in metals [A372-373,A387-388], "cold

fusion", too, to demean it.

““* .6 The Deciarants, authorities in their fields, include some of

the Office’s witnesses who now directly refute and contradict the

Office [Dr. Rehn, Dr Will, Dr. Schaffer (A55), and Rothwell (Aé1)].

16

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measurement to be real and to have been taught correctly in

the original specification and claims. The unrebutted

Declarations were received by the Office (A10-A13,A18), cited

in the inventor's pleadings and then in the Appeal Brief

[pp.33-34] and Reply Brief [pages 3-6, 12-13,15-16,18-20].

U ;

The submitted unrebutted Declarations were ignored

regarding their probative content -even in the light of Orders

to address them and their accompanying Briefs [Appendix D].

The Declarants comments have been improperly relegated to

"opinion"-status without an adequate explanation of how the

declarations failed to overcome the prima facie case initially

established by the Board but copiously overcome by

Petitioner. None of their most important relevant substantive

paragraphs are referred to in the Decision. Even the

Declarations saying that the Affiants had been misquoted by

the Office have been ignored. Thus, the Decision erred in

omitting exactly why the unrebutted Declarants have not been

addressed, which - if any - of these submitted unrebutted

documents regarding operability and utility have been

formally considered by the Board and, if so, how they reached

their conclusion given the evidence supporting the Petitioner.

LAW

Point 2 - Witnesses, Even Those Cited by the Office, Dispute

the Office

Because the Office has ignored Declarants and submitted

Exhibits, the Decision is necessarily inconsistent with several

standards of review and case law.

The Office has rejected the directive of 1.131 (a)(1) which

states that "When ... a patent ... is rejected .... on reference ...

to a printed publication, the inventor of the subject matter of

the rejected claim .. may submit an appropriate oath or

declaration to overcome the patent or publication."

Therefore, the unrebutted Declarations (and other evidence)

are allowable.

The Decision rejects the reasoning of In re Morris [127 F.3d

1048, 1053-56, 44 USPQ2d 1023, 1027-30 (Fed. Cir. 1997)]

because the interpretation of operability, utility, and

enablement is predicated must be consistent with that which

17

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- one who is skilled-in-the-art would reach. [In re Morris ("{T]he

PTO applies to the verbiage of the proposed claims the

broadest USPQ2d 1566, 1567 (Fed. Cir. 1990) ("It is axiomatic

that, in proceedings before the PTO, claims in an application

are to be given their broadest reasonable interpretation

consistent with the specification, ... and that claim language

should be read in light of the specification as it would be

interpreted by one of ordinary skill in the art."). (emphasis

added); see also M.P.E.P. §2111.01.

The Decision rejects the reasoning of In re Alton [94-1495,

S.N. 06/483,451] because the Board has mistaken a question of

fact for a question of law. The Board has ignored the

Declarations purporting that they are "opinion". This is wrong

- and improper. Dr. Mallove's, or the other Declarants’, use of

the words “it is my opinion" to preface what someone of

ordinary skill-in-the-art would have known does not

transform the factual statements contained in the declaration

into opinion testimony. The Board erred by dismissing

declarations improperly to "opinion"-status, without an

adequate explanation of how the declarations failed to —

overcome the prima facie case initially established by the Board

and refuted by the evidence including the Declarations and

Swartz(97).

How many Declarants does it take to overcome the

Office's unsubstantiated rejection?

Applicant discussed the Declarations in his Responses to

the Examiner and to the Board [A198, A248-A249,256,

285-286,298, A319-320, A329, A334-335, A342-343, A358-360,

A380-385]. Consequently, the Board's dismissal of any of the

unrebutted Declarations (A52,A55, A56,A58,A61, A28,A32,

A36,A38, A44,A47, A49,A50) on the grounds that they are

"opinion" is an error of law. The Declarations contain factual

evidence and the Board is obligated by law to assume that

said Declarants' unrebutted assertions are true [Lewis v.Bours].

The Decision rejects the reasoning of In re Brana, 51 F.3d

1560, 1564 n.12, 34 USPQ2d 1436, 1439 n.12 (Fed. Cir. 1995)]

because the Office has never given reason for doubting the

objective truth of the Declarants' statements. This is relevant

18

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-

because the Declarants support the present claimed invention

(Enotrontech Corp. 0.Al George, Inc., 730 F.2d 753, 762, 271

USPQ 473, 480 (Fed. Cir. 1984)]. es

The Decision rejects the reasoning of In re Zurko [142 F.3d

1447, 1449, 46 USPQ2d 1691, 1693 (Fed. Cir.), cert. granted,

119 S. Ct. 401 (1998)] because utility is a fact question

0. ation, U.S.C.A., Federal Circuit, 1983

724 F.2d 951, 220 USPO 592], and one which the Court must

review for clear error [Cross v.lizuka, 753 F.2d 1040, 1044 n.7,

224 USPQ 739, 742 n.7 (Fed. Cir. 1985)].

The Decision rejects the reasoning of Ex parte Gray [10

USPQ2d 1922, 1928 (Bd. Pat. App. & Inter. 1989)] because

there is solid evidence of operability and utility, beyond the

detailed specification, in the form of corroboratory unrebutted

expert testimony of Declarants and amicus curiae which fully

addressed all matters criticized by the Office regarding

operability, substantially and e tensively [In re Gazave; In re

ty

Chilowsky; In Re Jolles]. Nothin = has been presented by the

Office which differs or rebuts the Declarations. |

The Decision rejects the reasoning of In re Oetiker, 977 F.2d

at 1445, 24 USPQ2d at 1444] because the Office "bears the

initial burden .. of presenting a prima facie case of

unpatentability”. Thereafter, the Petitioner undertook the full

burden coming forward (A10-A13,A18). with his evidence and

Declarations (A52,A55,A56,A58,A61, A28,A32,A36,

A38,A44,447, A49,A50) as required. Swartz(97) and the

Declarations have not been rebutted or even substantively

addressed by the Office despite that the Office's burden is

only discharged by the Office by "presenting evidence or

reasons why persons skilled-in-the-art would not recognize

in the disclosure a description of the invention defined by

the claims" (Wertheim, 541 F.2d at 263, 191 USPQ at 97]. That

was NOT done in this case, either by the Office or the Board.

Thus, the Board made an improper rejection on the ground

that the application purportedly failed to describe an

invention of utility and operability relating to the independent

claims, even as it ignored Declarations containing relevant fact

by probative witnesses (A52,A55,A56,A58,A61, A28,A32,A36,

A38,A44,A447, A49,A50). The Decision should have responded

to the unrebutted Declaration, but did not.

19

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- The Decision rejects the reasoning of Ex parte Porter because

the Decision is inconsistent with said unrebutted Declarations,

written by those skilled-in-the-art and timely submitted by

Petitioner in response to the Office's inaccurate and

disingenuous comments.

The Decision rejects the reasoning of the Appeals Court

[Marino v.Hyatt Corporation, 793 F.2d 427, 430 (1st Cir. 1986)];

Morrill v.Tong, 390 Mass. 1207 129 (1983); Chelebda 0.H.E.

_ Fortuna & Brothers Inch 609 F.2d 1022 (1st Cir. 1979)] because

the Office failed to assume that Declarants' unrebutted

assertions ~made before the Appeal and in response to false

statements made by the Office— are true (Lewis v. Bours, 119

Wn.2d 667, 670, 1992].

The Decision rejects the reasoning of In re Irons [52 CCPA

938, 340 F.2d 974, 144 USPQ 351 (1965)] because the Office's

Witnesses, and other Declarants, and the amicus curiae,

dispute the Office in timely-submitted Declarations.

The Decision rejects the reasoning of In re Marzocchi, 439

F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971)] because the

Board cannot make this type of rejection, unless it has reason

to doubt the objective truth of the statements contained in the

written description [In re Brana, 51 F.3d at 1566, 34 USPQ2d at

1441 ("Only after the PTO provides evidence showing that

one of ordinary skill in the art would reasonably doubt the

asserted utility does the burden shift to the applicant to

provide rebuttal evidence sufficient to convince su.n 2

person of the invention's asserted utility"); In re Marzocchi)

("[A] specification disclosure which contains a teaching of

the manner and process of making and using the invention

in terms which correspond in scope to those used in

describing and defining the subject matter sought to be

patented must be taken as in compliance with the enabling

requirement of the first paragraph of §112 unless there is

reason to doubt the objective truth of the statements

contained therein which must be relied on for enabling

support.").

The Decision rejects the reasoning of In re Ziegler [992 F.2d

1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993)] because

20

Declarations factually confirm proof of utility. The Office has

ignored Rotegard(A47), Swartz(A28), Bass(A32), Fox(A44 and

AS6), Mallove(A38 and A58), Chubb (A52), Verner (A36), -

_ Kurzweil(A51), Rothwell (A61), Ahern(A50), Schaffer (A55),

and Miles(A49) which individually prove that the present |

claimed invention which medsures heat-generating activity

“Ieets at least one stated objective and therefore defines.

subject matter of considerable utility under §101 of the Patent

Act. . :

Whether The Office Failed The Standards Of Review

By Ignoring Evidence Including Fusion Technology '97

Under 35 U.S.C. §112 And 35 U.S.C. §101.

I

Petitioner (then Applicant) supplied Exhibits to the Office

as evidence consisting of over 300 papers (~140 pounds; Table

2; A19), including over 30 of his own peer-reviewed papers

(several published by the American Nuclear Society in Fusion

Technology, A92, A90, A83) and including Swartz. M., 1997,

Fusion Technology, 31, 63-74, which proved that Petitioner was

correct, and the invention was correctly taught in the original

specification and claims on the filing date of the application.

Also, several Exhibits included reports by US laboratories, US

NAVY, EPRI, DARPA, and NASA, submitted in response to

the Office's unsubstantiated notions. Many Exhibits were

published before the present original specification and claims

and demonstrate that the Office's notions were wrong, and

are salient proof of operability and utility.

Petitioner submitted this evidence because "(p)atentability

is determined on the totality of the record, by a

preponderance of the evidence with due consideration to

persuasiveness of argument." [Id. at 1445, 24 USPQ2d at

1444]. Petitioner showed good cause and clearly specified the

reasons why the Exhibits were not submitted before, namely

they were not necessary prior to the misstatements by the

Office. Said Exhibits exceed by any test the amount of

evidence required for proof of utility. The Office should have

responded to them, and if not, admit that the Applicant has

submitted and demonstrated substantial solid evidence (A19)

supporting the present application at the time it was filed.

The Office was Ordered to substantively respond (A145) but

has not.

LAW

21

-®)

+»

The Decision rejects the reasoning of In re Hogan [559 F.2d

595, 60S, 194 USPQ 527, 537 (CCPA 1997] because

enablement must be judged on the original specification and

claims. Swartz. M., 1997, Fusion Technology, 31, 63-74 proved

that Petitioner was correct, and the invention was correctly

taught in the original specification and claims on the filing

date of the application.

Point 3 - Peer-Reviewed Publications Were Timely

Submitted Proving Patentability

The Decision rejects the reasoning of In re Wands [858 F.2d

731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)] because this

original specification provides an adequately written

description of the subject matter, including how to operate the

invention, and claimed the invention so that an artisan, or

those skilled-in-the-art, could practice it without undue

entation [In re Wands. citing with approval Ex parte

Forman, 230 USPQ. 546, 547 (Bd. Pat. App. & Int. 1986)].

Sufficient would be either the Declarations or the published

peer-reviewed paper which de nonstrate that the specification

provides an adequately written description of the subject

matter, including how to operate the invention, and claimed

the invention so that an artisan, or those skilled-in-the-art,

could practice it without undue experimentation.

Together, the Declarations and published peer-reviewed

paper corroborate enablement of the present invention both

de facto and de jure._

The Decision rejects the reasoning of In re Vaeck [947 F.2d

488, 495-96, 10 USPQ2d 1438, 1444 (Fed. Cir. 1991)] because an

enablement rejection under section 112,41 is only appropriate

where the written description fails to teach those in the art to

make and use the invention as broadly as it is claimed

without undue experimentation. The Decision has not met

the burden of proof as to why one of ordinary skill-in-the-art

would not consider the description sufficient given the

Exhibits. Here there was the published identical peer

reviewed publication conveniently ignored despite it being

submitted eleven times.

The Decision rejects the reasoning of In re Oetiker, 977 F.2d

at 1445, 24 USPQ2d at 1444] because it ignores the relevant

22

2

a

peer-reviewed Exhibits including Swartz(97) [A71]

demonstrating operability and utility [therefore enablement).

In re Oetiker requires the Board (and Office) to substantively

and fully respond to the probative witnesses

~ (A52,A55,A56,A58,A61, A28,A32,A36, A38,A44,A47,

A49,A50), because Applicant undertook the full burden

coming forward (A10-A13,A18). The Decision should have

responded to the unrebutted Declaration, but did not.

The Decision rejects the reasoning of In re Brana and In re

| Eltgroth, 419 F.2d 918, 164 USPQ 221 (CCPA 1970)] because it

relies solely on other art and claims than those involving the

present application. The PTO may establish a reason to doubt

an invention's asserted utility only when the written.

description '"suggest[s] an inherently unbelievable

undertaking or involve{s] implausible scientific principles".

The Decision rejects the reasoning of In re Gazave, 54 CCPA

1524, 379 F.2d 973, 154 USPQ 92 (1967)], In re Chilowsky [43

~CPA 775, 229 F.2d 457, 108 USPQ 321 (1956)], and In Re Jolles

secause there was significant evidence submitted as copious

unrebutted Exhibits by Applicant regarding utility.

This heat-activity-measuring method to select active

materials should be patentable based upon opinions of this

Court.

"Transformation and reduction of an article "to a

different state or thing" is the clue to the

patentability of a process claim that does not include

‘particular machines." |

[Gottschalk v. Benson, 409 U.S. 63 (1972),

409 U.S. 63, No. 71-485]

"Industrial processes such as this ["a physical and

chemical process (which involves) the transformation

of an article .... into a different state or thing”] are the

types which have historically been eligible to receive

the protection of our patent laws. [450 U.S. 175, 185]"

[Diamond v. Diehr, 450 U.S. 175 (1981)]

oe .

| ot | ,

Whether The Office Failed The Standards Of Review

And 18 U.S.C. §1001 By oo Statements Or

ey Of Temperature And Voltage. |

The ision has material false statements undeniably

contradicted by the original specification and by the record

(Appendix F; also Table 3; A147). As just one example, the

Decision falsely states "there is no disclosure . . . of a specific

operative embodiment . . .including ... temperature" [pages 25,26].

However, this is untruthful because temperature is discussed

in the original specification on page 18, line 3 through page

19, line 3. Temperature calculations are discussed on page 22,

line 18 through page 23, lines 14, and page 15, lines 15-20.

As another examiple, the Decision falsely states "there is no

disclosure .. . of a specific operative embodiment . . . including ...

voltage" [pages 25,26]. However, this is contradicted because

the computed sampling of voltage is discussed in the original

specification on page 15, lines 15-20. Voltage is discussed on

page 26, line 19 through page 27, line 4. Figures 5 shows the

Voltage. Figures 4, 5, 6 in the OS show the voltage indirectly

tirough the power and power gain (which are the more

important engineering parameters).

LAW

The Decision rejects the reasoning of In re Fouche [439 F.2d

1237, 1243, 169 USPQ 429, 434, (CCPA 1971)] because an

invention in structure, operation and composition) is defined

by the claims and the original specification. Here, the

Decision does not refer to the present invention but instead is

composed of disingenuous statements.

Point 4 - The. Office's Disingenuous Statements Are

Inconsistent With Accuracy, Precision And Accountability

The Decision ignores 18 U.S.C. §1001 because the submitted

Declarations, and Swartz(97), and the copious Exhibits were

received (A10-A13,A18), and therefore in their light the

Decision is composed of false statements known to be false a

priori [Niehot'f 0. Sahagian, 103 A.2d 211 (Me. 1954)]. This is a

breach of duty [Rannard 0. Lockheed Aircraft Corp., 26 Cal. 2d

149 (1945)].

’ The Decision ignores 18 U.S.C. §1001 by reference to

inaccurate statements and even falsified PFC-Phasell data

previcusly brought to the attention of the Office in detail

[A14-13] and to the attention of the federal court [00-1107, also

24

. a

2”

00-1108 in the Reply Brief on pages 1-11]. The Decision thus

incorporates reference to altered data in a proceeding whereiri

the law authorizes the administration of an oath [People o.

Pierce, 66 Cal. 2d 53 (1967)], and as such the Decision rej

the reasoning of many courts [U.S. 7. Price, 86 S. Ct 1152,

1157, footnote 7; Sawtelle o. Farrell, 70 F.3d 1381, 1387 (1st Cir.

1995); Leasco Data Processing Equip. Corp. v. Maxwell, 468 F.2d

1326 (2d Cir. 1972); Pizarro 0. Hotels Concorde Int'l, C.A., 907

F.2d 1256 (1st Cir. 1990); Peckham v. Continental Casualty Ins.

Co., 895 F.2d 830, 836 (Ist Cir. 1990); Donatelli v0. National

Hockey League, 893 F.2 459, 465 (1st Cir. 1990))].

Whether The Office Has Complied With The United

States Constitution And The Congressional Will

I

The Decision rejects the controlling authority of the United

States Constitution for patentability under Art. I, §8, cl. 8.

This is especially serious because inventions involving energy

efficiency and energy monitoring have great utility during

War. To bypass ‘he controlling authority, the Office has relied

upon art other than the actual original specifications and

claims, and has used disingenuous and "tongue-in-cheek"

statements, and ‘1as ignored the Declarations. These actions

herald bias rather than compliance with the normal standards

of review for patentability statutes arising under Art. I, §8, cl.

8.

I

The Decision rejects the controlling authority of Article |,

Section 2. Petitioner is entitled to the privileges and

immunities of citizens in the other states, consistent with the

reasoning of the Supreme Court in United States 0. Nixon [418

U.S. 683 (1974) that all are "equal under the law”. Here, the

Decision ignores that the Office, has allowed selected other

patents in the very same field, to wit Czirr (5,231,290),

Westphal (5,215,631), Ahern (5,411,654), Patterson(5,036,031),

(5,318,675), (5,372,688), (5,036,031); Aspden, UK-GB

2,231,195B. Thus the Office has denied due process, has not

following harmonization, and has ignored Equal protection

under the law. In fact, by not. following the standards of

review, a dual-tiered system is presently operated by the

Office, rather than a single uniform just approach.

25

es

“e

Point 5 - The Constitution And Congress Encourage

Not Cover-Up .

The Decision rejects the controlling authority of the United

States Constitution [Article VI] because states, governments,

and officials cannot take actions that interfere with the

Constitution or laws passed by Congress.

Here, the controlling authority of Congress has spoken to

"encourage progress" [Diamond ov. Chakrabarty] and to

encourage ingenuity [447 U.S. 303, 309] and has performed its

constitutional role in defining patentable statutory subject

matter to include

"anything under the sun that is made by man"

[S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep.

No. 1923, 82d Cong., 2d Sess., 6 (1952)].

In this case, the Office ignores submitted affidavits of

probative value from Americans. In this case, the Office

ignores peer-re'iewed — from the impeccable

American Nuclear Society.

The Office astonishingly claims that energy measurement

and efficiency has no utility during a time of War. How can

this be? First, the Office through its agency of control, the

Commerce Department, has sold the present patent

application to Communist China on CD-ROM for political

donations but steadfastly refuses to allow this American

technology to develop after patent issue in the USA as the

founding fathers foresaw. Second, during this obstruction of

the above-entitled application, the US Patent Office has issued

patents using astrology to predict lottery numbers, claiming

that they have unique "operability" and "utility". This, frankly

insane, behavior by the Office is egregious, morally wrong,

scientifically inaccurate, and hurtful to the welfare and

security of the United States of America.

IV

The Decision rejects the controlling authority of The 14th

Amendment. The Decision rejects the standards of

patentability, and is arbitrary and capricious and promotes

discrimination and civil rights violation. Petitioner is entitled

26

. eesti oan eon icneemeamets

to an impartial tribunal [28 U.S. Code Section 144, Mayberry 0.

- Penna., 91 S.8.; Bloom o. Illinois, 88 Ct. 499 S.Ct. 1477; Duncan 2.

Louisiana, 88 S.Ct.1444] and equal. protection: of the laws. In

the light of the unrebutted Declarations, "lost" submitted

_ papers, and the corrupted docket'in this case under color of

law [U. S. 0. Price, 86 S. Ct’ 1152, 1157], there have been -

systematic violations of the 14th and 5th Amendments! "equal

protection" clauses [Frontiero:'0. Richardson, 93 S.Ct. 1736, 411 —

U.S. 677; Weiss 0. Weiss, 436 N.Y.S..2d. 862, 52 N.Y. 2d. 170

(1981)] with serious implications [Gass 0. Lopez, 95 S. Ct 729;

Wood 2. Strickland, 95 S Ct 932: U.S. 0. Price, 86 S Ct 1152, 1157,

Footnote 7; Griffin 0. Breckenridge, 91 S Ct 179D;: Gamez 0.

Toledo, 42 U.S.C. §1983, and Bivens v. Six Unknown Named ~

Agents of Fed. Bureau of Narcotics].

This protection of due process has been denied to

Petitioner. The Vecision ignores the American Bar

Association's comments on new description guidelines of the

PTO which says that the PTO should be "technologically

neutral. ;

http:/ /www.uspto.gov/web/offices/com/soi,/comments/

utilitywd/aba.pdf

This denial and other matters discussed, including the

missing pleadings, and simply do not comport with any

notion of fair play of justice.

This behavior does not comport with any notion of fair play

or justice. Discrimination has previously been important to

this court. *“““*-7 | |

“* . 7 Civil Rights Acts of 1964 and 1991, the Americans with

Disabilities Act of 1990, the Voting Rights Act of 1965, the Equal

Credit Ng amend Act, the Equal Educational ortunities Act of

1974, the Individuals With Disabilities Act, the Equal Pay Act of

1963, the Age Discrimination in Employment Act of 1967, the Age

Discrimination Act of 1975, the Rehabilitation Act of 1973, Title IX of

the Education Amendments of 1972, the Community Reinvestment

Act of 1977, the Immigration Reform and Control Act of 1986, the

Fair Housing Act of 1968, the Family and Medical Leave Act of 1996,

and Executive Order 11246 (1965) as amended by Executive Oriier

11375 (1967).

27

oe

-»

e3 CONCLUSION

This case may initially appear to be de minimis because it

involves measurement of small amounts of heat energy, but it

is of great and compelling importance when measured by

either the particular constitutional mandate of Art. I, §8, cl. 8,

or in the light of the number of people dependent upon

energy monitoring, efficiency and utilization, and upon

alternative energy sources in a time of War.

"Today's patent statute is remarkably similar to the

law as known to Jefferson in 1793. Protection is

offéred to "[w]hoever invents or discovers any new

and useful process, machine, manufacture, or

composition of matter, or any new and useful

improvement thereof." 35.U.S.C. 101

[Bonito Boats, Inc. v. Thunder Craft Boats, Inc.}

The original above-entitled specification, '457, [A148, Claims

13-14, 23-22, and 24-39 (all pendi :g claims)] taught a written

description of how the heat-proc:ucing activity of a sample

can be measured by a multiring calorimeter. Petitioner set

forth the best mode contemplated distinctly pointed out and

claimed the subject matter which constitutes the invention,

wrote am adequate and enabling disclosure, and thus

complied and conformed with 35 U.S.C. §112, first pavagraph,

of the Patent Act by teaching the subject matter, and distinctly

pointing out and claiming the subject matter which

constitutes the invention, including the best mode

contemplated.

The Office's claim that there is a "lack of operability" under

35 U.S.C. §112, 91 and "lack of utility" under 35 U.S.C. §101

has only been made by the Office systematically ignoring the

original specification and claims, by ignoring the

timely-submitted unrebutted Declarations

(A52,A55,A56,A58,A61,A28, A32,A36,A38,

A44,447,449,A50), by ignoring scores of Exhibits [~140

pounds, A19, A71], and by ignoring the Office's own rules

and even previous Orders by the Board demanding a

onse to the Declarants regarding material matters of fact

(operability and utility).

ad

cd

_ Despite the Office's notions, validation comes through

peer-review. (Swartz. M., 1997, Fusion Technology, 31, 63-74]

and by testimony of those’ skilled-in-the-art (Rotegard(A47),

Swartz{A28), Bass(A32), Fox(A44 and A56), Mallove(A38 and

~ 58), Chubb (A52), Verner (A36), Kurzweil(A51), Rothwell’.

(A61), Ahern(A50), Schaffer (A55), and Miles(A49) [In re =<

Wands]. In this case, affiants have rendered testimony that .

there is enablement (a question of law; In re Fouche). The

peer-reviewed publication (Swartz(97)] and Deciarants

(A52,A55,A56,A58,A61, A28,A32,A36,A38,A44, A47,A49,A50)

confirm that the present method to measure heat producing

activity of a sample, ‘457, has bot’: operability and utility.

Thus, the publication and Declarants herald operability and

utility, and thus enablement both de facto and de jure.

The Office's notions reveal that the Decision reads not on

the original specification and claims, but instead on art cut of

a cloth other than this invention and these claims. This

nonsubstantive response containing numerous. false

statements all contradicted by record [Table 3; A147] proves

that the Office's notions are quite weak, heralding —. the

need for allowance of the present invention.

This Petition has authority because Congress has

"encourage(d) progress" [Diamond v. Chakrabarty, 447 U.S. 303

(1980), 447 U.S. 303, No. 79-136, quoting Deepsouth Packing Co.

v. Laitram Corp., 406 U.S. 518, 530 -531 (1972); Graham 0. John

Deere Co., 383 U.S. 1, 7 -10 (1966)] and ingenuity [447 U.S. 303, .

309], and has precisely defined ne statutory: subject

matter to include

"anything under the sun that is made by man."

[S. Rep. v.1979}-82d°Cong,, 2d Sess., 5 (1952); H. R. Rep.

No. 1923, 82d Cong., 2d Sess., 6 (1952)].

There is no doubt that Congressional intention and

meaning, and that of the statute, was to include an invention

involving energy efficiency and monitoring. Petitioner, the

amicus curiae and Declarants, and many of the affiants in this

case associated with the Navy, Air Force, and other agencies,

would probably submit that the Office is wrong for inventions

related to energy.

29

EEE

“ye

Attention of this court is directed to the fact that when a

previous similar case of the Petitioner v. the Patent Office on

this matter was submitted to this court [00-1191], the Patent

Office and Mr. Dickinson did not even bother to submit a

Brief. This is more than an appearance of impropriety. In

addition, if this court had taken that’ Petition, then there

probably would have been enforcement of the US

Constitution [Article I, Section 8, Clause 8], and the intent of

the Constitutional framers and Congressional directive

[Diamond v. Chakrabarty]. As a result, when the 911 Atrocity

arrived on the US soil, the United States would have had a

developing —now still urgently needed— alternate source of

_ energy. “a

Looking ahead, this court has final su j

over the subject matter. This court should consider this

immediately and correct this situation by simply directing the

Respondents to abide by their own Rules and standards of

review.

The Petitioner regrets any inadequacies in this Petition.

This Court has ruled that any pro se litigant is entitled to less

stringent standards (U.S. Rep volume 404, pages 520-521

(1972)].

Wherefore, Petitioner respectfully requests that for the

above reasons that this Petition for Writ of Certiorari be

granted.

Very respectfully submitted,

MbLdA Duy,

Mitchell Swartz, ScD, MD

pro se, Petitioner

P.O. Box 81135

Wellesley Hills, MA 02481-0001

In THE

Supreme Court of the Hnited States

Mitchell R. Swartz, Petitioner

Vv.

Nicholas P. Godici,

Commissioner for Patents,

Respondent

On Petition For A Writ Of Certiorari

To United States Court Of Appeals

For The Federal Circuit

02-1240 (Serial No. 08-406,457)

APPENDICES

ft

APPENDIX A -

DECISION 02-1240 (Serial No. 08/406,457)

Issuing Court: US Court of Appeals for the Federal Circuit

Number of Case: 02-1240 (Serial No. 08/406,457)

Date of Denial: 11/08/02

Mitchell R. Swartz 2 Ao from the decision of the United

States Patent and Trademark Office ("PTO") Board of Patent

Appeals and interferences ("Board"), Appeal No. 1998-2593,

p< sa the examiner's final rejection of claims 13, 14, 21, 22,

and 24-39 of application ial No. 081406,457 for lack of

operability or utility under 35 U.S.C. §101 and for lack of

= under 35 U.S.C. § 112, 91. We affirm the Board's

ecision. |

"The question of whether a specification provides an enablin

dintiolene under §112, 41, and mee an a lication

satisfies the utili t of §101 are closely related" .n

re Swe rtz, 232 F.3d 862, 863, 56 USPQ2d 1703, 1703 (Fed. Cir.

2000) ("Swartz 1"). In order to be -mabling, a patent

specification must teach those skilled in the art how to make

and use the full scope of the claimed inveiiition without undue

iiaentation. Enzo Biochem, Inc. v. Calnene, Inc., 188 F.3d

1362, 1371, 52USPQ2d 1129, 1135 (Fed. Cir. 1999) as

Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365,

USPQ2d 1001, 1004 (Fed. Cir. 1997)). Under §101, any

patentable invention must be useful and, ee the

subject matter of the claim must be operable. Process trol

oN 190 F.3d 1350, 1358, 52 USPQSd 1026, 1034 (Fed. Cir.

1999). As a result, if the claims in a patent application fail to

meet the utility requirement because they are either not useful

or inoperative, they will also fail to meet the enablement

ge geeng See id., 52 USPQ2d at 103435; see also Swartz I,

232 F.3d at 863, 56 USPQ2d at 1704 ("[I]f the claims in an

application fail to meet the utility requirement because the

invention is inoperative, they also fail to meet the enablement

j t because a person skilled in the art cannot practice

the invention.". A claim that requires a means for

accomplishing an umattainable result is necessarily

inoperative and will consequently be held invalid under either

§101 or §112. Raytheon Co. v. Roper Corp., 724 F.2d 951, 956,

1. The Board also reversed the examiner's rejection of claims 3438

of Swartz's application under 35 U.S.C. §103. The PTO does not

crossappeal this portion of the Board's decision.

32

-

220 USPQ 5927 596 (Fed. Cir. 1983). Utility is a question of

fact, In re og 165 F.3d at 1353, 1356, 49 USPQ2d 1464,

1465 (Fed. Cir. 1999), while lack of enablement is a question of

law based on underlying factual inquiries. See Nat'l Recov

Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1156,

1194, 49 USPQ2d 1671, 1674 oi Cir. 1999).

On appeal, we review the Board's findings for fact for

substantial evidence. See In re Gartside, 203 F.3d 1305, 1315,

53 USPQ2d 1769, 1775 (Fed. Cir. 2000). We review questions

of law de novo. See In re Wright, 999 F.2d 1557, -1561(Fed. -

Cir.1993).

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. See In re

Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir.

1995). Once the PTO furnishes evidence demonstrating that

one of ordinary skill in the relevant art would reasonably

doubt the asserted utility of the invention claimed in the

application, however, 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, 56 USPQ2d at 1704. As this court held in In re

Brana, 51F.3d at 1566, 34 USPQ2d at 1441, the PTO may

establish a reason to doubt an invention's asserted utility

when the written description "suggests an inherently

unbelievable undertaking or involves implausible scientific

principles."

In the instant case, the Board concluded that the record

evidence supported the examiner's finding that Mr. Swartz's |

claims are directed to the accomplishment of an ‘unattainable

result,’ ie. a result that is not attained in a reproducible

manner,” namely cold fusion. Reviewing the references relied

on by the examiner in support of its lack of utility

determination, the Board determined that "there is substantial

evidence of record that results in the area of 'cold fusion’ were

irreproducible as of the filing date of this application, and that

those skilled in this art would ‘reasonably doubt’ the asserted

utility and operability of cold fusion.” The Board further

concluded that Mr. Swartz had failed to demonstrate that cold

fusion could be reproducibly carried out as of the filing date

of his application. Pursuant to Mr. Swartz's request for

33

x

reconsideration, the Board reviewed its initial decision,

oo declining to modify that decision.

ppeal, Mr. Swartz argues that the Board's conclusion

on ie er ae oe reasons. First, he

asserts that the Board erred by limiting its utility analysis to

the question of cold fusion because his claimed invention

possesses utility outside this realm. As the Board stated on

Mr. Swartz's request for rehearing, however: a

Throughout his application, throughout the

tion, and throughout his briefs, appellant has

maintained that his invention relates to and

. embodies the concept known as "cold fusion." We

have scoured appellant's brief and his reply brief and

are unable to find therein any reference to the

argument now raised by appellant in his request for

reconsideration ee utility other than “cold

fusion". —

Because Mr. Swartz made no representations that his

claimed invention related to anything other than cold fu:ion.

in his written description and throughout the prosecutioi: of

this application, he may not now make such representations

on appeal. See Swartz I, 232 F.3d at 864, 52 USPQ2d at 1704

("Mr. Swartz's attempt to show that his claims are directed to

a process other than cold fusion must fail. In his written

description and throughout prosecution of his application,

Mr. Swartz continually represented his invention as relating

to cold fusion.") Mr. Swartz's second argument, that the Board

erroneously ignored several declarations, exhibits, and

references that demonstrated the utility of his claimed

invention, is equally unconvincing. The Board's decision

reveals that it based its conclusions on a careful examination

of the evidence of record, including those references that Mr.

Swartz now alleges it disregarded. As the Board found, "the

list of references cited by appellant reports experimental

studies that present results that may indicate the presence of

[cold fusion]. However, this is insufficient to establish utility

and enablement within the meaning of the relevant sections of

the statute."

,

-

On the issue of enablement, Mr. Swartz again argues that

the Board erred by focusing on cold fusion and. ignoring

relevant declarations, exhibits, and references. For the reasons

stated above, however, these assertions lack merit. Moreover,

as the Board correctly concluded, Mr. Swartz's claims failed to

meet §101's utility requirement. As such, these claims could

not be enabled under §112, 1, and the Board therefore did not

err when it affirmed the examiner's rejections of Mr. Swartz’s

application on this ground.* See Process Control Corp., 190

F.3d at 1358, 52 USPQ2d at 103435. Finally, as to the host of

unsupported legal theories that Mr. Swartz advances in

support of his claim, we have considered those arguments

and find them entirely unpersuasive. Accordingly, the

judgment of the Board is affirmed.

AFFIRMED.

Before CLEVENGER, Circuit Judge, FRIEDMAN, Senior

Circuit Judge, and PROST Circuit Judge. PER CURIAM.

2 The Board analyzed Mr. Swartz’s application in terms of claim

13, which it found to be representative. On appeal, Mr. Swartz

takes issue with this analysis, arguing that his claims do not stand

or fall with claim 13. Because Mr. Swartz's claims are all directed

to cold fusion, however, and because the Board properly

concluded that Mr. Swartz had failed to prove that cold fusion

could be conducted in a reproducble fashion at the time of the

application's filing, the question of claim 13's representative

nature is irrelevant, and we therefore do not discuss it further.

= Z . it

APPENDIX B -- ORDER DENYING REHEARING

DECISION 02-1240 (Serial No. 08/406,457)

Issuing Court US Court of Appeals for the Federal Circuit

Number of Case: 02-1240 (Serial No. 08/406,457)

Date of Denial: 12/3/02

ORDER

Before CLEVENGER, Circuit Judge, FRIEDMAN, Senior

Circuit Judge, and PROST Circuit Judge.

A petition for rehearing having been filed by the

APPELLANT,

UPON CONSIDERATION THEREOF, it is ORDERED that

the petition for rehearing be, and the same hereby is,

DENIED.

The riandate of the court will issue on December 30, 2002,

unless anothe- time becomes appropriate under Rule 41.

FOR THE COURT,

-s Jan Horbaly

; Clerk

Dated: December 3, 2002

FILED

U.S. COURT OF APPEALS FOR

THE FEDERAL CIRCUIT

DEC 3, 2002

CC: Mitchell R. Swartz

John M. Whealan

Note: Pursuant to Fed. Cir. R. 47.6, this order is not citable

as precedent. It is a public record.

36

”

APPENDIX C- Decision of BPAI

Appeal No. 1998-2593 (Serial No. 08/406,457).

Issuing Court Board Of Patent Appeals And Interferences

Number of Case: Appeal No. 1998-2593 (SN 08/ 406,457)

Date of Decision: -7/27/01 . | :

This is an appeal pursuant to 35 U.S.C. §134 from the final

rejection of claims 13, 14, 21, 22 and 24 through 39, all the

claims in the application. The subject matter of the claims on

appeal is directed to so-called “cold fusion” technology

(Specification, pp. 3-7) Representative claims 13 and 34 are

reproduced below:

13. Ina for producing a product from a sample of

nickel which is loaded with an isotopic fuel using electrolysis, a

method to determine the optimum electrical drive condition for

said sample and thereby characterize said sample that comprises

in combination

holding said sample into a calorimeter containing more than two

rings with barriers between said rings, ; a

filfin with a the volume between each said ring,

supplying said i:.topic fuel for said loading into said materia .

oadang said iso: opic fuel into said sample by means of a pc wer

supply and electrical circuit,

thermally monitcring said liquid in each said ring,

deriving the thex response of said sample by computati nal

means wiper po, accounting for the mass and temperature

distribution of at least one barrier between said rings,

increasing through a series of at least three incremental steps the

electric power drive conditions of said electrical circuit,

deriving for each said step data consisting of the thermal output

selaticomip of said sample as function of said drive steps, thereby

deriving an optimum drive condition of said sample.

34. In a process for producing a product from a sample of a

material which is loaded with an isotopic fuel, a method to

maximize the quantity produced of said product by said sample

that comprises in combination;

loading said sample with said isotopic fuel by driving said

sample as a cathode in combination with an anode and an

electrical power supply, ;

morutoring said product obtained from said sample of material,

varying the input electrical drive conditions,

integrating the accumulated data to determine the optimum

electrical drive condition for said sample of material,

a erga said sample by the peak relative output of said

product at said optimum, and

driving said sample at said optimum input electrical drive

condition.

37

Aaa i ner

Ft

:% , a

Prior art references relied upon by the examiner as evidence

of obviousness are: 3

Pons et al. (Pons) WO. 90/10935 Sep. 20, 1990 (published World Intell.

Prop. Org. Application)

Fleischmann et al. (Fleischmann ‘93), “Calorimetry of the Pd-D20

system: from simplicity via complications to simplicity,” 176 Physics

Letters A, pp. 118-29 (1993)

References of record2 relating to cold fusion theories

published following the initial report by Fleischmann and

Pons (._Electroanal Chem., “Electrochemically induced

nuclear fusion of deuterium,” 261 J. Electroanal. Chem., pp.

301 —08(1989)) are: |

Aspden, GB 2 231 195 B, Jul. 11, 1990 (published Great Britain Patent

a oe gery -

agli et al. (Albagli), “Measurement and is of Neutron and

Gamma-Ray Emission Rates, Other Fusion Pr , and Power in

Electrochemical Cells Having Pd Cathodes,” 9 Journal of Fusion Energy,

no. 2, pp. 133 — 48 (1990)

Alber et al. (Alber), “Search for Neutrons from ‘Cold Nuclear Fusion’,”

333 Phys. A — Atomic Ni:clet, pp. 319 — 20 (1989).

Balke et al. (Balke), “Limits on neutron emission from ‘cold fusion’ in

metal hydrides,” 42 Physical Review C, no. 1,

. 30 — 37 (July 19 |

cele al. (Beznbacher), “Search for Cold Fusion in

eg ge mer 90)" Ti-D Systems,” 9 Journal of Fusion Energy,

no. 3, pp. 315 -

Bis PP Cusion Brouhaha May Be Settled Soon by Helium Test,” The

Wall Street Journal, p. B4 (May 10, 1989)

Bishop et al. (Bis can “U.S. Researcher Claims to Replicate

jae t pea in Fusion’,” The Wall Street Journal, p. B4

Ee ‘(Bishop ‘93), “It ain't over till it’s over... COLD FUSION,”

Pooular Science, Pe. 47 — 49, 51, 82 (Ang. 1993)

Bishop (Bishop ‘96), Untitled, The Wall Street Journal, unnumbered

pa , jn : << 6). reprinted in Clean Energy Technologies, Inc.,

Pposch a al. (Bosch), “Electrochemical Cold Fusion Trials at IPP

Garching,” hernia of Fusion Energy, no. 2, pp. 165-82, 184-86 (1990)

Browne, “’Fusion’ Is Gr With Scorn by Physicists,” The

New York Times, PP- A2, A22 (May 1989)

Bush et al. (Bush), “Hektum production during the electrolysis of D2O

05) fusion experiments,” 304 J. Electroanai. Chem., pp. 271-78

Chambers et al. (Chambers), “Evidence for MeV Particle Emission

From Ti Charged with Low Energy Deuterium Ions,” NRL

song? args} Report 6927, pp. 1-3 (Washington, D.C., Nay. Res. Lab,

ec. 10,

2 Several of these references were cited in the prosecution of

Applications 07/339,976, filed April 18, 1989; 07/371,937 filed June

27, 1989; and 07/760,970, filed September 27, 1991, all of which were

identified by the appellant as applications with related appeals

(Appeal Brief, Paper No. 25, p. 4).

38

”

?

~ Chandler, “Government nds evidence cold fusion is real,” The

Honolulu ‘Advertiser, 1 ered My 5, 1508 1989), !

Chapline, “Cold Fusion,” pence age the NATO

Advance Siudy Institute ont the ‘Nuclear

(P ola, S 1989) VERL. N Sie 7 . tee 4

emisc May, 0. ermore,

La National Labor ily 1569)

CA, Lawrence Livermore Ni 9)

so” “An Odyssey of Sorts,” Discover ‘N or nt pp. 68-69 (May |

Cooke, Rein: sage | of Foreign Travel y! é FE. Cooke” Memorandum_in

| ORNL Py, ort (O -3341), pp. 1-8, 10-15 (Oak

Rid Rudge Nationa Laboratory, 198. ). - '

C ra rg Ridge ier), “Conventional ources Of Fast Neutrons In

‘Cold Fusion ts,” 228 PHYSICS LE B, no. 1, pp.

Bag me wi "99), Cold fusion takes a licking, but keeps on

a ‘ “Co a t

scans Chemical & Engineering News, 1 senmumbered page, (Mar.

aa (Dagani Chemical & Engineertn “Latest Cold Fusion Results Fail To Win Over

Saag ve ie 38-41 (June 14, 1993)

Pong ‘et al. (Ewing), Gi A Senstit Detector Neutron Counter

Used to Monitor Fusion’ Experiments in an Underground

Labowelbiee Negative Results and Positive re ,”. 37 TEEE

Transactions on Nuclear Science, no. 3, toy abe ag a

jor: et al. (Faller), “Investigation hag 7 ix Heavy Water,”

. Radioanal. Nuci. Chem.. , 10. on 9-16 (1989)

"Femme et al. (Fleischmann ‘e * ly indu

may fusion of deuterium,” 261 J. Siecercanal: Chem., it 301 - 08

Fleischmann et al. (Fleischmann ’93), zapee to Criti

gai al sitasiaciih ania eio , pp. 1-2, 6, 8, ‘o- : Pall

Fleming et al. Ferseene. 9 “Calorimetric Studies of Electrochernical

Incorporation o yy Pkt oy ac Gse0h into Palladium,” 9 Journal of Fusion

Energy 0.4 a

F Japanese laim Generates New Heat,” 256 Science, p.

438 (April 24, 1992)

Gozzi et al. ‘Coz “Nuclear and Thermal E During Electrolytic

Reduction of Deutertum at Palladium Cat ” 9 Journal of Fusion

Ener 241-43 (1990).

Hadfield, “lkewarm 7 for ead cold fusion,” New

Scientist, p. 10 (Oct. 31, 1993)

ee & al. (Hajdas), “Search for Cold — Fusion Events,” 72 Solid

ong nications, no. 4, pp. 309-12 (Great Britain, Pergamon

SS,

Hagelstein, “Coherent Fusion Theory,” 9 Journal of Fusion Energy, no.

4, pp. 451 — 64 (1990 i f -

Henderson et al. (Henderson), “More Searches for Cold Fusion,” 9

Te Giom Fusion Energy, no. 4, pp. 475-77 (1990)

ais cant Errors In Utah Fusion Experiments,” The

oe on 8 ost, vag Al, A7 2, 1989).

; REVIEW - BAD SCIENCE: The Short Li

Nar Times =f Cold Fusion,” 25 Fusion Technology, pp. 225-27 oo

1

Huggins (Tugs 94), “Cold ence gathers fuel

thougnt”, 1 Cold Fusion, no. 1, pp. Be F388) . a ad

39

Huizenga, Cold Fusion: The Scientifi c oe 4 ithe Century, New

Uti, ix, x, xt, 22—40, 59-89, 8 89, 201 - and 240-5

York, Unio. Rochester Press, 1992)

ue et al. (Jin), “Deuterium Absorbability And Anomalous Nuclear

YBCO High Temperature S 5 Hen ” ICCF-4, Abstract,

56 (end i J din), a x

oS ee et al. od Easton Expolmenta” 99 1° Phys.

in Pons-Fleischmann-

-_ no. 18, pp. 6966- en Chem Soc., 1995)

00%" Proce tek ae yes of Water Sehr, coae

aes)" during Elect Fusion Meee” 99 J. Phys. Chem., no. 18, pp. 6973-79

‘Faiabae, “Cold Fusion - Science or Religion?,” 39 Research &

no. 5, pp. "hy 56 ol pin sole of

Development,

Kreysa et al. (Kreysa), “A cede yy, othe electrochemical nuclear

fusion experiments,” 266 J. Siechremedl , pp. 437-50 (1989) -

Kucherov et al. Racterooy, “Calorimetric and and Nuclear Produ cts

Measurements at Discharge in Deuterium; Abstract,” ICCF-4, p.

N ales ol. (Latta), “Searches l-temperntre nucle fusion of

, “Sear Te Nuc ion Oo

gyorg yr gp Mont. toa 525.30 (Aug. 17, 1989)

Lonchampt et al. (Lonchampt oduction of Fleischmann and

Pons Ex zeriments,” ICCF-6, 6b 7) ok

Mallow: (Mallove *91), ither Cold Fusio.: ?,” Fire from Ice, (New

York, * hang Wiley & Sons, Inc., 1991).

Fey i publishing fiasco of the century,” Cold Fusion, pp.

(

Matsumoto et al. (Matsumoto), “Observat.on of H Elements

Produced Durin aed Cold Fusion,” 20 Fusion Technology, pp.

323 —29 (Nov. 1991)

Melich et al. — “Some Lessons from 3 Years of Electrochemical

Jonna te Frontiers of Cold Fusion, pp. 397-400 (Universal

ess, Inc., 1993)

Ponte et al. (Menlove), “Measurement of Neutron Emission from Ti

and Pd in Pressurized D ‘Gas and D20 Electrol Ceils,” 9 Journal of

Fusion Energy, no. 4 . 495-497, 499, 501, 503 5 505 (1990)

Miles (Miles ‘92), “ to Editor,” Science Magazine, 4 unnumbered

4 an. 17, 1992)

Miles et al. (Miles y Heat And Helium Measurements in Deuterated

See sone i Ie 2 1-2, (China Lake, CA, Chemistry Division, Naval Air

Weapons Division, Dec. 1993)

Mi et al. (Miles ‘94B), “Anomalous Effects Involving Excess Power,

Radiation, And Helium Production During D20 Electrolysis Using

Palladium Cathodes,” 25 Fusion Technology, pp. 478-86 (July 1994)

Miles et al. (Miles ZI), “Anomalous ects in Deuter. Systems

= al Abstract, 1 unnumbered page, . Naoy, OMB Document No.

— 0188 1996)

{sent 195 Memo), Memorandum to Dr. Robert W. Bass, pp. 1-9

Miller fo

(Oct. 9, 1997)

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suppressed research, s BP 3-11, 24—37, pV Engley 37.

26 Trans. of Fusion Technology,

Miskeily et al. ( kelly), “ the Published Calorimetric

Evidence for Electrochemical Fasten of eutertum in Palladium,” 246

Science, no. 4931, pp. 793 — 96 (Noo. 10, 1989)

40

Ld

-

Mizuno et aa. (Mizuno), | “Anomalous Heat Pee’ se aie

SrCeO3-Type PrQton Conductors durin of

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(Dec. 1993)

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<http: * eptoanany /jlogajan/files/ar omiccfo.txt> Jan.

iyo ta ers), "Search for Cold Fusion at D/Pd >1 Using Ion

of Fusion Energy, no. Bs PP: 63-68 (1990

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” NASA orandum 107167, pp. 1-20 (1 ag

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ninskt pea “Notes = Two _ P, Claiming No

pore 163 (March 1992). 3 -

Nonins Net Papers

Evidence For © Bh nd china, | During The Electrolysis

7 _ tf x HO3/ba0 Wile ’ ” 23 Fusion Technology,

(Ju

Pe 3 -The Form PTO-144s March 17, 1997 erroneously lists this

- document a: ag Vol. 19 of Fusion sion Technology (1991

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. wig foyrnat of Nuclear Science and Technology no. 7, pp.

- u

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Rehn et al. (Rehn), “ Tatornalie on Col

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Bulletin. NAVSO P-3580, no. 1, pp. 81-90 (Office of Nav Research

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Salamon et al. (. Salamon), “Limits on emission of neutrons, YO,

electrons “ om Pons/Fleischmann clectrotytic cells,”

Nature, pp. 40 8 (March 29, 1990)

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Generation Process oton Solid Electrolytes,” ICCF-4,

Abstract, 2 unnumbered pages (Dec. 1993

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Deuterium Glow Discharge — 26 Transactions of Fusion

Technology, pp. 389-94 (Dec. 1994)

Shazti ef al. Shani), mainte a Background Neutron Enhanced

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1

41

oe a e-

: -

Silvera et al. (Silvera), “Deuterated at res from 4.3

to 400 K and pressures to 105 kbar: Sear teagan :

pve tetig no. oe ee (Noo. 15, 19 Lattice:

F Z of ery in an Atomic An me

aonanowdt tatus usion Research,” (Proposed Sextlon

in Current Science ae 1991))

Stipp, aE te Val cee beat Bane ee

‘Cold Fusion’ ” The Wall Street — B4 (April 26, oom

Storms et al. Mens uly 1990)" ction,” 17 Fusion

Storms fol ee “94C), TS ohne Characteristics of Heat Production Using

the ‘Cold Fusion’ Efect* 26 Transactions of Fusion Technology, pp.

96-100 (Dec. 1994).

Seen ermine Feo tats Becton, Pest

~ 92

Goats, ad “oan One Dimensional Model of Electrochernical Loadin ny

isotopic Fuel into A Meta," Fusion Couple bP. 1-15 (March 19

Swartz, ic Fuel Loadin 0 Reactions At An

ne 7 unnumbered pages 3 (Weston, Mt eston, MA, JET Technology, Dec. 26,

Taubes, BAD SCIENCE: The Short Life and Weird Times of Cold

Fusion FO scot eian ie a :- Namal’ ee a Tas

“Confusion in a Jar, ri 1C.,

(Show #1803, NOVA, April 30, 1991) rv ™

Wall, 1 Investigation of Cold F ssion Phenomena in Deuterated N.ztals,

Foi) ee 1-31 (Salt Lake City, UT, National Cold Fusion Institute, lune

Ziegler et al. (Ziegler), “Electr-chernical ts in Cold Nuclear

Peg) PHY CAL REVIEW LE , no. 25, pp. 2929-32 June

The appealed claims 13, 14, 21, 22 and 24 through 39 stand

rejected under 35 U.S.C. §112, first paragraph, enablement

requirement, and under 35 U.S.C. §101 for lack of operability

or utility. Additionally, appealed claims 34-38 also stand

rejected under 35 U.S.C. §103 over Pons or Fleischmann ‘93.

BACKGROUND

In the spring of 1989, electrochemists B. Stanley Pons of the

University of Utah and Martin Fleischmann of South

Hampton University in England reported that they had

successfully carried out a sustained nuclear fusion reaction at

room temperature (ie., “cold fusion”) in a small jar on a

laboratory table top (Fleischmann ‘89). The Pons/ Fleischmann

experimentation involved operation of a common electrolytic

cell with a palladium cathode and a heavy water (deuterium

oxide) electrolyte solvent The cells used

Pons/Fleischmann were part of a calorimeter‘ whose

temperature rise on a few occasions indicated about 10

percent more power leaving the cell than the electrical power

42

mmimepiieiri sc ee

P.

used to run it. Pons/Fleischmann also thought that they had

detected a gamma radiation characteristic of neutrons passing

through water. | oe ele

That palladium was a metal capable of absorbing large

amounts of gaseous hydrogen was well known, and in the

Pons/ Fleischmann cold fusion” apparatus, deuterium (heavy

hydrogen) ions (D+ ions) allegedly appeared to go into the

palladium cathode’s crystal lattice about as readily as regular

hydrogen ions (H+) However, what generated great

skepticism for those skilled in the art were the claims of

Pons/ Fleischmann that a sustained nuclear fusion reaction at

room temperature had been demonstrated which allegedly

produced great amounts of energy, for example, four watts of

power for each watt of input power. 5

A part of the record before us in this appeal involves

publications describing the contemporaneous attempts of

those skilled in the art to duplicate the Pons/Fleischmann

results. The experimentation described in these documents

constitu @s compe iing objective evidence justifying the initial

disbeliei of those skilled workers in the Pons/Fleischmann

promise of clean, cheap, and abundant energy without side

effects from “table’op” cold fusion.

Exemplary of the initial reports from skilled workers is the

statement from the coid fusion team at the United Kingdom

Atomic Energy Authority at Harwell (see Cooke, p. 5) that

after a comprehensive experimental program involving a

monumental effort attempting - to vverify the

Pons/ Fleischmann cold fusion claims that | .

“In none of these experiments was there any evidence of fusion taking

place under electrochemical conditions.”

and there was no evidence of excess heat generated by any

of their cells.

In similar fashion, a team of scientist at the California

Institute of Technology (see Lewis, p. 525) indicated that

With a variety of metallurgical pretreatment procedures and different

electrolytes, no evidence has been obtained for any excess enthalpy,

neutron, gamma ray, tritium or helium production during electrolysis of

D20 with palladium cathodes. [Emphasis added.]

. Likewise, researchers at Sandia National Laboratory (see

Ewing, p. 1165) reported that

4 See page 1 of Kee, “What is the current scientific thinkin on cee

fusion? Is there any possible validity to this phenomenon?,” Scientific

American, circa 1997), on line

Prnve tl /www.scam.com/askexpert/physics/physics6.html> (copy

attached)

43

fF

=%

None of the more than thirty cold fusion systems that we investigated

produced amy detectable neutron emission, with an average statistical

ceutaieay af 4 wauintin pet taut (one ceauiel dulled. No

significant neutron bursts were detected. .

And from a team of researchers at the Massachusetts

other evidence a fusion Products was detected. flanphanie original. ]

Finally, in criticizing the Pons/ Fleischmann report,

ona = in his book entitled “Cold Fusion: The Scientific

Fiasco of the Century,” —— at p. 39 that

the craving notoriety patent ri took precedence over

following 7 2 anil prsnereg rooeh me

Against the above background of skepticism and failure of

experimenters worldwide to reproduce the results allegedly

obtained by Pons/Fleischmann, appellant filed, inter alia,

Applications 07/371,937 on June 27, 1989 and 07/760,970 on

September 17, 1991 respectively directed to “methods and

systems to monitor and accelerate electrochemically induced

nuclear fusion reactions” and “methods and systems to

control cold nuclear fusion.” In each of these applications,

“cold fusion was treated as though it were a well-known,

readily reproducible process. However, in each of these earlier

applications, the. examiner’s rejections of the claims for lack of

operability or utility under 35 U.S.C. §101 and lack of

enablement under 35 U.S.C. §112, first paragraph, were

sustained by the Board. See the Board’s decisions in Appeal

Nos. 1994-2921 and 1994-2920.

Significantly, in In re Swartz, 232 F.3d 862, 864, 56 USPQ2d

1703, 1704 (Fed Cir. 2000), in an appeal from the Board’s

decision entered in Appeal No. 1994-2920, our reviewing

court stated that the “PTO provided substantial evidence that

those skilled in the art would ‘reasonably doubt’ the asserted

utility and operability of cold fusion,” based on several

references showing that results in the area of cold fusion were

ucible.” Further, the Swartz court indicated that based

on the PTO’s finding that the application contained no

disclosure of any operative embodiment, to practice the

invention, a person of ordinary skill in the art would have had

to rely on the art known at the filing date, 7 September 17,

1991. Since evidence was not of record that “the concept of the

invention could have been practiced by a person skilled in the

art at the time of the invention without undue

5 - See Huizenga, second full paragraph at page ix.

oo

-

experimentation,” the court affirmed the judgement of the

Board that as a matter of law the application did not satisfy —

the enablement requirement of 35 U.S.C. §112, first paragraph.

The present application, filed approximately four years

after the 07/760,970-application reviewed by the Swartz court,

is said to involve “a novel method and system to examine a

material for activity concerning the desired reactions.” See the

Specification, page 7, last paragraph. Referring to the “proper

loading” of palladium with enough. physically absorbed

deuterium to obtain the “desired reactions,” appellant again

presumptively asserts in his Specification that, in effect, cold

fusion is reproducible, but that “[t]he increase in

reproducibility of cold fusion has occurred as matter of

isotopic fuel loading has been applied.” (Emphasis original.)

See the Specification at p. 6, lines 12 and 13. In this regard,

appellant contends that many negative” results may be

caused by “inadequate loading,” the “failure to monitor said

loading,” or the “failure to activate which problems are

allegedly solved by following the teachings in, inter alia,

a.pellant’s applications 07/760,970 and 07/371,937, neither of

which disclosed an operative embodiment. See the

specification at p. 6, lines 1-17 and the respective prior Board ne

drcisions. Thus, appellant in this appeal, again by presuming

that “cold fusion. is a well-known, readily reproducible

process, attempts to support a finding of utility and

operability of the claimed “cold fusion” invention in part by

incorporation by reference of subject matter described in the

related applications which have previously been reviewed by

the Board and our reviewing court. |

Unlike the prior applications referred to above, however,

the present application reportedly demonstrates that

reproducible reactions are achieved when using, inter alia,

nickel spiral cathodes with platinum foil anodes under

controlled moderate current density conditions. See the

Specification at p.26, lines 8-11 and lines 19-21 and Table 3.

Apparently, the nickel cathodes are loaded by following the

teachings in application 07/371,937 and by lowering the

electrode assemblies into a chamber filled with a solution of a

LiOD and heavy water (D,O) See the Specification at p. 15,

first ful’ paragraph. Supposedly, appellant’s described nickel

6 Numerous other lications referred to in the Answer report

similar findings and skepticism from the scientific community

regarding the purported results obtained from the original cold

45

a

cathodes possess the correct “variations in microcomposition,

morphology, crystalline defects” as well as have the correct

geometry and the correct electrical properties for purposes of

achieving the desired “cold fusion” reactions. See the

Specification at p. 19, lines 4-7 and p. 7, lines 3-5. The

“optimum [electrical] drive condition” for the nickel “sample”

is determined, in part, through the use of a calorimeter

containing more than two rings with barriers between the

rings. See appealed claim 13.

In describing Appellant Swartz’s work with nickel cathodes

in light water in a specially designed ultra-low noise

calorimeter (presumably subject matter addressed in the

present application), Rothwell’ indicates that

Swartz has spent tremendous effort designing, perfecting and

calibrating the calorimeters, which have a complex design I have not seen

elsewhere. They are boxes within boxes, and the is measured

repeatedly as it passes from one box to the next outer box. This could be a

research tool, but if your purpose is to convince people of the

reality of a phenomenon, I feel it is a mistake to use a new calorimeter

design. People x il say your results are artifacts from a new, untested

design. They wil, have no experience working with similar instruments,

and no basis to judge whether your instrument is working or not.

Cold fusion is rtysterious enough; you should not investigate it with

mysterious and exotic instruments, unless you have no choice...

Thus, appellant in this application seeks to establish the

concept or phenomenon of “cold fusion,” in part, through the

use of data obtained by “exotic” instrumentation which itself

raises immediate questions as to its operability.

THE REJECTIONS UNDER 35 U.S.C. §112

AND 35 U.S.C. §101

We address the rejections of the appealed claims under 35

U.S.C. §112, first paragraph, “enablement requirement,” and

7 - The sufficiency of an application disclosure under Section 112,

first paragraph, “enablement requirement,” must be judged as of its

filing date. “It is an applicant’s obligation to supply an enabling

disclosure without reliance on what others may publish after he has

filed an application on what is supposed to be a completed

invention. If an applicant cannot supply enabling information, he is

not yet in a position to file.” In re Glass, 492 F.2d 1228, 1232, 181

USPQ 31, 34 (ccpA 1974) . Thus, an appellant cannot cure an

insufficient disclosure by relying on publications or other material

lished after the filing of an application uniess it is shown that

_sach later publications are evidence of the state of the art existing on

the filing of the application. In re Hogan, 559 F.2d 595, 605, 194

DSPQ 527, 537 (CCPA 1977)

46

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id

under 35 U.S.C. $101 together, since these rejections involve

questions which are closely related. Process Control Corp. v.

HydReclaim Corp., 190 F.3d 1350, 1358, 52 USPQ2d 1029, 1034

(Fed. Cir. 1999) To satisfy the “enablement requirement” of

the first paragraph of Section 112, a patent application must

adequately disclose the claimed invention so as to enable a

person skilled in the art to practice the invention at the time

the application was filed without undue experimentation.

Enzo Biochem, Inc. v. Calgene. Inc., 188 F.3d 1362, 1371—72,

52 USPQ2d 1129, 1136 (Fed. Cir. 1999). The utility requirement

_ of Section 101 mandates that any patentable invention be

operable to achieve useful results. See Brooktree Corp. _v.

Advanced Micro Devices, Inc., 977 F.2d 1555, 1571, 24

USPQ2d 1401, 1412 (Fed. Cir. 1992).' Thus, if the claims in an

application fail to meet the utility requirement because the

invention is inoperative, they also fail to meet the “how-to-use

aspect” of the “enablement requirement” because a person

skilled in the art cannot practice the invention. See Process

Control, 190 F.3d at 1358, 52 USPQ2d at 1034—35; see also In

re Ziegler, 992 F.:d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed.

Cir. 1993) (“The hw to use prong of section 112 incorporates

as a matter of law the requirement of 35 U.S.C. §101 that the

specification disclise as a matter of fact a practical utility for

the invention.”) Lack of utility because of inoperativeness is a

question of fact, Fregeau _v. Mossinghoff, 776 F.2d 1034, 1038,

227 USPQ 848, 851—52 (Fed. Cir. 1985), and the absence of

enablement is a legal conclusion based on underlying factual

inquiries set forth in, inter alia, In re Wands, 858 F.2d 731,

735 —36, 8 USPQ 2d 1400, 1402—03 (Fed. Cir. 1988). See Enzo,

188 F.3d at 1369, 52 USPQ2d at 1134.

As in the previous Swartz appeals before the Board (Appeal

Nos. 1994-2921 and 1994-2920), based on the law and the facts

of record, we again sustain the examiner’s herein stated

rejections under the above sections of the statute.

With respect to the questions raised under 35 U.S.C. §101,

initially we note the examiner's holding, by reference to his

rejection under 35 U.S.C. §112, first paragraph, that the utility

of the claimed invention is based upon allegations that would

not be readily accepted by a “substantial portion of the

scientific_commumnity.”* See the Answer at p. 11, last

“See Rothwell, “The 7th International conference on Cold Fusion

-Initial Impressions and an Overview,” 4 Infinite Energy, no. 19, p. 29

(1998), (copy attached to appellant’s Reply Brief, Paper No. 29)

47

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paragraph, and p. 15. Before utility, which is a question of

fact, is determined, claims must be interpreted as a matter of

law to define the invention to be tested for utility. Ra

Co. v. Roper Corp., 724 F.2d 951, 956, 220 USPQ 592, 596 (Fed.

Cir. 1983), cert. denied, 469 U.S. 835 (1984). Further, “[w]hile a

patent covering a meritorious invention should not be struck

down because the patentee has misconceived the scientific

principle of his invention, the error cannot be overlooked

when the misconception is embodied in the claim.” Id.

Moreover, it is for the “invention as claimed that enablement

must exist.” Id. Thus, when a claim is directed to

accomplishing an unattainable result, the claim is

appropriately rejected under either 35 U.S.C. §101 or 35 U.S.C.

$112, first paragraph, enablement requirement. Id.

The preamble of appellant's independent claims 13, 21, and

34 is directed to a process for producing a “product” from a

sample of material loaded. with an isotopic fuel. The effect

preamble language to be given is determined by reviewing

the entirety of an appellants disclosure to gain an

understanding of what appellant actually invented and

intended to encompass by the claim. See Corning Glass

Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9

USPQ2d 1962, 1966 (Fed. Cir. 1989) Appellant states in his

Specification that “it is a principal object of the present

invention to provide a novel method and system to examine a

material for activity concerning the desired reactions”

(Specification, p. 7). Appellant further states that “[a]nother

object of the present invention is to provide a novel method to

detect specific materials which demonstrate the activity

ired for potential bursts, or steady state levels, of these

reactions.” Id. We note that the only “desired reactions”

disclosed in the specification involve the reactions related to

cold nuclear fusion (Specification, pp. 3-6). In addition,

appellant identifies “excess heat” as “[t]he chief product of the

cold fusion reaction(s)” (Specification, p. 4) Helium, “ash,”

and other particles (tritium, neutrons, rare heavy elements)

are also listed among the “product{s] of... cold fusion

reaction(s)”. Id. Only cold fusion products are, thus,

encompassed by the preamble reference to “product” in the

recited independent claims.

9 To define those of skill in the art as only those people who

investigate “cold fusion” as a real phenomenon is a fundamental error

made by appellant.

48

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It is proper to use the specification to interpret what an

appellant meant by a word or phrase in the claim. See In re

Morris, 127 F.3d 1048, 1053—56, 44 USPQ2d 1023, 1027—30

(Fed. Cir. 1997). The above excerpts clearly indicate that what

appellant Swartz invented and intends to be encompassed by

the claims directly involves cold fusion reaction. As appellant

readily acknowledges in his Appeal Brief at p. 7, the “present

invention” relates to the use of cold fusion systems.

Here, since we agree with the examiner that the evidence of

record supports a finding that appellant's claims are directed

to accomplishing an “unattainable result,” ie., a result that is

not attained in a reproducible manner, we sustain the stated

rejections under 35 U.S.C. §101 and under the “enablement

requirement” of 35 U.S.C. §112, first paragraph.

Like the previous Swartz appeals, there is substantial

evidence of record that results in the area of “cold fusion”

were irreproducible as of the filing date of this application,

and that those skilled in this art would “reasonably doubt”

the asserted utility and operability of cold fusion. Even those

workers that have continued to e::peziment and to believe in

the cold fusion” process car.didly acknowledge that

reproducibility remains a probiem. This, Melvin 5. Miles in a

“To whom it may concern” lett2r’° dated April 30, 1996,”

indicated that his experiments “have been very difficult to

reproduce in any consistent manner. There are simply too

many variables that we do not yet understand.” Accordingly,

even one year after the filing of the present application,

persons investigating “cold fusion” as a real phenomenon

conceded that because of yet understood multiple variables,

reproducibility was a significant problem.

Moreover, appellant’s Specification does not teach one of

ordinary skill in this esoteric art how to achieve reproducible

results. Although appellant's Specification describes the use of

certain nickel cathodes in allegedly successful cold fusion

experiments (see our discussion at pp. 18 and 19 of this

decision), the examiner found in his Answer at p. 12 that:

The disclosure is insufficient and non-enabling as to how and in what

manner, the invention can be carried out so as to provide an operative

embodiment. There is no adequate description nor enabling disclosure

of specific parameters of a specific operative embodiment of the invention,

including exact experimental structure and conditions. It is noted that

the specification appears to set information for some of the parameters,

however, there is no disclosure... of a specific operative embodiment... ,

including exact material, purity, density, lattice storage site size,

49

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“ee % “& ; ;

electrode size, pressure, temperature, voltage, composition and

pn a of the lattice, isotope ratios (e.g., D/Pd), etc. [Emphasis

As we indicated earlier, appellant apparently would have

us believe that the described nickel cathodes have the correct

“variations in microcomposition, morphology, [and]

crystalline defects” required for “cold fusion” reactions,

although appellant has failed to specifically disclose just what

these parameters are. Thus, appellant's Specification provides

no teachings that would enable one of ordinary skill in this art

to conduct any reproducible process involving cold fusion

without undue experimentation. “Where as here, the claimed

invention is the application of an unpredictable technology in

the early stages of development, an enabling description in

the specification must provide those skilled in the art with a

ific and _ useful teaching.” (Emphasis added.) Genentech.

Inc. v. Novo NordiskA, 108 F.3d 1361, 1367—68, 42 USPQ2d

1001, 1005 (Fed. Cir. 1997). Appellant’s Specification fails to

provide such a “specific and useful teaching” in an art area

which, if anything, is highly unpredictable and was in an

“early stege{] of development” when appellant filed this

application.

The examiner relies on a number of references published

prior to the filing date of appellant's application to establish

that many in the scientific community never accepted the

claims that “excess energy” was generated by the cold fusion

process (Examiner's Answer, pp. 6-9). Examples of the

references relied on by the examiner are Huizenga, Jones I

and [J], Dagani ‘93, and Taubes. The examiner relies

particularly on Morrison" to establish the “current state” of

cold fusion on January 17, 1997, a date well after the filing

date of this application. Morrison's report indicates that cold

fusion was at this time still not fully accepted by a substantial

portion of the scientific community. Morrison, who questions

the concept of cold fusion, details the events that transpired at

the Sixth Cold Fusion Conference. This Report refers to a

number of presentations provided before an audience of

scientists receptive to the concept of cold fusion. In addition,

this Report balances the reference to those. presentations by

pointing out the general acknowledgment by some presenters

that there is still a lack of reproducibility (p. 2, Section 2.1; p.

10 Copy attached to “Declaration of Dr. Mitchell Swartz

Supporting Appeal Brief.” (Paper No. 25)

50:

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4, second full paragraph; p. 6, Section 5.1, item d; p. 8, first

paragraph of Section 7) and that no evidence in favor of cold .

fusion was presented (p. 12, Section 13).

On p.8 of the Examiner’s Answer, the Examiner also relies

on Rabinowitz (p. 11 of the reference) and the Abstract of

Miles II (“[rleproducibility continues to be the major problem

in this controversial research area,”) as further evidence

respecting the continuing problem with reproducibility of

results and on the Miller Memo to establish the lack of

concrete evidence of excessheat.

Appellant’s response provides a discussion of a number of

references and declarations submitted in an attempt to

establish the feasibility’? of the cold fusion process (Appeal

Brief, pp. 30-60 and 67-71). Appellant supplemented this

discussion with a Reply Brief filed June 29, 1998 (Paper No.

29) and a Supplemental Reply Brief filed August 3, 1998

(Paper No. 31). Nevertheless, even in light of the additional

submissions, we find that appellant has failed to Ccemonstrate

that as of the filing date of the present application, cold fusion

processes could be reproducibly carried out.

Appellant argues that the Office’s references are awed and

outdated (Appeal Brief, p. 30, paragraph 86). In addition,

appellant argues that some of the references are theoretical

criticisms based on older experiments which do not use the

techniques disclosed (Appeal Brief, p. 30, paragraph 86). This

argument is directed to the examiner’s reliance on periodicals,

TV shows (NOVA), Taubes, Huizenga, Jones I and II

references.

Appellant argues that the reliance on non-peer reviewed

periodicals, such as Dagani ‘93 and Hilts, “are not fair

representative appraisals of new technologies”’ (Appeal Brief,

p- 31, paragraph 87). In support of this argument, the

appellant recites a number of non-peer reviewed periodicals

that support cold fusion (Bishop ‘92, Bishop ‘93, Bishop ‘96,

Pollack and Clarke). The appellant also refers to

documentaries by the CBC and BBC which “meticulously

researched and reported the truth surrounding cold fusion”

11 Douglas R. 0. Morrison, a physicist and the author of this Report,

was for 38 years a researcher at CERN, the European laboratory for

cold fusion research. See page 3 of Kee, “What is the current scientific

31

ra a cessor cnr nesee scores

‘s . :% ns vs

(Appeal Brief, p. 32, paragraph 88). We note that the

periodicals and TV shows cited by the appellant and the:

examiner amount to press releases or testimonials which both

support and reject appellant’s cold. fusion theory without

providing the necessary details and data from which a person

with ordinary skill in the art can qualify the nature of the

release. These refererices may only serve as a measure of the

pulse of the scientific community with respect to this topic at

best. However, due to the inadequacies of the respective

disclosures, they offer little in terms of their usefulness and

acceptance by the scientific community as a whole vis-a-vis

the claimed subject matter.

Concerning Taubes, Huizenga, Jones I and Jones II, the

examiner primarily relies on these references to establish that

the concept of cold fusion remains the subject of much debate

in the scientific community as a whole (Examiner’s Answer,

Paper No. 30, pp. 6—7) The Taubes publication appears to be

a result of an extensive effort to interview people who have .

been involved in some manner with cold fusion, including

those that appear to be in favor as well as those that remain

skeptics (pp. 475-481) 7

Huizenga’s publication details the early developments and .

claims concerning cold fision that transpired in 1989. A

review of the excerpts provided indicates that Huizenga did

consider, or at least was aware of, activities during 1990 and

1991 in preparing his book (Huizenga, pp. 128, 132, 134, 136, .

and 143 are illustrative) In addition, Appendix III of

Huizenga’s book lists a chronology of events up to June 1991

(note that the filing date of this application is March 1995)

related to cold fusion issues. The credibility of his publication

derives. from the report issued by the Energy Research

Advisory Board Cold Fusion Panel, which Huizenga

co-chaired.” The strength and credibility of the panel comes

12 The extent of a t’s burden to establish the feasibility of cold

fusion is highli by the remarks of Michael J. Schaffer, a senior

scientist and a “fairly neutral observer” at one of the major U.S. fusion

research laboratories who stated, ‘Mg]iven the extraordinary nature

of the claimed cold fusion results, it will take extraordinary high

quality, conclusive data to convince most scientists, unless a

compelling theoretical explanation is found first.” See pages 1-3 of

Kee, “What is the current scientific thinking on cold fusion? Is there

any possible validity to this phenomenon?,” Scientific American,

(circa 1997) on line <http://www.sciam.com/askexpert/ physics.

/ physics6.himl>.

52

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from twenty-two distinguished members that served in the

panel (Appendix II, p. 292) & 7

Jones [ (Steven E. Jones et al) evaluates the results of

experimentation conducted by M. H. Miles, a proponent of

cold fusion (p. 6966), who as noted earlier has candidly

acknowledged the problem of reproducibility of cold fusion

results. The Jones I article provides a detailed analysis of the

claims made by Miles in terms of excess heat production and

nuclear product detection. Briefly, the article points out that

the claims were based on an experiment that was conducted

inadequately (p. 6968, second column; p. 6969, first and

second columns) and concludes that the claims of cold fusion

are inconsistent (Conclusions; p. 6971). On the other hand,

Jones II (onathan E. Jones et al) attempts to provide a

traditional explanation for the excess heat by establishing the

same as a result from a chemical reaction between H, or D,

with 02 to produce H,0 or D,0 (Discussion,p.6977)

While appellant may argue that these references are

. irrelevant to the present invention (Appeal Brief, p. 34,

paragraph 90), the fact that appellant's invention is directed to

the contested field of cold fusion makes them significant. The

publications cited by the examiner span a period from 1989 to

1997, which incorporates the date in which this application

was filed (March 1995). In addition, the numerous references

cited by the appellant also span a similar period. It is quite

clear that at the time this application was filed, cold fusion

technology was still controversial and not accepted by the

scientific community as a whole. ,

Moreover, it is a. fundamental error to define those of

ordinary skill in appears to have done, as only those people

fusion as a real phenomenon.

Appellant also argues that the Office (PTO) relies on

publications which had “significant flaws” and cites a number

of references that have “exposed” the same and confirms “the

existence’ and ‘utility”’ of cold fusion (Appeal Brief, pp. 34-39,

paragraphs 91-101). The appellant argues that the Office relies

on publications “which now have been shown to have major

errors” by peer-reviewed publications (Emphasis original.)

(Appeal Brief, p. 34, paragraph 91). In support of his position,

the appellant cites to an article by Fleischmann and Pons

responding to criticism of their work (“Response to Critique

of Physics Letters A Paper,” Cold Fusion Times, Vol. 1, issue 3

53

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(1993)) as well as other articles by Noninski (‘91, ‘91B, ‘98),

Mallove ‘91, Miles ‘94B and Milton ‘96.

The Fleischmann and Pons reference critiques an analysis

by Douglas R. 0. Morrison, a cold fusion skeptic, whose views

have been previously discussed (Decision, pp. 26-27 and

footnote 11) To the extent that it portends to answer Mr.

Morrison's analysis, the article offers only another opinion

concerning cold fusion and not a definitive opinion. The

excerpts of the Nominski references before us are not as

conclusive as appellant portrays them to be. Each one

_ cautions their conclusion by stating that no explanation for

the excess heat has been found so far (Noninski ‘91, p. 163).

The conclusion espoused is merely a different one that could

be drawn (Noninski ‘91B, p. 579) or the conclusion is based on

experimentation which is insufficient to prove that excess heat

in all experiments “is real” (Noninski ‘93, p. 476). The Miles

94B reference acknowledges that the discussed research

— were limited due to the lack of reproducibility of their -

ents (p. 484). Note also that these experiments were

the subject of the Jones i evaluation thet questioned their

— The Mallove ‘91 (presumably «he excerpt of Fire

m Ice) and the Milton ‘96 references offer only a historical

nr of the events that transpired durin;; the early years of

cold fusion development (an apparent counterpoint to

Huizenga’s publication). However, unlike Huizenga, no

scientific evaluation refuting or supporting the existence of

cold fusion is provided in the excerpt before us. These

references, when considered as a whole, do not conclusively

prove that the criticisms of Pons/Fleischmann

experimentation were without merit, nor do they conclusively

prove the existence of cold fusion. They merely evidence that

1S We Oe ee Ee ee

Research Advisory Board (ERAB) Panel is not part

ou wee significantly discussed in Chapter VI of

Huizenga’s qulicadien, Cold Fusion: The Scientific Fiasco of the

Century (p. 86) . It is noted that the (ERAB) Panel concluded in its

Executive Summary of the report that the experimental results on

excess heat from calorimetric cells “reported to date” did not

convincing evidence that “useful” sources of energy would result

from the phenomena attributed to cold fusion. The Panel also

concluded that experiments “to date” did not present convincing

vce was, te ce ee ae

Significantly, the stated position of the United States

Demat of Energy as of October 1997 remained that position set

forth in this report. See the Miller Memo, of record.

54

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,

the controversy and debate about cold fusion is alive and well |

within the scientific community. |

Appellant refers to other numerous references to support -

the existence and. utility of cold fusion (Appeal Brief, p. 35,

paragraph 94). In particular, the appellant argues that various

organizations including the US Navy, NCFI, Los Alamos

National Laboratory (no particular reference), EPRI, NASA

(Neidra “96A and 9GB) and the French Atomic Energy Agency

(Lonchampt ‘97) agree with the existence of the field of cold

The references to EPRI, NASA, and Los Alamos appear to

cenver primarily around reports submitted to Cold Fusion

Times, Vol. 4, Issue 2. This publication appears to only report

activities concerning cold fusion around the world. However,

it provides insufficient information for the reader to reach a

scientific conclusion on his own. Lonchampt ‘97 also fails to

provide sufficient information from whick to verify its

conclusions. | ZS

Concerning reports by the US Navy, Chaml ers (“Evidence

for MeV Particle Emission From Ti Charged with Low Energy

Deuterium Ions,” NRL Memorandum Report 6927 (1991))

merely invites other researchers to experin-ent with low

energy bombardment of thin samples to search for low level

fusion reactions (p. 19). Rehn et al’s report on “The Third

International Conference on Cold Fusion.... “ (1998) to the

Office of Naval Research Asian Office acknowledges that “a

more concerted theoretical effort is now justified” and that

much research must still be done to understand the cold

fusion phenomenon (pp. 88-8 9). These reports offer no

conclusive proof of the existence or the utility of cold fusion.

F. Will’s Final Report (National Cold Fusion Institute -1991)

is alleged to support the existence of the “cold fusion”

phenomenon (Swartz Declaration, paragraph bridging pp.

12-13) See paragraph 98 of the Appeal Brief (p. 37). It appears

that appellant is giving much weight to the fact that

substantial amounts of financial resources are being invested

in this phencmenon to establish its existence. However,

financial support is only an indicator of the interest in the

phenomenon and not scientific proof of its existence. It should

also be noted that the Final Report is not a scientific

evaluation of the theory of cold fusion. It is only a report of

alleged evidence of ccld fusion which lacks the details

necessary for appropriate review by the scientific community.

55

, %

There is no indication that the scientific commnmity as a whole

has accepted this evidence. On the contrary, . Will

acknowledges that the political and financial climate remains

generally negative (Will, p. 1-3, second paragraph). Will also

places some doubt on the evidence reported in his conclusion

by indirectly acknowledging that the alleged excess heat may

_ not be generated by deuterium fusion and that the “possibility

that the excess heat is not of nuclear origin can not presently

be ruled out” (Will, paragraph bridging pp. 1-16 and 1-17).

Contra to appellant’s arguments, Will does not confirm the

existence of cold fusion, much less address the real problem of

reproducible results.

The other various references in poragraphe 95-100 of the

Appeal Brief are only casually mentioned by the appellant.

For example, Huggms “94 and Kestenbaum appear to be only

reports updating the status of cold fusion efforts at different

sites. The reports from the various conferences also offer

updates on activities related to cold fusion. (Again, note -

Douglas R. 0. Morrison’s report on ICCF-6 for a skeptic’s

views of such activities.)

Storms ‘94C attempts to eliminate the reproducibility of tre

Pons-Fleischmann Effect as an issue (Conclusions, p. 99)

However, it is evident that reproducibility still remains a

controversial topic in cold fusion as late as 1997 (Morrison

iCCF-6 report) Sawatimova ‘94 discusses experiments

involving cathode materials before and after irradiation by

deuteron ions (p. 389). A result of the experimentation is the

discovery that the concentration of impurities increased and

among those impurities were elements which “cannot be

found in the discharge environment” (Abstract, p. 389).

However, the paper stops short of concluding that these

elements were the result of a fusion-fission reaction. It only

posits the possibility that such a reaction could mye them

(Abstract, p. 389)

The appellant lists a number of references, some before and

some after the filing date of this application, and declarations

to establish the existerice of cold fusion (Appeal Brief, pp. 42-4

6, paragraphs 111-119). While there is much activity

dedicated to the study of this phenomenon, there is little

conclusive evidence of its utility. The list of references cited by

appellant reports experimental studies that present results

that indicate the presence of the phenomenon. However, this

56

cd

is insufficient to establish utility and enablement within the ~

“meaning of the relevant sections of the statute. |

Appellant argues that Taubes is “wrong and scurrilous”

and “has NOTHING TO DO with the original specification”

(Emphasis original.) (Appeal Brief, pp. 46-47, paragraph 120).

The Examiner’s reliance on Taubes is brief and limited to

further support his contention that cold fusion is. still not

accepted by the scientific community (Examiner's Answer, p.

7). Appellant’s reliance on publications by Miles ‘92 and

Hoffman ‘94 which criticize Taubes and his book merely

underscore the controversy that exists in “the scientific

community concerning this phenomenon. :

Appellant argues that Jones (presumably Jones I and II) are

irrelevant and erroneous (Appeal Brief, pp. 47-48, paragraph

121). Appellant’s argument is unclear because it only

mentions that Jones’ articles contain errors without

specifically addressing them. Once more, he relies on

publications by scientists that appear to be favorable to the |

phenomenon to support.his alleged contentions. The fact that

there may be some disagreement with the methodology of the

analysis by Jones again underscores the controversy

surrounding the cold fusion. phenomenon. Thus, it may be

only a matter of a difference of opinion. |

Appellant also argues that the Office’s reliance on Morrison

is misplaced because he “is not believed by serious

wellcredentialled [sic]’ scientists in the field of cold fusion”

{Appeal Brief, p. 48, paragraph 122). The Morrison Report, as -

indicated previously, details the events that transpired at the

Sixth Cold Fusion Conference. This Report refers to a number

of presentations provided before an audience of scientists

receptive to the concept of cold fusion. In addition, this Report

balances the reference to those presentations by pointing out

the general acknowledgment by some presenters that there is

still a lack of reproducibility (p. 2, Section 2.1; p. 4, second full

paragraph; p.6, Section 5.1, item d; p. 8, first paragraph of

Section 7) and that no evidence in favor of cold fusion was

presented (p. 12, Section 13)

Appellant argues that the lack of any observation of large

numbers of neutrons, as supported by the examiner’s. various

references, does not negate “anything at all.” See the Appeal

Brief, pp. 52-53, paragraphs 127-129. The appellant. supports

this contention by relying on Shani, who is said to :

have monitored “stimulated neutron radiation from

57

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deuterated materials after said deuterated materials were

neutronirradiated” and on Faller as reporting tritium increase

(Appeal Brief, pp. 52-53, paragraph 129) Shani appears to be

another scientific evaluation of the Pons/Fleischmann

experiment that does not portend to be a decisive analysis of

the Pons/Fleischmann experiment. In fact, it is unclear

whether the study may have been done with entirely different

equipment (Shani, p. 53). Further, Shani carefully couches his

conclusions by stating that the fusion reaction is a possibility

and meant to be relevant to interpret the experiméntal

observation of the cold fusion process (Shani, page 57). Faller

doe contin bas unintien to lens Oak 4 activity was

detected that would indicate a sustained fusion reaction had

taken place” (Abstract, p. 9) and that the “production of

excess tritium... can be explained by processes other than

fusion” (Summary, p. 15). The appellant argues that Myers is

not applicable because it employed detectors that were not

proper for monitoring “these types of reactions” (Appeal

Brief, p. 56, paragraph 134) and involved inadequate loading

of deute ons and inadequate monit ring of the loading of the

deuteror. (Appeal Brief, pp. 56-57, paragraphs 135-136) and

was “too short” (Appeal Brief, p. 57, paragraph 137).

We now proceed to address appellant's significant

arguments concerning the examiner’s rejection under 35

U.S.C. §112, first paragraph, as presented in the first Reply

Brief (Paper No. 29) In this document, the appellant presents a

number of issues that do not fall under the jurisdiction of this

Board and a number of issues that merely restate the

appellant's positions addressed above. To the extent that the

ts are restated, we consider them to have been

appropriately addressed above. However, the appellant

presents new arguments concerning the Miller Memo which

merit further comment.

Appellant argues that the Miller Memo is irrelevant and .

that the Office does not account for Miller’s call for peer

review (Reply Brief, paragraph 42). This reference was cited

by the Examiner to indicate that “there is still no concrete

evidence of excess heat” (Examiner’s Answer, Paper No. 30, p.

8). We find this statement to be accurate (pp. 6-7 of the

Memo). The Memo essentially reflects the controversy that

still exists in the scientific community with respect to the

phenomenon of cold fusion. We have also reviewed the

58

Second Reply Brief filed August 3, 1998 (Paper No. 31). This

communication again restates arguments previously

presented by the appeal brief and the first Reply Brief (Paper

No. 29). We consider those arguments that pertain to the

appeal before this Board as fully responded to above. In light

of the foregoing and after careful consideration of the entire

record, for the reasons set forth in the Examiner's Answer, we

sustain the rejections of the appealed claims under 35 U.S.C.

§101 and 35 U.S.C. §112, first paragraph, enablement

requirement.

THE REJECTIONS UNDER 35 U.S.C. §103

In considering the examiner's rejection of the a

claims for obviousness (35 U.S.C. §103), we are guided by the

fundamental tenet of patent law that references relied upon to

support a rejection under 35 U.S.C. §103 must provide an

enabling disclosure, ie, they mwust place the claimed

invention in the public’s possession. In re Payne, 606 F:2d 303,

314, 203 USPQ 245, 255 (CCPA 1979). An invention i= not

absent some known or obvious way to make it Id.

Here, the technology involved is one based principally on

the work of and publication of Pons/Fleischmann which has

been substantially discredited by the attempts of those skilled

in the art to duplicate the results of their work. Clearly, based

on the record before us, the references to Pons et al. and

Fleischmann et al. cannot be relied upon as enabling prior art

references to support the examiner’s obviousness rejection in »

this appeal. Accordingly, we cannot sustain the examiner’s

rejections under 35 U.S.C. §103.

SUMMARY

The examiner's rejection of the appealed claims under 35

U.S.C. §101 and 35 U.S.C. §112 is affirmed. The examiner’s

rejection of the appealed claims under §103 of the statute is

reversed. The decision of the examiner, accordingly, is

affirmed.

No time period for taking any subsequent action in

connection with this appeal may be extended under 37 CFR

§1.136(a)

AFFIRMED

+s ANDREW H. METZ Administrative Patent Judge

-s CHARLES F. WARREN Administrative Patent Judge

-s ROMULO H. DELMENDO Administrative Patent Judge

59

= 22

| APPENDIX D - ORDER: REMANDING TO EXAMINER

Appeal No. 98-2593 (Serial No. 08/406,457)

Issuing Court Board Of Patent Appeals And Interferences

Number of Case: Appeal No. 98-2593 (SN 08/406, AS)

Date of Decision: Oct 9,1998.

UNITED STATES PATENT AND TRADEMARK OFFICE

On August 3, 1998, a Second Reply Brief (Paper No. 31) was

filed and on September 25, 1998, a Notice of Correction of

Appeal Brief (Paper No. 32) was filed. However, there is no

indication in the record of whether or not the examiner has

considered these papers.

Section 1208.04 of the Manual of Patent Examining

Procedure (6th Ed., Rev. 3, July 1997) states:

The examiner must notify. appellant of consideration of the

reply brief, e.g., by using form paragraph:12.47.

Accordingly, it is

ORDERED that the application is remanded to the

Examiner for proper response to the Reply Brief, proper

to the Notice of Correction of Appeal Brief, and for

such further action as may be appropriate. It is important that

the Board of Patent Appeals and Interferences be informed

promptly of any action affecting the status of the appeal (ie.,

abandonment, issue, reopening prosecution).

BOARD OF PATENT APPEALS AND INTERFERENCES

By

-s : ] CRAIG FEINBERG

Program and Resource Administrator (703) 308-9797

MAILED

Oct 9, 1998

=*

?

APPENDIX E- CLAIM OF SUBJECT MATTER

02-1240 (Serial No. 08/406,457)

Independent Claim 13 (A188):

In a process for producing a product from a sample of nickel

which is loaded with an isotopic fuel using electrolysis,

a method to determine the optimum electrical drive

condition for said sample and thereby characterize said

sample that comprises in combination

holding said sample irtto a calorimeter containing more than

two rings with barriers between said rings,

filling with liquid the volume between each said ring,

supplying said isotopic fuel for said loading into said

material,

loading said isotopic fuel into said mterial by means of a

power supply and electrical circuit,

thermally monitoring said liquid in each said ring,

deriving the thermal response otf said sample by

computational means including accounting for the mass

and temperature distribution of at least one barrier

between said rings,

increasing through a series of at least three incremental steps

the electric power drive conditions of said electrical

circuit,

deriving for each said step data consisting of the thermal

output relationship of said sample as function of said

drive steps, .

thereby deriving an optimum drive condition of said

sample.

“»

APPENDIX F- False Statements in the Decision

involving "specific operative embodiment’

; —— 1 - The false eee in the ‘ene

involving purported absence of "disclosure . .. of a

specific operative embodiment’

This table compares, by Parameter, each Parameter which|

the Decision Purports is Not Discussed in the

S ation (column 1), and the Actual Location of

| i ion in the Original Specification (column 2)

Parameter | Actual Location of Discussion in the

Original Specification

Temperature | Page 18, line 3 throu age 19, line 3.

| Temperature sania ios Ghoeemed

22, line 18 it a page 23, lines 141

page 15, lines 15-

tes Pore eee

Vol ugh pa e

ass shows the Voltage directly. Fi cr 5,

show the voltage indirectly gh the

power and power gain (v-hich are the more

important parameters in zood engineering

practice).

Exact Material| Table 1 in the Original Specification (Row 1)

Pressure Page 17, lines 18-22. Also, with reference to

number 132 in Figure 3.

ee ee Sen ee ee

of the signal is discussed on page 1 , lines

Purity 14-18, page 15, lines 15-20, page 23, lines

atbeg A age 24, lines 14-17, and page 25,

es

Isotope Ratios| Discussed, inchiding discussion of the Q1D

continuum loading (e.g., D/Pd) model on

page 16, lines 11-14, and with reference to

the peer-reviewed references, Swartz

(1992), Swartz (1993), Swartz (1994).

Density Page 22, lines 3-11.

| nd spentic eat Ca ge egne are

e specific heat fides (M,,, y

Electrode effective =y admittance &

Size discussed B page ness line 6, page 17,

2-12, page 17, lines 2-12, an

Fi 1, Figure 4, and Table (Row 7,

which lists th the dimensions in millimeters).

62

£

| APPENDIX G- MULTI-RING CALORIMETER.

02-1240 (Serial No. 08/40. °57)

4 A

UE

APPENDIX G- MULTI-RING CALORIMETER

This is a schematic diagram is the central portion of the .

five-ring calorimeter. The figure presents the rings and

barriers as located from the source-ring (inner ring containing

electrodes, ohmic control, thermocouples) to the environment

outside of the chamber. For simplicity, not shown are the

pump motor, ohmic thermal sources, or gas outlet tube (closed

for all of these experiments) in ring 2, the humidity detector in

ring 3, or the Styrofoam or wooden thermal isolation supports

‘in rings 4 and 5 (confer reference 8) and the control units

discussed and shown in the original Specification (A183) and

Swartz(97)(A72).

63

-»

-. . .

APPENDIX H - THERMAL SPECTROGRAM

DEMONSTRATING OPERABILITY AND UTILITY

02-1240 (Serial No. 08/406,457)

Input and Output Power and Ene "= Power Cut = Energy Out

nickei spiral cathode, pt ancdes/H20/Expt 34-5 Dec 30,94 ms Power input == Energy in

10.0000 50

ft % ‘as

1.0000 ‘ 40

fatts! T f

= iy ? |

@ 0.1000 30

H oe ; a3 |

-_ Rie: a g

3 ade ; |g

a 0.0100 Fee aa ee ——

z r _ - 2 . + . -

0.0010 beintSieny L : d a ca

5 —- 2rgy

: 5 - - a | ules]

0.0001 weiter sana DATINESE RA L ¢

2.0 1.020 30 40 50 60 7.0 30 9.0 10.0 11.0 129 13.0 14.0 15.0

Time (hours)

APPENDIX H - THERMAL SPECTROGRAM

DEMONSTRATING OPERABILITY AND UTILITY

The Input and Output Power, and Energies, of a platinum

foil anode and spiral nickel cathode [H,O] are shown. The

step-like functions are the energy curves [read off the right

y-axis]. The powers (thermal background, input, output) are

the remainder of the curves and have a logarithmic scale (left

y-axis). To the lower left is shown thermal noise (background

for this experiment) ranging from 16 to a few milliwatts and

extending until the first input (control) pulse at about 8 hours

This is shown in the original Specification (A184) and

Swartz(97)(A76).