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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 2003
- **Citation:** 539 U.S. 916

## Text

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).

iv

erie a ee

‘y

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 «..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

—s

od
?

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

“v
.%
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

a
-

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

-%
-? ’ ,
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

L

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

*»
vw

- 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

2,
-

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

oe
-»

- 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 = Jan.
iyo ta ers), "Search for Cold Fusion at D/Pd >1 Using Ion
of Fusion Energy, no. Bs PP: 63-68 (1990

effet oa Ligh Wat > Potion C onate - Nickel Electrolytic
” NASA orandum 107167, pp. 1-20 (1 ag

Kelana et ai. (Neidra ‘96B), “Replication pparent Excess Heat
Effect In A Li ht Water - Potassium PiNickel Electrolytic
Cell,” 4 Cold Fusion Times, no.3, 5 Summer 1996)

Noninski et al. (Noninski ‘91B), ts On ‘Measurement And

Of Neutron And Gamma-Ray Emission Rates, Other Fusion

cts, And Power In Electrochemical Cells Having Palladium

Cathodes’,” 19 Fusion Technology, 084, PP. 579-80 oie he oe

Noninski (Noninski ‘91), “ eat Durin he Electrolyei Be A
Light Water Solution Of K2CO3 With A Ni 1 Fusi

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

Ohashi et it Tonos , “Decodine By F iotapes ata tn Fleischmann &
. wig foyrnat of Nuclear Science and Technology no. 7, pp.

- u

Pollack, “C. i af Fusion Derided in ULS., Is Hot In Japan,” The New York
Times, pp. Cl and C12 (Nov. 17, 1992).

Rabinowitz et al. (Rabinowitz), “ osition and eis oe, 1904) Cold
Fusion,” 26 Transactions 0 oo, Technolo ¥ pp 5% 312) 99
Rehn et al. (Rehn), “ Tatornalie on Col
Fusion: ter, Invective, and prerning, 18 scien c In
Bulletin. NAVSO P-3580, no. 1, pp. 81-90 (Office of Nav Research
Asian Office, Jan.-March 1993)

Rogers et (Rogers), “Cold Fusion Reaction Products and Their
Measurement,” 9 Journal of Fusion Energy, no. 4, pp. 483-85 (1990)

Salamon et al. (. Salamon), “Limits on emission of neutrons, YO,
electrons “ om Pons/Fleischmann clectrotytic cells,”
Nature, pp. 40 8 (March 29, 1990)

Samgin et al. ——. "The Influence Ad Conductivity on the Neutron
Generation Process oton Solid Electrolytes,” ICCF-4,
Abstract, 2 unnumbered pages (Dec. 1993

Sawatimova et al. (Sawatimova ‘94), “ athode Material Change After
Deuterium Glow Discharge — 26 Transactions of Fusion
Technology, pp. 389-94 (Dec. 1994)

Shazti ef al. Shani), mainte a Background Neutron Enhanced
Fusion in Deuterium ed Palladium,” 72 Solid State
— no. 1, pp. 53-57 (Great Britain, Pergamon Press,
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

a

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

tf

: fF

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

cd

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

_

“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:

Oe ee |

-

?

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 .

52

-

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

=e
(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

-
,

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

ae

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).

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_1491%3A1. Public record. Not legal advice.