Why USPTO Rejected Santilli Patent

We give here a short analysis of the rejection of the Santilli patent and how Rossi will have the same fate, but for many different reasons.

The USPTO published its final rejection of the cold fusion/LENR patent of Dr. R.M. Santilli on April 19, 2012.
Dr. R.M. Santilli requested an oral interview that was held on October 3, 2012.
On October 17, 2012 the USPTO published a synopsis of that interview.

BREAKING NEWS: as we were finishing this story new documents were published at the USPTO on October 18, 2012.  We will include them in our story. Here are the documents that just came in.

10-18-2012 Request for Continued Examination (RCE)
10-18-2012 Fee Worksheet (SB06)
10-18-2012 Acknowledgment Receipt
10-18-2012 Miscellaneous Incoming Letter
10-18-2012 Miscellaneous Incoming Letter
10-18-2012 Miscellaneous Incoming Letter
10-18-2012 Rule 130, 131 or 132 Affidavits
10-18-2012 Specification
10-18-2012 Claims

Here is the latest history of the Santilli patent at the USPTO.

We will publish the history of the patent application of Dr. R.M. Santilli and what the USPTO gave for the reasons they rejected his cold fusion patent application.

The older documents are given first so you have a true sense of what transpired during the patent review.  We hope this information will be useful for anyone trying to get a cold fusion/LENR patent through the USPTO, the WIPO or any other country.

We will highlight some interesting statements with this color.

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Part 1 – Brief History

Part 2 – The Original 20 Claims

Part 3 – The Election / Restriction Requirement and Response

Part 4 – The Non-Final Rejection and Response

Part 5 – The Final Rejection and Response

Part 6 – The Oral Interview

Part 7 – The New October 18 Documents

Part 8 – Wrapping Things Up and Comments by Gary Wright – A Must Read.

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Part 1 – Brief History

Mr. Santilli’s started with Provisional Patent Application 61/371,756 filed on August 9, 2010, now expired.

Then his next step was Provisional Patent Application 61/444,431 filed on February 18, 2011 now expired.

Mr. Santilli’s current Patent Application was filed on August 4, 2011 and was published with Publication No.: US 2012/0033775 Al  on February 9, 2012.

It cleared IFW Scan & PACR Auto Security Review on 08-04-2011.

Then Cleared by OIPE CSR on 08-08-2011.

An Restriction/Election Requirement was written on 10-17-2011

A Non-Final Rejection was given on 12-17-2011.

After a response a final Rejection was issued on 04-13-2012.

An Interview Summary – Applicant Initiated – Conference on 10-03-2012 mailed on 10-17-2012.

A Request for Continued Examination, with revised and new documents, was posted on October 18, 2012.

Part 2 – The Original 20 Claims

These are the original claims from US 2012/0033775 Al.

What is claimed is:
1. A method for intermediate fusion of a first atom of a first element with a second atom of a second element without the emission of harmful radiation and without the release of radioactive waste, the first and second atoms being light, natural and stable; a fused atom resulting from the intermediate fusion is also being light, natural and stable; the method comprising: exposing the first and second atoms to a magnetic field within a pressurized chamber causing the polarization of electron orbits into a toroid, the electrons of the first and second atoms having a toroidal shape results in exposure of the nuclei of the first atom to the nuclei of the second atom; and providing a trigger, the trigger forcing the nuclei of the first atom to fuse with the nuclei of the second atom, thereby fusing the first atom and the second atom into the fused atom.

2. The method for intermediate fusion of claim 1, wherein the magnetic field is provided by an electric arc, the electric arc produced between a first electrode and a second electrode within the pressure chamber.

3. The method for intermediate fusion of claim 2, wherein the first atom is deuterium provided by a gas within the pressurized chamber, at least one of the first and second electrodes comprises carbon, the second atom is carbon provided by one or both electrodes, and the fused atom is nitrogen.

4 . The method for intermediate fusion of claim 2 , wherein the first atom is a carbon atom and the second atom is an oxygen atom, the carbon atom and the hydrogen atom are provided by carbon dioxide gas within the pressurized chamber, the carbon dioxide molecule is molecularly separated into the carbon atom and the oxygen atom by the electric arc, and the fused atom is silicon dioxide (silica).

5. The method for intermediate fusion of claim 2, wherein the first element is oxygen provided by air within the pressure chamber, at least one of the positive and the negative electrodes includes carbon, the second element is carbon from at least one of the electrodes and the fused element is carbon dioxide.

6. The method for intermediate fusion of claim 1, wherein the trigger is a disruption in an electric power provided to the electrodes, thereby disrupting the electric arc.

7. The method for intermediate fusion of claim 1, wherein the trigger is a disruption in an electric power provided to the electrodes caused by a pulse of the electric power, thereby periodically disrupting the electric arc.

8. The method for intermediate fusion of claim 8, wherein a period of the pulse of the electric power is a harmonic of a natural resonate frequency of at least one of the first and second atoms.

9. The method for intermediate fusion of claim 1, wherein the trigger is an abrupt increase of a pressure within the chamber.

10. A method for intermediate fusion of a first element with a second element into a fused element without the emission of harmful radiation and without the release of radioactive waste; atoms of the first element and atoms of the second elements being light, natural and stable; atoms of the fused element also being light, natural and stable; the method comprising: providing a pressure chamber having at least a positive electrode and a negative electrode within the pressure chamber, the positive and negative electrodes electrically connected to a switched source of power; evacuating the pressure chamber; filling the pressure chamber with a gas, thereby increasing a pressure within the pressure chamber to an operational pressure; enabling the switched source of power, thereby initiating an electric arc between the positive electrode and the negative electrode; providing at least one trigger, the trigger fusing atoms of the first element with atoms of the second element into the atoms of the fused element.

11. The method for intermediate fusion of claim 10, wherein both the first element and the second element are contained within the gas.

12. The method for intermediate fusion of claim 10, wherein the first element is contained within the gas and the second element is provided from at least one of the first electrode and the second electrode.

13. The method for intermediate fusion of claim 10, wherein the pressure is between 300 pounds per square inch and 3,000 pounds per square inch.

14. The method for intermediate fusion of claim 12, wherein the first element is deuterium provided by the gas, the second element is carbon provided by at least one of the first and second electrodes and the fused element is nitrogen.

15. The method for intermediate fusion of claim 11, wherein the gas is carbon dioxide, the first element is carbon and the second element is oxygen, the fused element is silicon dioxide (silica), and the carbon and oxygen are provided by molecular separation of the carbon dioxide by the electric arc.

16. The method for intermediate fusion of claim 10, further comprising the step of capturing heat from the pressure chamber and using the heat to generate electric power.

17. An apparatus for intermediate fusion of a first element with a second element into a fused element without the emission of harmful radiation and without the release of radioactive waste; atoms of the first element and atoms of the second element being light, natural and stable; atoms of the fused element also being light, natural and stable; the apparatus comprising: a source of electric power; a pressure chamber; at least one positive electrode and at least one negative electrode within the pressure chamber, the positive and negative electrodes electrically connected to the source of electric power; means for evacuating the pressure chamber; means for filling the pressure chamber with a gas, the means for filling increasing a pressure within the pressure chamber to an operational pressure as the pressure chamber is filled with the gas; means for initiating an electric arc between the at least one positive electrode and the at least one negative electrode; and means for triggering the fusion of atoms of the first element with atoms of the second element into atoms into atoms of the fused element.

18. The apparatus for intermediate fusion of claim 17, further comprising means for capturing heat from the fusion and using the heat to generate electric power.

19. The apparatus for intermediate fusion of claim 17, further comprising means for circulating the gas through at least one of the at least one positive electrode and the at least one negative electrode, thereby forcing the atoms of the resulting element out of the electric arc.

20. The apparatus for intermediate fusion of claim 17, wherein the means for triggering the fusion is a periodic, abrupt change in the electric power.
* * * * *

Part 3 – The Election / Restriction Requirement and Responses

THE REQUIREMENT

DETAILED ACTION
The following Office Action is in response to the filing of the application and contains both Restriction and Election-of-Species Requirements.

Election/Restrictions

1. Restriction Requirement: Restriction to one of the following inventions is required under 35 U.S.C.121:
I. Claims 1 – 16, drawn to a method, classified in class 376, subclass 100.
II. Claims 17-20, drawn to an apparatus, classified in class 376, subclass 107.

The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: ( 1 ) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. ( MPEP § 806.05 (e)). In this case the apparatus as claimed can be used to practice another and materially different process, for instance ionizing matter.

Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason (s) apply:

(A) Separate classification thereof: See the classification of the method and of the apparatus as provided above. This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.

(B) Furthermore, it also is necessary to search for the apparatus in a manner that is not likely to result in finding art pertinent to the method: inparticular, in the art of apparatus for ion etching of semiconductor substrates (class 2 1 6 ).

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1 . 1 43) and (ii) identification of the claims encompassing the elected invention.

The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.

Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 (a) of the other invention.

2. Election-of-Species Requirements.

a. Upon election of the Group I Invention (the method), applicant is further required under 35 U.S.C. 120 to elect a single one of the following disclosed species to which the examination shall be restricted if no generic claim is finally held to be allowable:

i. Species M1: the embodiment as defined on page 5, line 9 – page 6, line 2, and based on exposing the first and second atoms to a magnetic field;

ii. Species M2: the embodiment as defined on page 6, lines 3 – 23, and based on creating an electric arc.

There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason (s) apply:

The Species are clearly disclosed as separate embodiments, one requiring exposure to a magnetic field, the other embodiment requiring the creation of an electric field. Hence, from both a physics standpoint as well as from the disclosure itself, the driving forces are separate and distinct, being magnetic and electric, respectively. At this time no claim is generic.

b. Upon election of the Group II invention (the apparatus), applicant is further required under 35 U.S.C.120 to elect a single one of the following disclosed species to which examination shall be restricted if no generic claim is finally held allowable:

iii. Species A 1: the embodiment of Figure 6 (page 3 3, lines 11 +) (graphite electrodes 905, 906 on copper shafts 925, 907) ;

iv. Species A2: the embodiment of Figure 10 (page 53, lines 13+) (graphite electrodes 50, 51, each with metal shafts 66, 65 there through) ;

v. Species A3: the embodiment of Figure 11 (page 63, lines 6+) (shaft through one electrode 310, not through the other electrode 305);

vi. Species A4: the embodiment of Figure 12 (page 61, lines 17+) (two electrodes both not on metal shafts);

vii. Species A5: the embodiment of Figure 13 (page 64, lines 10+) ( multiple electrode pairs 550/560 on upper and lower rods 552, 562) .

There is a search and examination burden for the patentably distinct species as set forth above because at least the following reason (s) apply:
The material embodiments are mutually exclusive, because electrodes can be either on shafts, have shafts there through, or not at all; and can either consist of a single pair or a multiple set of pairs. Therefore, the embodiments are mutually exclusive. At this time no claim appears generic.

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably in distinct species to be examined even though the requirement may be traversed (37 C F R 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably in distinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election. The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.

Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 (a) of the other species.

Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141. In view of the relative complexity of the Restriction/Election-of-Species requirement no telephone call was made.
/JOHANNES P MONDT/
Primary Examiner, Art Unit 3663
October 16, 2011.

THE RESPONSES BY MR. SANTILLI

Response #1

November 8, 2011
INTRODUCTION
November 8, 2011
In response to the restriction requirement mailed October 21, 2011, applicant respectfully requests examination of claims 1-16 drawn to invention I. Applicant elects species II (M2), drawn to creating the required magnetic field using an electric arc. Applicant respectfully traverses the election of species, in that, in applicant’s specification, it is shown that in order to align the atoms, a strong magnetic field is required.

This magnetic field is provided, for example, by the electric arc. Claim 1 is generic between Species i and ii, in that, claim 1 exposes the atoms to a magnetic field, whether the magnetic field is provided by a super magnet or by an electric arc. Claim 2 goes on to narrow the source of the magnetic field to the electric arc.

Once allowable claims are found, applicant respectfully requests that the withdrawn claims be rejoined. Applicant will amend the withdrawn claims, as needed, to follow any amendments made to the non-withdrawn claims.

Response #2

INTRODUCTION
December 2, 2011
In response to the restriction requirement mailed October 21, 2011, applicant respectfully requests examination of claims 1-16 drawn to invention I. Applicant elects species i (Ml), drawn to “exposing the first and second atoms to a magnetic field”, encompassing claims 1-16. Applicant asserts that, for example in claim 2, the magnetic field of claim 1 is produced by the electric arc of claim 2 as described in applicant’s specification, page 12 starting on line 22:

Extensive studies and experimentation conducted for decades have established that magnetic field with such intensity are indeed effectively and systematically achieved at atomic distances from DC electric arcs, as illustrated in Figure 2.

Applicant also respectfully traverses the election of species, in that, in applicant’s specification, it is shown that in order to align the atoms, a strong magnetic field is required. This magnetic field is provided, for example, by the electric arc (as described above). Claim 1 is generic between Species i and ii, in that, claim 1 exposes the atoms to a magnetic field, whether the magnetic field is provided by a super magnet or by an electric arc. Claim 2 goes on to narrow the source of the magnetic field to the electric arc.

Furthermore, once allowable claims are found, applicant respectfully requests that the withdrawn claims be rejoined. Applicant will amend the withdrawn claims, as needed, to follow any amendments made to the non-withdrawn claims.

Should the Examiner find applicant’s response nonresponsive, applicant requests the examiner call the agent below to discuss and move the application forward. Thank you.

Part 4 – The Non-Final Rejection and Responses

Application/Control Number: 13/197,836
Art Unit: 3663
DETAILED ACTION
Election/Restrictions

1. Applicant’s election of the method invention I and, with traverse, of Species M1 in the reply filed on 12/02/11 is acknowledged. The traversal is on the ground(s) that the magnetic field is also produced by an electric arc. However, the methods as claimed are clearly reliant upon different method steps, one relying on a magnetic field, the other on an electric field, – see respectively the embodiment disclosed on page 5, lines 9+, and the embodiment disclosed on page 6, lines 3+; therefore, said argument is not found persuasive. However, in light of the specification and the examination examiner herewith withdraws the election of-species requirement. The restriction requirement is still deemed proper and is therefore made FINAL.

2. 35 U.S.C. 101 reads as follows:
Specification
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

3. The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The Specification is objected to as failing to disclose the asserted utility as credible, as failing to disclose a method that is operative for the asserted utility or that the claimed method can be used to provide a well-defined and particular benefit to the public (well-established utility), and as failing to convey to those skilled in the art how to practice the claimed invention for the asserted utility without a requirement for undue experimentation. The method relies on severe distortion of the electronic shells around nuclei so as to reduced the latter to toroids (i.e., rings) around the nuclei, by application of an ultra-high magnetic field, which is alleged to occur, for instance, within atomic distances (10-8 cm) of an arc. The fusion reactions, moreover, are of the type not to produced any harmful radiation or release of radioactive waste, and thus have to be of the aneutronic type, for which the threshold is extremely high even in comparison with O-T or 0-0 fusion currently attempted around the world, for which threshold magnitude differences examiner takes Official Notice.

In particular, the Specification defines the objective of the invention as the production by means nuclear fusion of “usable heat” (page 5, lines 5-7). Examiner understands “useable heat” in light of applicant’s specification to mean that the fusion reactions require less energy than they release. This is the only reasonable interpretation: see “Field of the Invention”, page 1, lines 12-15, in which applicant states: “This invention relates to the field of producing heat and more particularly to a system for producing usable heat without the emission of harmful radiation or the production of radioactive waste”. If achieved, applicant’s results would be the culmination of a worldwide effort for over half a century for the holy grail of fusion research, i.e., a veritable sun on earth, which has eluded all researchers to date. Applicant, in the instant specification, admits that both hot and cold fusion have not proven successful to date, and proposes “intermediate fusion”, predicated on the idea that through high magnetic fields the electron cloud can be narrowed to extend over but a small portion of the total surface area normally occupied by the electronic shells around nuclei. This is allegedly accomplished by the “realization of Intermediate Controlled Fusion processes” (henceforth referred to by applicant as ” ICFP”), referring to an apparatus capable of producing usable heat in a fully controlled system via a number of mechanisms and processes occurring within nuclei, referred to henceforth by applicant as “fusion processes”, but according to applicant’s definition of said mechanisms and processes not being limited to nuclear fusion (see “Detailed Description”, page 10).

In summary: applicant alleges to have been successful in the monumental understanding of fusion energy production where all others have failed to date. Examiner notes, however, that the specification fails to provide evaluated, experimental data demonstrating that the asserted utility of useable heat has been achieved. This is quite remarkable, because of the non-established nature of applicant’s claims as far as the scientific peer community is concerned. But it is especially so in view of the extraordinary nature of the asserted utility: extraordinary assertions require solid evidence, while applicant has presented none. That the assertion of useable heat from fusion is indeed extraordinary is witnessed readily by applicant’s own admission of the failure to date of both hot and cold fusion and the implication of applicant’s filing that what he calls “intermediate fusion” is without prior art.

No evidence has been provided; reference to applicant’s own journal cannot be accepted as incorporated by reference for any essential subject matter, while applicant has not even made those references (see pages 12, 19, and 39) of record.

Examiner herewith makes of record evidence regarding the status of fusion energy research the abstract to Matsuda et ai, “Present status and future prospects of fusion energy research, Oyoy Buturi volume 79, issue 9, pp. 819-’9 (September 2010), from which it must be concluded that as recent as less about six months before filing of the provision al application fusion energy research had not achieved its goal of realizing a fusion energy as a source of energy for humankind. Examiner submits that in view of this status of fusion energy research detailed experimental data, with error analysis, showing useable energy production would have been required; however, nothing of the sort was found in the specification. Examiner further herewith makes of record the most recent peer review by the U.S. Department of Energy’s panel of 18 experts, “Report of the Review of Low Energy Nuclear Reactions”, December 1, 2004, reviewing research in fusion energy extending in its scope over temperatures or equivalent relative energies of colliding ions lower than a few eV, i.e., less than a few tens of thousands of degrees Celsius, and concluding that while basic research would be helpful in resolving controversies in the field of low energy nuclear reactions (see “Conclusion” on page 5 of the Summary), no evidence for any nuclear physics phenomenon responsible for excess heat was in evidence (Review # 2). Although most of the review was concerned with deuterated metals, i.e., “conventional” cold fusion, the scope of the Review would have had to include applicant’s research considering the energy range over which the review was extended.

For the above reasons examiner concludes that one of ordinary skill in the art of fusion energy research would reasonably doubt the asserted utility. In particular, the lack of any consideration or analysis of energy balance in the Specification-as-originally-filed implies that the achievement of useable energy in the form of useable heat, which would be a world first-time demonstration in the field of nuclear fusion energy research that has occupied a veritable army of scientists and engineers in many countries for over half a century, is just not credible. Furthermore, because the asserted utility is not credible the method is deemed inoperative.

Examiner further notes the extreme paucity of experimental data on the conditions under which the useable heat is asserted to be produced. A current of 103 A (page 13, line 9) and distance of atomic size (10-8 cm) from an arc are known in the art and were not alleged to result in the asserted production of useable heat: in fact, systems with current amplitudes of 7.5 to 50 MA, hence about four orders of magnitude over and above applicant’s current, should be overflowing with useable heat production but they do not, as witnessed from, e.g., Golberg (“Plasma Compression, Heating and Fusion in Megagauss Z-oo Pinch Systems”, Plasma Physics and Controlled Fusion 32(5), 319-326 (1990)): see in particular Golberg’s conclusion. Golberg stated in unmistakable terms: “None of the trials came close to ignition”.

Examiner further adds that, as best understood from the specification, the creation of applicant “magnecule” is not expected according to standard theory to enhance fusion cross sections if only because the electron shell is not a significant collision barrier, and furthermore, helps screening the repulsive Coulomb potential between the positively charged ions, while the significant portion of the colliding ions’ trajectories are well within the electronic shell because the range of the nuclear force is about a factor 105 shorter than the Bohr radius (for which examiner herewith takes Official Notice). That applicant’s assertions have a likelihood of being based on absolutely non-standard theory as evidenced from applicant’s own release on the internet, see “Ethical Notes” by inventor for the book “New Sciences for a New Era”. February 2008(54 pages) clearly correlates with these considerations to any cognizant reader of scientific literature.

Examiner admits that experiment ultimately is the true criterion of scientific discovery. However, applicant has, as of filing, and judging from the specification, only a scientific concept, widely unaccepted and unverified by experiment. Serious doubt arises as a result about reduction to practice.

“The how to use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. Section 101 that the specification disclose as a matter of fact a practical utility for the invention”. In re Ziegler, 992 F.2d 1197, 1200 ( Fed. Cir. 1993). ” If the application fails as a matter of fact to satisfy 35 U.S.C. Section 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under 35 U.S.C. 112″. Id. At 1201. Examiner thus also concludes lack of enablement from the failure to satisfy 35 U.S.C. 101 as a matter of fact applicant’s failure to satisfy as a matter of law 35 U.S.C. 112, first paragraph, for lack of enablement. Even arguendo, undue experimentation would be needed to practice the invention: because the nature of the invention, the goal of fusion energy pursued for over half a century through worldwide collaborative research, applicant’s allegation as disclosed, of useable heat, requires extraordinarily detailed evidence while in contrast no evidence has been provided at all. The state of the art demonstrates the severe shortcoming in this regard because to date there is no useable heat through fusion reactions from any device as a utility of the device. Moreover, conditions similar to those described vaguely in the specification must be interpreted to mean that there is a preponderance of evidence against the emergence of useable heat under physical conditions similar to those alleged to lead to applicant’s useable heat from nuclear fusion, as witnessed, for instance, by Golberg et al. Consequently, the level of skill required to practice the invention appear to far exceed, and a forteriori to be well above the level of ordinary skill in the art of nuclear fusion. Because of the above-mentioned paucity of description of experimental conditions the breadth of the claims are inadequate given the enormous task to practice the invention for the asserted utility. Since no further directions by applicant are provided and no detailed working examples are included in the specification, the level of predictability of the results of carrying out the method steps of the invention are to be deemed extremely poor. For the above reasons, the pertinent factors (In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 ( Fed. Cir. 1988) in establishing the need for undue experimentation, appear amply satisfied (See MPEP 2164.01 (a)).

Claim Rejections – 35 USC § 101

1) 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Claims 1-16 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility. The reasons for this rejection are the same as those provided above for the objection to the specification for disclosure of an inoperative invention.

Claims 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a credible asserted utility or a well established utility. The reasons for this rejection are the same as those provided above for the objection to the Specification as failing to provide a credible asserted utility.

Claim Rejections – 35 USC § 112

2) The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Claims 1-16 are also rejected under 35 U.S.C. 112, first paragraph. Specifically, since the claimed invention is not supported by either a credible asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.

Claims 1-16 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The reasons for this rejection are the same as the reasons for the objection to the Specification for failing to provide enablement, as set forth above, and are herewith included by reference in their entirety.

Claim Rejections – 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Claims 1-16 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The metes and bounds of the claimed invention are vague and ill-defined due to inadequate written support, with reference to the rejections under 35 U.S.C. 112, 1 st par., as set forth above, whereby the claims are rendered indefinite.

Claim Rejections – 35 USC § 102

1) The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351 (a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21 (2) of such treaty in the English language.

Claims 1 and 10 are rejected under 35 U.S.C. 1 02(e) as being anticipated by Wessel et al ( US 20110/0182392 A 1). The rejection is provided subject to the noted indefiniteness under 35 U.S.C. 112, 2nd par., as set forth above, and is based on examiner’s best understanding, according to which the conditions for the claimed process, rather than the utility or enablement is addressable. To this extent Wessel et al disclose an invention that meets the claim language: aneutronic fusion in an ultra-high (> 10 MG) macroscopic magnetic field produced by 17 MA (17,000,000 A) ([0023]) an to which atoms participating in a nuclear fusion reaction are exposed, within a pressurized chamber (Z-pinch chamber 10: [0023]), hence meeting all limitations of claim 1; and the method by Wessel et al includes a step of providing a trigger forcing the fusion process, namely: adiabatic compression ([0023]). See paragraphs [0023]-[0031].

Aneutronic fusion does not produce harmful radiation nor radioactive waste, for which statement applicant takes official notice. Regarding claim 10, the claimed “electrodes” are met by the “discharge electrodes” ([0072]), the Z-pinch power is pulsed and applied to the electrodes; the step of filling the pressure chamber with gas is met by the filling comprising Xe gas (see [0022]); the switched source is inherent in the pulsed power operation of the Z-pinch (see abstract and Figure 1; for further details of the equipment see Figures 13-14 and their discussion).
/JOHANNES P MONDT/
Primary Examiner, Art Unit 3663

RESPONSE by Santilli to The Non-Final Rejection

On April 4, 2011 Santilli provided 4 documents to the USPTO:

  1. Amendment/Req. Reconsideration-After Non-Final Rejection
  2. Applicant Arguments/Remarks Made in an Amendment
  3. Claims
  4. Rule 130, 131 or 132

We will reproduce them in their entirety.

Amendment/Req. Reconsideration-After Non-Final Rejection

April 4, 2012
In response to the office action dated December 22, 2011, applicant respectfully requests reconsideration of the rejection of claims 1-20, based on the following amendments and remarks. Claims 17-20 are withdrawn as indicated in the attached claim amendments.
Due to the dramatic differences between the examiner’s opinion and the magnitude of the evidence established in refereed papers and conclusive measurements, it is requested that a face-to-face meeting be established after the Examiner has time to review the affidavit and response. Please charge any discrepancies to account 120551.

Applicant Arguments/Remarks Made in an Amendment

REMARKS
(1) The Examiner issued a restriction and applicant elected invention I and Species M1 with traverse. The Examiner withdrew the species requirement and, therefore, claims 17-20 are withdrawn from consideration.

(2,3) The Examiner objected to the specification as failing to disclose the asserted utility as credible, as failing to disclose a method that is operative for the asserted utility or that the claimed method can be used to provide a well defined and particular benefit to the public (well-established utility), and as failing to convey to those skilled in the art how to practice the claimed invention for the asserted utility without a requirement for undue experimentation. Applicant hereby submits supporting documentation in the form of a 1.132 affidavit and associated references in support of the credibility of utility of the invention as disclosed. Note reference 0 of this affidavit includes three video segments available at: httpJ/www.world-lecture-series.org/level-v.

The original specification and both provisional clearly disclose the claimed invention in a way that can be made by one skilled in the art. The examiner asserts something regarding fusion reactions being aneutronic and the threshold being extremely high, even in comparison with O-T or 0-0 fusion, taking Official Notice. Applicant argues that the last sentence ending with: “for which threshold magnitude differences examiner takes Official Notice” is unclear, therefore, making it difficult to rebut examiner’s desire to take official notice. Applicant does not agree with this official notice and does not understand what threshold the examiner is stating?

Applicant’s affidavit shows “usable heat” produced by instantiations of the claimed invention. The examiner’s assertions that “If achieved, applicant’s results would be the culmination of a worldwide effort for over half a century for the holy grail of fusion research, i.e., a veritable sun on earth, which has eluded all researchers to date” is assumed to mean that the disclosed invention is difficult to achieve, therefore, applicant’s affidavit provides ample evidence that the disclosed invention is fully operable and produces heat, as claimed.

The Examiner makes of record evidence regarding the status of fusion energy research (see 151 full paragraph of page 5 of the Office Action). This is interesting, but this is the status of researchers known and accepted by Oyoy Buturi in a closed set of research and does not account for invention outside of academia.

The Examiner further makes of record U.S. Department of Energy’s panel of 18 experts, “Report of the Review of Low Energy Nuclear Reactions”, December 1, 2004. It is unclear how a report from 2004 can be used to refute the ability to perform intermediate fusion in 2011. This is like, five years before the invention of the laser, saying that high-power monochromatic light cannot be achieved.

The examiner summarizes that one of ordinary skill in the art of fusion energy research would reasonably doubt the asserted utility, stating that the specification implies the achievement of usable heat, which would be a world first time demonstration … army of scientists … Applicant agrees that this is the first demonstration of such as detailed in the specification and affidavit. The examiner then indicates that systems with 7.5 to 50MA should be overflowing with usable heat production, but they did not. Perhaps, those systems did not use the proper fuel and did not provide the proper stimulus for the fusion of the atoms (the arc alone does not fuse the atoms) and reminds the examiner that applicant discloses a trigger that initiates the fusion as in claim 1: “providing a trigger … ” The

Examiner has not found the basic elements of applicant’s claimed invention:
a) first and second atoms being light, natural and stable
b) exposing the first and second atoms to a magnetic field
c) within a pressurized chamber, and
d) providing a trigger, the trigger forcing the nuclei of the first atom to fuse with the nuclei of the second atom

The Examiner further added: as best understood from the specification, the creation of applicant “magnecule” is not expected according to standard theory to enhance fusion cross-sections if only because the electron shell is not a significant collision barrier, and furthermore, helps screening the repulsive Coulomb potential between the positively charged ions, while the significant portion of the colliding ions’ trajectories are well within the electronic shell because the range of the nuclear force is about a factor 1 05 shorter than the Bohr radius (for which examiner herewith takes Official Notice).

Applicant rejects the official notice in its entirety because it is proved in numerous refereed publications as well as in published experiments by Dr. Santilli and confirmed by independent measurements. Established theory is those published in refereed journals. Dr. Santilli’s new species of Magnecular bond has now been vastly published in the scientific literature. Additionally, the critical role of polarized atoms with Magnecular bond has been established beyond doubt, published in refereed journals, and independently confirmed by three nuclear physicists from Princeton, NJ, according to scientific papers identified in the attached affidavit by Dr. Santilli.

The examiner follows with arguments that “others have failed after a half of a century through world-wide collaborative research … the breadth of the claims are inadequate given the enormous task to practice the invention for the asserted utility.” Applicant strongly disagrees. The examiner has not refuted any evidence cited in applicant’s disclosure. The examiner has not refuted the apparatus described. One of mechanical and electrical skill could easily make applicant’s disclosed apparatus from standard steel pipe, valves, electrodes, high-current sources, etc., as described fully in the specification.

The examiner asserts that there are no “working examples included in the specification … ” Applicant disagrees, calling attention to Figures 6, 7, 8A and 8 B of applicant’s specification and the associated description. The first paragraph of page 39 discloses an independent validation of the experiment and data described, the scientific paper with a detailed presentation now available (Verification of Santilli intermediate Controlled Nuclear Fusions without harmful radiations a and the production of magnecular clusters, Robert Brenna, Theodore Kuliczkowski, Leong Ying, New Advances in Physics, Vol. 5, page 9 (2011). Therefore, applicant refutes the Examiner’s assertion that no “working examples” have been provided in the specification. It follows that the objection should be withdrawn.
(1) The Examiner rejected claims 1-16 under U.S.C. §101 because the disclosed invention is inoperative and therefore lacks utility. This rejection is respectfully traversed. Applicant has demonstrated that the claimed invention is supported by a credible asserted utility, as supported by the evidence provide in the affidavit and that above discussion.
It follows that the rejection should be withdrawn.

(2) The Examiner rejected claims 1-16 under U.S.C. §112, first paragraph because the claimed invention is not supported by either a credible asserted utility or a well-established utility. This rejection is respectfully traversed.  Applicant has demonstrated that the claimed invention is supported by a credible asserted utility, as supported by the evidence provide in the affidavit and that above discussion.
It follows that the rejection should be withdrawn.

(2) The Examiner rejected claims 1-16 under U.S.C. §112, first paragraph as failing to comply with the enablement requirement. This rejection is respectfully traversed. Applicant has disclosed several apparatus, fuels, and electrodes with which, one skilled in the art, would be capable of reproducing the described experiments, without undo experimentation. The response to this rejection is set forth above and also in the affidavit.
It follows that the rejection should be withdrawn.

(2) The Examiner rejected claims 1-16 under U.S.C. §112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. This rejection is respectfully traversed. Applicant has disclosed several apparatus, fuels, and electrodes with which, one skilled in the art, would be capable of reproducing the described experiments, without undo experimentation. The claims are not indefinite and are fully supported by the structures and experiments described in the specification. The response to this rejection is further set forth above and
also in the affidavit.
It follows that the rejection should be withdrawn.

(1) The Examiner rejected claims 1 and 10 under U.S.C. §1 02(e) as being anticipated by Wessel et al (US 2011/0182392). This rejection is respectfully traversed. The system of Wessel requires ohmically heating of the fusible target, shock heating of the fusible target and adiabatically heating of the fusible target, then ignition of the fusible target. Applicant’s claims 1 and 10 are absent of these steps and there certainly is no ignition. Furthermore, there is no “charged particle, ” in that applicant’s system fuses atoms. Additionally, Wessel implies very high local temperatures with resulting instability which are in direct conflict of applicant’s fundamental condition of achieving controlled nuclear fusion at the threshold energy, that is, at the minimum possible energy.
It follows that the rejection should be withdrawn.

Due to the dramatic differences between the examiner’s opinion and the magnitude of the evidence established in refereed papers and conclusive measurements, it is requested that a face-to-face meeting be established after the Examiner has time to review the affidavit and response.

In view of all the above, it is believed that Claims 1-16 are novel and are in condition for allowance. Claims 17-20 are withdrawn. Such action is earnestly solicited.
Respectfully submitted,
Frank Liebenow
Agent for Applicant

Claims

AMENDMENTS TO THE CLAIMS

1. (Original) A method for intermediate fusion of a first atom of a first element with a second atom of a second element without the emission of harmful radiation and without the release of radioactive waste, the first and second atoms being light, natural and stable; a fused atom resulting from the intermediate fusion is also being light, natural and stable; the method comprising: exposing the first and second atoms to a magnetic field within a pressurized chamber causing the polarization of electron orbits into a toroid, the electrons of the first and second atoms having a toroidal shape results in exposure of the nuclei of the first atom to the nuclei of the second atom; and providing a trigger, the trigger forcing the nuclei of the first atom to fuse with the nuclei of the second atom, thereby fusing the first atom and
the second atom into the fused atom.

2. (Original) The method for intermediate fusion of claim 1, wherein the magnetic field is provided by an electric arc, the electric arc produced between a first electrode and a second
electrode within the pressure chamber.

3. (Original) The method for intermediate fusion of claim 2, wherein the first atom is deuterium provided by a gas within the pressurized chamber, at least one of the first and second electrodes comprises carbon, the second atom is carbon provided by one or both electrodes, and the fused atom is nitrogen.

4. (Original) The method for intermediate fusion of claim 2, wherein the first atom is a carbon atom and the second atom is an oxygen atom, the carbon atom and the hydrogen atom are provided by carbon dioxide gas within the pressurized chamber, the carbon dioxide molecule is molecularly separated into the carbon atom and the oxygen atom by the electric arc, and the fused atom is silicon dioxide (silica) .

5. (Original) The method for intermediate fusion of claim 2, wherein the first element is oxygen provided by air within the pressure chamber, at least one of the positive and the negative electrodes includes carbon, the second element is carbon from at least one of the electrodes and the fused element is carbon dioxide.

6. (Original) The method for intermediate fusion of claim 1, wherein the trigger is a disruption in an electric power provided to the electrodes, thereby disrupting the electric
arc.

7. (Original) The method for intermediate fusion of claim 1, wherein the trigger is a disruption in an electric power provided to the electrodes caused by a pulse of the electric
power, thereby periodically disrupting the electric arc.

8. (Original) The method for intermediate fusion of claim 8, wherein a period of the pulse of the electric power is a harmonic of a natural resonate frequency of at least one of
the first and second atoms.

9. (Original) The method for intermediate fusion of claim 1, wherein the trigger is an abrupt increase of a pressure within the chamber.

10. (Original) A method for intermediate fusion of a first element with a second element into a fused element without the emission of harmful radiation and without the release of radioactive waste; atoms of the first element and atoms of the second elements being light, natural and stable; atoms of the fused element also being light, natural and stable; the method comprising: providing a pressure chamber having at least a positive electrode and a negative electrode within the pressure chamber, the positive and negative electrodes electrically connected to a switched source of power; evacuating the pressure chamber; filling the pressure chamber with a gas, thereby increasing a pressure within the pressure chamber to an operational pressure; enabling the switched source of power, thereby initiating an electric arc between the positive electrode and the negative electrode; providing at least one trigger, the trigger fusing atoms of the first element with atoms of the second element into the atoms of the fused element.

11. (Original) The method for intermediate fusion of claim 10, wherein both the first element and the second element are contained within the gas.

12. (Original) The method for intermediate fusion of claim 10, wherein the first element is contained within the gas and the second element is provided from at least one of the first
electrode and the second electrode.

13. (Original) The method for intermediate fusion of claim 10, wherein the pressure is between 300 pounds per square inch and 3,000 pounds per square inch.

14. (Original) The method for intermediate fusion of claim 12, wherein the first element is deuterium provided by the gas, the second element is carbon provided by at least one of the first and second electrodes and the fused element is nitrogen.

15. (Original) The method for intermediate fusion of claim 11, wherein the gas is carbon dioxide, the first element is carbon and the second element is oxygen, the fused element is silicon dioxide (silica) , and the carbon and oxygen are provided by molecular separation of the carbon dioxide by the electric arc.

16. (Original) The method for intermediate fusion of claim 10, further comprising the step of capturing heat from the pressure chamber and using the heat to generate electric power.

17. (Withdrawn) An apparatus for intermediate fusion of a first element with a second element into a fused element without the emission of harmful radiation and without the release of radioactive waste; atoms of the first element and atoms of the second element being light, natural and stable; atoms of the fused element also being light, natural and stable; the apparatus comprising: a source of electric power; a pressure chamber; at least one positive electrode and at least one negative electrode within the pressure chamber, the positive and negative electrodes electrically connected to the source of electric power; means for evacuating the pressure chamber; means for filling the pressure chamber with a gas, the means for filling increasing a pressure within the pressure chamber to an operational pressure as the pressure chamber is filled with the gas; means for initiating an electric arc between the at least one posi ti ve electrode and the at least one negative electrode; and means for triggering the fusion of atoms of the first element with atoms of the second element into atoms into atoms of the fused element.

18. (Withdrawn) The apparatus for intermediate fusion of claim 17, further comprising means for capturing heat from the fusion and using the heat to generate electric power.

19. (Withdrawn) The apparatus for intermediate fusion of claim 17, further comprising means for circulating the gas through at least one of the at least one positive electrode and the at least one negative electrode, thereby forcing the atoms of the resulting element out of the electric arc.

20. (Withdrawn) The apparatus for intermediate fusion of claim 17, wherein the means for triggering the fusion is a periodic, abrupt change in the electric power.

Rule 130, 131 or 132

Declaration of prior invention in the United States to overcome 35 USC§ 101 and 35 USC § 112 (37 C.F.R. § 1.132)
Sir:
I, Ruggero Maria Santilli, hereby declare:

Purpose of declaration

1. This declaration is to establish utility and definiteness under of the above cited patent application under 35 USC§ 101 and 35 USC § 112.

Facts and documentary evidence

2. To establish the utility and definiteness of the invention contained within this application, the following documents are submitted as evidence:

a. Experimental Confirmation of Nitrogen Synthesis from deuterium and Carbon without harmful radiations R. M. Santilli
New Advances in Physics VoL 4, page 29, 2011

b. Verification of Santilli intermediate Controlled Nuclear Fusions without harmful radiations a and the production of magnecular clusters
Robert Brenna, Theodore Kuliczkowski, Leong Ying
New Advances in Physics, VoL 5, page 9 (2011)

c. Additional Confirmation of the “Intermediate Controlled Nuclear Fusions” without harmful radiation or waste R. M. Santilli
Proceedings of the Third International Conference on the Admissible Treatment of Irreversible Processes, X. Corda, Editor, Kathmandu University ( 2011) pages 163-177

The following lectures are submitted as background and support of the above documents:

d. Lectures VB, VC and VD by R. M. Santilli of the World lecture Series

e. On October 25, 2011, Prof. Cai Wei of the Physics Department of the City College, CUNY, has delivered to the Department of Physics of Qinghua University, Beijing, a talk entitled: “Santilli’s method for fusion energy,” Proc. Cai’s power point is available from the link:

f. Power Point presentation by Prof. Santilli at the US-China Summit

g. “Verification of Santilli’s Intermediate Nuclear Fusions without Harmful Radiation and the Production of Magnecular Clusters,” L. Ying, Lecture VE of World Lecture series http://www.world-Iecture-series.org

The following video is submitted as background and support of the above documents:

h. Video of the latest hardonic reactor
The following web site of intermediate nuclear fusions is submitted as background and support of the above documents:

Time of presentation of the declaration

3. This declaration is submitted in response to a rejection under 35 USC§ 101 and 35 USC § 112 by the USPTO.

Introduction

A. The below-indicated person, Ruggero Maria Santilli, below sometimes referred to as “Person,” “I,” “me,” “he,” “myself’ or the like, inventor of the above identified patent application. At the time of invention, I held the position of CEO of Magnegas Corporation.

B. The invention disclosed and claimed in the instant patent was reduced to practice (in the United States), as is evidenced by the attached Exhibits and included explanation.

C. The attached Exhibits were prepared by myself, Ruggero Maria Santilli, in the course of the efforts reflected in the Exhibits; all of the work, including preparing the originals of the Exhibits, was carried out in the United States of America.

D. The “existence” of Intermediate Controlled Nuclear Fusion (“Intermediate Fusions” for short) has been established beyond any possible or otherwise credible doubt in extensive laboratory tests and publications in qualified refereed journals, such as in References a, b, c, all disclosed after the submission of the Patent Application, thus being unknown to the Examiner prior to this Affidavit. Typical Intermediate Fusions are those of N(14) from D(2) and C(12), that of 8i(28) from 0(16) and C(l2), and others. All fusions occurring in full verification of all possible physical and nuclear laws and superselection rules with the evident release of large usable heat as identified in detail in the Patent Application.

E. The lack of emission of harmful radiations and the lack of release of radioactive waste has also been established beyond any possible or otherwise credible doubt in various refereed publications also published after the submission of the patent Applications, thus being unknown to the Examiner prior to this Affidavit. In particular, the lack of release of harmful radiations and the lack of release of radioactive waste has been confirmed by a team of independent nuclear physicists from Princeton, N . .T. (see reference b) and the result published in the reference publication b. Independently from this documentation it is evident that the fusion of N(14) from D(2) and C(12) either occurs, in which case no harmful radiation or radioactive waste can possibly be released, or it does not occur. Also, the energy used in the Hadronic Reactors of the invention is several millions of time smaller than the energy needed to smash and separate the nuclei of D(2) and/or C(12) and/or N(J.4), as a result of which any suspicion of the emission of harmful neutrons is purely conjecture and nonscientific.

F. The usable character of the produced excess heat has also been established beyond any possible or otherwise credible doubt as evidenced by the construction of three consecutive Hadronic Reactors with increased operating features. The first Hadronic Reactor being manually operated and built for the specific purpose of establishing background information; the second Hadronic Reactor being built to operate up to 300 psi; and the third Hadronic Reactor being built to operate up to 1,000 psi as the first step toward the industrial and consumer utilization of the new clean nuclear energy.

G. The invention required decades of preparatory work including: the discovery of new mathematics (called Santilli Lie-admissible mathematics) for the representation of the irreversible character of nuclear fusions; the construction of a covering of quantum mechanics known as Hadronic Mechanics (from which the name of the reactor of the invention is derived) with the covering Le-admissible structure; and, most importantly, the discovery of the chemical species of “Santilli Magnecules” schematically represented in Figure 4 of the instant application that is absolutely crucial for a systematic and controlled exposure of nuclei out of their atomic clouds as a necessary condition to allow their fusion, create the proper alignment of the various polarization, and achieve the spin couplings necessary for the verification of physical conservation laws in such a way that the next step is the action described in details in the Patent Application pushing the so aligned and prepared nuclei to the mutual distance of one Fermi at which there is the activation of the nuclear forces with consequential inevitable fusion due to their strongly attractive character (see references a, b, and c and the vast literature quoted for the background mathematical treatment). For documentation, we refer the Examiner to references d, e, f and g.

H. The fundamental novelty of the invention is beyond any possible or otherwise credible doubt since the invention is the first to have permitted the conception and construction of actual equipment capable of producing truly controlled and systematic nuclear fusions on Earth; the utility of the invention is evident, due to the crushing need by mankind for new clean forms of energy. The enablement of the invention is established by the clarity of the specification containing all possible manufacturing details down to the identification of materials of individual components as well as their dimensions, etc. The specification discloses the invention in such a way that one skilled in the art is able to construct a Hadronic Reactor. The three Hadronic Reactors currently available have been built according to the specification of the instant patent application.

I. I hereby declare that all statements made herein of my own knowledge are true and that all statement made on information and belief are believed to be true; and further that these statements were made with knowledge that willful false statements and the like are punishable by fine or imprisonment, or both, under section 1001 of Title 18 of the United States Code, and such willful false statements may jeopardize the validity of the above identified patent application.

Part 5 – The Final Rejection and Response

Application/Control Number: 13/197,836
Art Unit: 2894
DETAILED ACTION
This office Action is in response to the Arguments/Remarks and Declaration filed
April 4, 2012.
It is noted that applicant’s own (granted) petition under 37 C F R 1.1 02(c) (1) based on age requires examiner to expedite the action and leaves no time for arranging for a “face-to-face meeting” as requested by applicant in the Introduction to his Arguments/Remarks.

Response to Amendment
1. The Declaration under 37 C FR 1.132 filed April 4, 2012, is insufficient to overcome the rejection of claims 1-16 based upon 35 U.S.C. 101 and 35 U.S.C. 112 as set forth in the last Office action because: 37 C F R 1.132 states: “When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section” (underscore added by examiner). Although the Declaration is considered, the Declaration filed in this application is less significant than a Declaration by someone other than applicant himself and who can reasonably be considered a neutral party. More importantly, said Declaration fails to provide direct and convincing evidence that a preponderance of evidence against utility as transpired from the examination of the state of the art as set forth in the prior Office Action does not exist: websites to what basically are applicant’s own work are less than convincing because the examiner should already reasonably have concluded that applicant stands by his own work: It has long been known what applicant believes he has achieved. Furthermore, the problem is not that no proponents can be found, but that there is a preponderance of evidence against credibility of the asserted utility. Since applicant is convinced, why not submit his work in the form of a working device to be tested by a scientifically reputed and fully neutral institution, such as either the National Institute of Science and Technology ( NIST) or the U.S. Department of Energy (DOE)? A positive outcome of such test would certainly convince any examiner to withdraw the rejections for lack of utility and for lack of enablement. Applicant is reminded that once examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility, the burden shifts to the applicant to submit evidence sufficient to convince such a person of the invention’s asserted utility, i.e., sufficient to convince the absence of a preponderance of evidence against utility and of the finding of a lack of enablement resulting therefrom. Brana, 51 F.3d at 1566. See, e.g., in Re Swartz, 232 F.3d at 864 Examiner is well aware that there is a group of scientists who are convinced that the status of low-energy nuclear reactions has reached the stage of credible asserted utility and enablement. Such was the case when a group of scientists requested a Department of Energy Peer Review, which was published in December of 2004 However, as the peer Review Report as cited documents, there was an overwhelming conclusion among the expert reviewers that the experimental evidence of heat production through low energy nuclear reactions was inconclusive. The Declaration provides no convincing evidence that applicant’s Low Energy Nuclear Reaction scenario, i.e., what he calls Intermediate Controlled Nuclear Fusion, has utility for the following reasons:

(a) References through website addresses to videos cannot be accepted as evidence, because said references are not evidence, but instead merely references to potential evidence not in themselves made of record. Hence, items corresponding to paragraphs 2.h and 2.i have not been considered.

(b) References corresponding to paragraphs but not corresponding to documents that have in themselves have not been made of record are also not considered, with reference to 37 C. F.R. 37 1.132, which states: “When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section”. Underscore was added by examiner for emphasis: Reference to evidence is quite distinct from and cannot be substituted from “evidence”. Accordingly, only the references corresponding to paragraphs 2.a, 2.b, 2.c and 2.e have been considered on account of correspondence to actual evidentiary documentation referred to in said Declaration. Regarding the considered items that respectively correspond to paragraphs 2.a, 2.b, 2.c and 2.e, it is first noted that those corresponding to 2.a and 2.c merely confirm the inventor’s position, said inventor being also an author of the document. The remaining two documents comprise a slide presentation, which is wholly un-refereed (item 2.e), and hence the “evidence” is principally a single article (Brenna et al), which is insufficient to counter the reasons for a preponderance of evidence against utility as set forth in the prior Office Action, given the enormity of the claims as explained in the prior office Action. Finally, applicant is kindly invited to provide evidence of the scientific standing of the journal ” New Advances in Physics”; neither the examiner nor search support staff has been able to find said journal indexed in any commercial database. Its articles are not indexed in Inspec, Compendex, Chemical Abstract, Science Citation Index/Scisearch, Pascal, MatchSciNet, EbscoHost, Proquest Direct, etc ..

Response to Arguments

2. Applicant’s arguments filed as “Remarks” on April 4, 2012, have been fully considered but they are not persuasive.

a. Applicant asserts that the claimed invention is disclosed “in a way that can be made by one skilled in the art” (page 2 or Remarks). This argument fails to persuade because in view of the asserted utility of heat production through nuclear fusion not the making but the result of nuclear fusion induced heat production and without the emission of harmful radiation and without the release of radioactive waste needs to be rendered credible, which applicant has failed to do, as explained in the prior Office Action. Applicant reconfirms his assertion of
” … “useable heat” produced by instantiations of the claimed invention”. However, examination of the evidence as provided to date including through applicant’s Declaration under 37 C. F.R., 1.132 at best shows a single article alleging confirmation of the results by inventor, which, however, is not uncommon in the area of basic research, and by itself does not provide evidence that a preponderance of evidence against the asserted utility should not be reasonably concluded based on the state of the art as a whole.

b. Examiner refers to the “Response to Amendment” supra regarding his finding that the nature and character of evidence falls far short of being effective to overcome the rejections under 35 USC 101 and 112. Regarding videos, no videos have been found in the file.

c. Regarding the Official Notice, applicant argues that the sentence in which the official Notice is stated is “unclear” (page 2 of Remarks). However, examiner maintains the sentence is clearly stating that the threshold for achieving aneutronic fusion is far higher than the thresholds for 0-0 or O-T fusion. It is not clear whether this fact is challenged. However, examiner herewith makes of record (a) W.M. Nevins, A Review of Confinement Requirements for Advanced Fuels”, Journal of Fusion Energy 17(1), 1998, especially Figure 1 and discussion from which it is clear that for selected advanced fuels the cross section is orders of magnitude lower than for the commonly considered but neutronic O-T and 0-0 reactions for relative particle energies / temperatures up to at least about 100,000,000 degrees C (approximately 10 keV): furthermore, see especially the section 4 on Bremsstrahlung radiation preventing ignition in p-11 B, a leading aneutronic contender, for evidence of the prohibitive effect of Bremsstrahlung losses particularly at higher temperatures; and (b) Rose et ai., “Plasmas and Controlled Fusion”, section 2.3, Experimental Fusion Cross Sections, pp. 17-20 (1961), especially Figure 2.2 and its discussion.

d. Applicant continues to state disagreement with the Office Action’s statement (see page 3, first par., herewith included by reference) with examiner’s conclusion of lack of credible asserted utility, stating in particular that this shows only that the invention “is difficult to achieve”. Examiner disagrees: extraordinary results require extraordinary substantiation. Applicant has not provided extraordinary substantiation, the strongest support being only a single basic research article by others.

e. Applicant denies the importance of the U.S. Department of Energy’s Report on the Review of Low Energy Nuclear Reactions because it is dated (page 3). Examiner disagrees, because any change in the Department of Energy’s position would reasonably be expected to result in a substantial update of said Report, the more so since the U.S. Department of Energy has funded basic research in the field of Low Energy Nuclear Reactions during the period 2004-2011. As already stated, examiner would accept the result of such an updated Report on the Review of Low Energy Nuclear Reactions, or an equivalent Peer Review Report by the National Institute of Science and Technology, Such that experimental data receive the evaluation by an expert panel that is needed for accepting credibility of the asserted utility of useable heat production through low energy nuclear reactions.

f. Applicant continues by stating doubt on the evidence against utility and enablement made of record in the prior Office Action (paragraph bridging pages 3-4). Criticism that Golberg (previously cited) would have no trigger is incorrect: Golberg discloses plasma compression, which is an example of a trigger according to the specification. Whether or not the first and second atoms are “natural and stable” is irrelevant for the question whether or not fusion should have taken place, aneutronic or not: Golberg does feature first and second atoms that are fusionable: Golberg discusses a O-T plasma, while O-T cross sections are much higher than the cross-sections of applicant aneutronic reactions. As for magnetic field see section 2 in Golberg, disclosing a “10-30 fold compression of a liner imploding onto an axial magnetic field”, said magnetic field being 80-300 kG strong (p.320). The chamber within which this compression occurs is pressurized in light of the temperature and density values as disclosed in the introduction, and is further pressurized because of the magnetic field pressure. What really matters for fusion is, of course, whether the plasma is pressurized, and it certainly is pressurized both by kinetic and by magnetic pressure. From Golberg it may be concluded that the plasma he discusses satisfies all criteria except the fusion reactions are neutronic rather than aneutronic. Because of the larger cross-sections for the standard neutronic reactions ( O-T and 0-0) examiner is wholly unpersuaded that the plasma discussed by Golberg somehow would not team with fusion reactions if appl icant’s basic elements are correct.

g. Applicant adds a statement, i.e., that his magnecule theory is “proved in numerous refereed publications as well as published experiments by Dr. Santilli and confirmed by independent measurements” (page 4). Examiner refers to the above discussion of these documents made of record by applicant. In addition, examiner in response to this statement points to the only eight articles found in INSPEC authored by applicant, all but one published in the same journal of a publishing company, Hadronic Press, Inc., founded by applicant in 1978, the one exception being a contributed paper during the ICNAAM 2010 International Conference on Numerical Analysis and Applied Mathematics (Volume I I, 2010, pp. 882-885 not directly related to the concept of magnecule. According to examiner’s information, furthermore, and applicant may correct examiner if incorrect: Manager and CEO of aforementioned publishing company is his spouse, Ms. Carla Santilli, casting some doubt on the neutrality of the publishing company. Therefore, examiner is in no position to confirm the above statement.

That “examiner has not refuted the apparatus described” is quite correct: it is not examiner’s task to provide an independent evaluation. In this respect applicant appears to confuse the U.S. Patent Office with the office of an editor of an internationally refereed review journal or a testing institute without any business interest. Nor does examiner state that applicant is incorrect, but only that, given the state of the prior art and the nature of the standardly accepted physics there is a preponderance of evidence against the credibility of applicant’s asserted utility.

h. Applicant traverses the observation by examiner that there are no working examples included in the specification (page 5 of Remarks), “calling attention to Figures 6, 7, 8A and 8B of applicant’s description and associated description, once more pointing out the article by Brenna et al containing “independent validation of the experiment and data described, the scientific paper with a detailed presentation now available”. Given the overwhelming evidence in favor of the standard theory the examiner disagrees that on the basis of a single paper there would no longer be a preponderance of evidence against utility. Even arguendo, one of ordinary skill in the art would reasonably conclude that the reaction defined by Equation (1) on page 11 of said article, which is the same as disclosed in the specification, page 23, line 14, requires, for its verification, consistent evidence of decrease of deuterium ions and carbon ions in stoichiometric correspondence with an increase in nitrogen ions. The article not only does not show this, it shows no increase in nitrogen, but instead it shows a sharp decrease in nitrogen for one of the two data points on pressure (100 psi), as evidenced by a decrease in 14N2 from 536,530 to 125,200 parts per million: see Table on pages 12-13, listing [N.B.: the superscript "28" in Brenna pertains to the molecule mass, in terms of proton mass, as a whole]. The authors admit as much and state (page 14, lines 1-6): “The decrease in the amount of nitrogen in the 100 psi data can be misleading, since the evolved nitrogen can be trapped in clustered magnecules as indicated by the existence of higher mass entities in the spectral data following all the reactions”. Respectfully, this explanation is not persuasive because the s-called magnecules could have been chemically analyzed, thereby quantifying the abundance of 14N nuclei, but the authors appear not to have done so. The authors did not show that the evolved nitrogen was indeed trapped, and hence their explanation for failing to have agreement between the expected and the observed nitrogen abundances is without substance. Furthermore, by relying in their speculation that the evolved nitrogen can be trapped in clustered magnecules, the authors’ explanation for the problem with nitrogen abundance rests on the assumed correctness (magnecules) of the very model they are trying to test. For all of the above reasons even the only independent article (Brenna et al) fails to verify applicant’s invention. The Brenna et al results in this respect are identical with applicant’s disclosure, viz. the Table illustrated through Figure 8. Since applicant on page 5 argues against examiner’s observation that “there are no working examples in the specification” based on this disclosure and Brenna et ai, examiner is forced to conclude that there are no working examples that provide convincing evidence of the utility applicant’s invention. Accordingly, examiner disagrees, for the above reasons, with applicant’s insistence (pages 6-7) that the rejections under 35 USC 101 and 112 should be withdrawn, and hence theses rejection stand.

i. Applicant traverses of the rejections under 35 USC 1 02(e) over Wessel et al on the bases (a) that the “system of Wessel requires ohmically heating of the fusible target, shock heating of the fusible target and adiabatically heating of the fusible target, then ignition of the fusible target”, which are absent steps in the claimed invention as recited by claims 1 and 10. Examiner cannot find in the M P E P and is not aware of a requirement by law for anticipation not to rest on a method narrower than the claimed method. Applicant additionally argues that “Wessel implies very high local temperatures with resulting instability which are in direct conflict of applicant’s fundamental condition of achieving controlled nuclear fusion at the threshold energy, that is, at the minimum possible energy”. This argument fails to persuade of error just as fully, at least because neither temperature nor stability is claimed in any way, but also because no “threshold energy” and no “minimum possible energy” is recited in either of claims 1 and 10, while even arguendo, in any system nuclear fusion proceeds at the threshold for nuclear fusion reactions to take place. In view of all of the above, examiner disagrees fully with applicant’s traverse of said rejections. Accordingly, the rejection over Wessel et al under 35 USC 1 02(e) also stand.

For convenience of the reader the objection and rejections set forth in the prior Office Action are reproduced below without any change intended.
Specification
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.

3. The Specification is objected to as failing to disclose the asserted utility as credible, as failing to disclose a method that is operative for the asserted utility or that the claimed method can be used to provide a well-defined and particular benefit to the public (well-established utility), and as failing to convey to those skilled in the art how to practice the claimed invention for the asserted utility without a requirement for undue experimentation. The method relies on severe distortion of the electronic shells around nuclei so as to reduced the latter to toroids (i.e., rings) around the nuclei, by application of an ultra-high magnetic field, which is alleged to occur, for instance, within atomic distances (10-8 cm) of an arc. The fusion reactions, moreover, are of the type not to produced any harmful radiation or release of radioactive waste, and thus have to be of the aneutronic type, for which the threshold is extremely high even in comparison with O-T or 0-0 fusion currently attempted around the world, for which threshold magnitude differences examiner takes Official Notice.

In particular, the Specification defines the objective of the invention as the production by means nuclear fusion of “usable heat” (page 5, lines 5-7). Examiner understands “useable heat” in light of applicant’s specification to mean that the fusion reactions require less energy than they release. This is the only reasonable interpretation: see “Field of the Invention”, page 1, lines 12-15, in which applicant states: “This invention relates to the field of producing heat and more particularly to a system for producing usable heat without the emission of harmful radiation or the production of radioactive waste”. If achieved, applicant’s results would be the culmination of a worldwide effort for over half a century for the holy grail of fusion research, i.e., a veritable sun on earth, which has eluded all researchers to date. Applicant, in the instant specification, admits that both hot and cold fusion have not proven successful to date, and proposes “intermediate fusion”, predicated on the idea that through high magnetic fields the electron cloud can be narrowed to extend over but a small portion of the total surface area normally occupied by the electronic shells around nuclei.

This is allegedly accomplished by the “realization of Intermediate Controlled Fusion processes” (henceforth referred to by applicant as ” IC FP”), referring to an apparatus capable of producing usable heat in a fully controlled system via a number of mechanisms and processes occurring within nuclei, referred to henceforth by applicant as “fusion processes”, but according to applicant’s definition of said mechanisms and processes not being limited to nuclear fusion (see “Detailed Description”, page 10).

In summary: applicant alleges to have been successful in the monumental understanding of fusion energy production where all others have failed to date. Examiner notes, however, that the specification fails to provide evaluated, experimental data demonstrating that the asserted utility of useable heat has been achieved. This is quite remarkable, because of the non-established nature of applicant’s claims as far as the scientific peer community is concerned. But it is especially so in view of the extraordinary nature of the asserted utility: extraordinary assertions require solid evidence, while applicant has presented none. That the assertion of useable heat from fusion is indeed extraordinary is witnessed readily by applicant’s own admission of the failure to date of both hot and cold fusion and the implication of applicant’s filing that what he calls “intermediate fusion” is without prior art. No evidence has been provided; reference to applicant’s own journal cannot be accepted as incorporated by reference for any essential subject matter, while applicant has not even made those references (see pages 12, 19, and 39) of record.

Examiner herewith makes of record evidence regarding the status of fusion energy research the abstract to Matsuda et ai, “Present status and future prospects of fusion energy research, Oyoy Buturi volume 79, issue 9, pp. 819-’9 (September 2010) (previously cited), from which it must be concluded that as recent as less about six months before filing of the provision al application fusion energy research had not achieved its goal of realizing a fusion energy as a source of energy for humankind.

Examiner submits that in view of this status of fusion energy research detailed experimental data, with error analysis, showing useable energy production would have been required; however, nothing of the sort was found in the specification. Examiner further herewith makes of record the most recent peer review by the U.S. Department of Energy’s panel of 18 experts, ” Report of the Review of Low Energy Nuclear Reactions”, December 1, 2004 (previously cited), reviewing research in fusion energy extending in its scope over temperatures or equivalent relative energies of colliding ions lower than a few eV, i.e., less than a few tens of thousands of degrees Celsius, and concluding that while basic research would be helpful in resolving controversies in the field of low energy nuclear reactions (see “Conclusion” on page 5 of the Summary), no evidence for any nuclear physics phenomenon responsible for excess heat was in evidence (Review #2). Although most of the review was concerned with deuterated metals, i.e., “conventional” cold fusion, the scope of the Review would have had to include applicant’s research considering the energy range over which the review was extended.

For the above reasons examiner concludes that one of ordinary skill in the art of fusion energy research would reasonably doubt the asserted utility. In particular, the lack of any consideration or analysis of energy balance in the Specification-as-originally-filed implies that the achievement of useable energy in the form of useable heat, which would be a world first-time demonstration in the field of nuclear fusion energy research that has occupied a veritable army of scientists and engineers in many countries for over half a century, is just not credible. Furthermore, because the asserted utility is not credible the method is deemed inoperative.

Examiner further notes the extreme paucity of experimental data on the conditions under which the useable heat is asserted to be produced. A current of 103 A (page 13, line 9) and distance of atomic size (10-8 cm) from an arc are known in the art and were not alleged to result in the asserted production of useable heat: in fact, systems with current amplitudes of 7.5 to 50 MA, hence about four orders of magnitude over and above applicant’s current, should be overflowing with useable heat production but they do not, as witnessed from, e.g., Golberg (“Plasma Compression, Heating and Fusion in Megagauss Z-8 Pinch Systems”, Plasma Physics and Controlled Fusion 32(5), 319-326 (1990)) (previously cited): see in particular Golberg’s conclusion. Golberg stated in unmistakable terms: “None of the trials came close to ignition”.

Examiner further adds that, as best understood from the specification, the creation of applicant “magnecule” is not expected according to standard theory to enhance fusion cross-sections if only because the electron shell is not a significant collision barrier, and furthermore, helps screening the repulsive Coulomb potential between the positively charged ions, while the significant portion of the colliding ions’ trajectories are well within the electronic shell because the range of the nuclear force is about a factor 105 shorter than the Bohr radius (for which examiner herewith takes Official Notice). That applicant’s assertions have a likelihood of being based on absolutely non-standard theory as evidenced from applicant’s own release on the internet, see “Ethical Notes” by inventor for the book “New Sciences for a New Era”. February 2008 (54 pages) clearly correlates with these considerations to any cognizant reader of scientific literature.

Examiner admits that experiment ultimately is the true criterion of scientific discovery.
However, applicant has, as of filing, and judging from the specification, only a scientific concept, widely unaccepted and unverified by experiment. Serious doubt arises as a result about reduction to practice. “The how to use prong of section 1 12 incorporates as a matter of law the requirement of 35 U.S.C. Section 101 that the specification disclose as a matter of fact a practical utility for the invention”. In re Ziegler, 992 F.2d 1197, 1200 ( Fed. Cir. 1993). ” If the application fails as a matter of fact to satisfy 35 U.S.C. Section 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under 35 U.S.C. 1 12″. Id. At 120 1. Examiner thus also concludes lack of enablement from the failure to satisfy 35 U.S.C. 101 as a matter of fact applicant’s failure to satisfy as a matter of law 35 U.S.C. 112, first paragraph, for lack of enablement. Even arguendo, undue experimentation would be needed to practice the invention: because the nature of the invention, the goal of fusion energy pursued for over half a century through worldwide collaborative research, applicant’s allegation as disclosed, of useable heat, requires extraordinarily detailed evidence while in contrast no evidence has been provided at all. The state of the art demonstrates the severe shortcoming in this regard because to date there is no useable heat through fusion reactions from any device as a utility of the device. Moreover, conditions similar to those described vaguely in the specification must be interpreted to mean that there is a preponderance of evidence against the emergence of useable heat under physical conditions similar to those alleged to lead to applicant’s useable heat from nuclear fusion, as witnessed, for instance, by Golberg et al. Consequently, the level of skill required to practice the invention appear to far exceed, and a forteriori to be well above the level of ordinary skill in the art of nuclear fusion. Because of the above-mentioned paucity of description of experimental conditions the breadth of the claims are inadequate given the enormous task to practice the invention for the asserted utility. Since no further directions by applicant are provided and no detailed working examples are included in the
specification, the level of predictability of the results of carrying out the method steps of
the invention are to be deemed extremely poor. For the above reasons, the pertinent factors ( In re Wands, 858 F.2d at 737, 8 US PQ2d at 1404 ( Fed. Cir. 1988) in establishing the need for undue experimentation, appear amply satisfied (See M P E P 2164.01 (a)).

Claim Rejections – 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

4. Claims 1-16 are rejected under 35 U.S.C. 101

a. because the disclosed invention is inoperative and therefore lacks utility.
The reasons for this rejection are the same as those provided above for the objection to the specification for disclosure of an inoperative invention, and

b. because the claimed invention is not supported by either a credible asserted utility or a well established utility.

The reasons for this rejection are the same as those provided above for the objection to the Specification as failing to provide a credible asserted utility.

Claim Rejections – 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.

5. Claims 1-16 are also rejected under 35 U.S.C. 112, first paragraph. Specifically, since the claimed invention is not supported by either a credible asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.

6. Claims 1-16 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The reasons for this rejection are the same as the reasons for the objection to the Specification for failing to provide enablement, as set forth above, and are herewith included by reference in their entirety.

Claim Rejections – 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

7. Claims 1-16 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The metes and bounds of the claimed invention are vague and ill-defined due to inadequate written support, with reference to the rejections under 35 U.S.C. 112, 1 st par., as set forth above, whereby the claims are rendered indefinite.

Claim Rejections – 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form
the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351 (a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21 (2) of such treaty in the English language.

8. Claims 1 and 10 are rejected under 35 U.S.C. 1 02(e) as being anticipated by Wessel et al (US 20110/0182392 A 1). The rejection is provided subject to the noted indefiniteness under 35 U.S.C. 112, 2nd par., as set forth above, and is based on examiner’s best understanding, according to which the conditions for the claimed process, rather than the utility or enablement is addressable. To this extent Wessel et al disclose an invention that meets the claim language: aneutronic fusion in an ultra-high (> 10 MG) macroscopic magnetic field produced by 17 MA (17,000,000 A) ([0023]) an to which atoms participating in a nuclear fusion reaction are exposed, within a pressurized chamber (Z-pinch chamber 10: [0023]), hence meeting all limitations of claim 1; and the method by Wessel et al includes a step of providing a trigger forcing the fusion process, namely: adiabatic compression ([0023]). See paragraphs [0023]-[0031]. Aneutronic fusion does not produce harmful radiation nor radioactive waste, for which statement applicant takes official notice. Regarding claim 10, the claimed “electrodes” are met by the “discharge electrodes” ([0072]), the Z-pinch power is pulsed and applied to the electrodes; the step of filling the pressure chamber with gas is met by the filling comprising Xe gas (see [0022]); the switched source is inherent in the pulsed power operation of the Z-pinch (see abstract and Figure 1; for further details of the equipment see Figures 13-14 and their discussion).

Conclusion
THIS ACTION IS MADE FINAL.
/JOHANNES P MON DT/
Primary Examiner, Art Unit 2894

Part 6 – The Oral Interview

Claim(s) discussed: as rejected.
Identification of prior art discussed: as applied.
Substance of Interview
(For each issue discussed, provide a detailed description and indicate if agreement was reached. Some topics may include: identification or clarification of a reference or a portion thereof, claim interpretation, proposed amendments, arguments of any applied references etc … )

Inventor, Dr. R.M. Santilli, Provided a brief discussion of the essence of his invention, and referred to confirmations of the experimental data by independent researchers.

Examiner responded that determination of utility, in particular, operability and credibility of asserted utility, is a question as to a preponderance of evidence, and reiterated his remarks in the prior Office Action, page 7, paragraph e, that he would accept the result of an updated Report on the Review of Low Energy Nuclear Reactions by the U.S. department of Energy, or an equivalent Peer Review Report by the National Institute of Science and Technology, such that experimental data receive the evaluation by an expert panel under its auspices. Examiner is committed to conform to such a panel’s overall conclusion on credibility of the asserted utility and operability. Examiner reminded applicant of the possibility of a suspension of prosecution. In particular, examiner refers to 37 C.F.R. 1.103Ca) for the possibility to suspend procesution for a period not exceeding six months (N.B.: the Office will not grant suspension if an action is due) and 1.103(c)) for limited suspension after a Request for Continued Examination (RCE).

End of Oral Interview

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Part 7 – The New October 18 Documents

10-18-2012 Request for Continued Examination (RCE)

This just is a formal request for one more review based on the response to the Final Rejection.

10-18-2012 Fee Worksheet (SB06)

Standard material

10-18-2012 Acknowledgment Receipt

Standard material

10-18-2012 Miscellaneous Incoming Letter

10-18-2012 Miscellaneous Incoming Letter

10-18-2012 Miscellaneous Incoming Letter

10-18-2012 Rule 130, 131 or 132 Affidavits

10-18-2012 Specification

INTRODUCTION
October 18, 2012
In response to the office action dated April 19, 2012 and teleconference between the Examiner, Dr. Santilli and Mr. Liebenow on 1 0-Oct-2012, applicant respectfully requests a three-month extension, continuing examination and reconsideration of the rejection of claims 1-20, based on the following amendments and remarks. Claims 17-20 were previously withdrawn. Please charge any discrepancies to account 120551.

REMARKS
(1) The Examiner responded to applicant’s prior declaration indicating that it is insufficient to overcome the rejections of claims 1-16 based upon 35 u.s.C. 101 and 35 U.S.C. 112 as set forth in the last Office action. The Examiner suggested an oath or declaration from scientists other than the applicant himself. Applicant now provides declarations of several noted physicists as will be discussed.

(2,3) The Examiner objected to the specification as failing to disclose the asserted utility as credible, as failing to disclose a method that is operative for the asserted utility or that the claimed method can be used to provide a well defined and particular benefit to the public (well-established utility), and as failing to convey to those skilled in the art how to practice the claimed invention for the asserted utility without a requirement for undue experimentation.

Applicant hereby submits supporting documentation in the form of 1.132 affidavits and associated references of the individuals attesting to the operability of applicant’s system in support of the credibility of utility of the invention as disclosed.

The affidavits of several renowned scientists concur that these scientists have observed applicant’s system for Intermediate Controlled Nuclear Fusion and have witnessed the synthesis of a qualitative amount of nitrogen produced in a reactor filled with only Deuterium and having an arc between two carbon electrodes. These scientists concur that the synthesis of nitrogen (14 atomic mass unit) can only occur by the nuclear fusion of the deuterium (2 atomic mass unit) and the carbon (12 atomic mass unit).

The affidavits of these scientists concur that there was no harmful radiation emitted and no radioactive waste produced. The affidavits of these scientists concur that a greater amount of energy is produced than the amount of energy used by the reactor. This observation included a measurement of the electric energy absorbed (by the arc), the weight of the reactor, and the resulting increase of temperature.

Furthermore, the Examiner has not found the basic elements of applicant’s claimed invention:
a) first and second atoms being light, natural and stable
b) exposing the first and second atoms to a magnetic field
c) within a pressurized chamber, and
d) providing a trigger, the trigger forcing the nuclei of the first atom to fuse with the nuclei of the second atom

The Examiner further added:
as best understood from the specification, the creation of applicant “magnecule” is not expected according to standard theory to enhance fusion cross-sections if only because the electron shell is not a significant collision barrier, and furthermore, helps screening the repulsive Coulomb potential between the positively charged ions, while the significant portion of the colliding ions’ trajectories are well within the electronic shell because the range of the nuclear force is about a factor 1 05 shorter than the Bohr radius (for which examiner herewith takes Official Notice).

Applicant rejects the official notice based upon the numerous refereed publications as well as in published experiments by Dr. Santilli and confirmations made by independent measurements witnessed by renowned scientists as per the attached affidavits. Additionally, the critical role of polarized atoms with Magnecular bond has been established beyond doubt, published in refereed journals, and independently confirmed by three nuclear physicists from Princeton, NJ, according to scientific papers identified in the attached prior affidavit by Dr. Santilli.

The examiner follows with arguments that “others have failed after a half of a century through world-wide collaborative research … the breadth of the claims are inadequate given the enormous task to practice the invention for the asserted utility.” This fails to refute any evidence cited in applicant’s disclosure.

The examiner has not refuted the actual apparatus described. One of mechanical and electrical skill could easily make applicant’s disclosed apparatus from standard steel pipe, valves, electrodes, high-current sources, etc., as described fully in the specification.

The examiner asserts that there are no “working examples included in the specification … ” Applicant disagrees, calling attention to Figures 6, 7, 8A and 8B of applicant’s specification and the associated description. The first paragraph of page 39 discloses an independent validation of the experiment and data described, the scientific paper with a detailed presentation now available
(Verification of Santilli intermediate Controlled Nuclear Fusions without harmful
radiations and the production of magnecular clusters, Robert Brenna, Theodore
Kuliczkowski, Leong Ying, New Advances in Physics, Vol. 5, page 9 (2011).

Applicant has produced a working reactor according to the disclosure and has demonstrated such to several renowned scientists, several of whom have provided signed affidavits. Therefore, applicant refutes the Examiner’s assertion that no “working examples” have been provided in the specification.
Applicant respectfully requests that the objection be withdrawn.

(1) The Examiner rejected claims 1-16 under U.S.C. §1 01 because the disclosed invention is inoperative and therefore lacks utility. This rejection is respectfully traversed. Applicant has demonstrated that the claimed invention is supported by a credible asserted utility, as supported by the evidence provide in the affidavits and the above discussion.
Applicant respectfully requests that the objection be withdrawn.

(2) The Examiner rejected claims 1-16 under U.S.C. §112, first paragraph because the claimed invention is not supported by either a credible asserted utility or a well-established utility. This rejection is respectfully traversed. Applicant has demonstrated that the claimed invention is supported by a credible asserted utility, as supported by the evidence provide in the affidavit of several renowned scientists and that above discussion.
Applicant respectfully requests the rejection be withdrawn.

(2) The Examiner rejected claims 1-16 under U.S.C. §112, first paragraph as failing to comply with the enablement requirement. This rejection is respectfully traversed. Applicant has disclosed several apparatus, fuels, and electrodes with which, one skilled in the art, would be capable of reproducing the described experiments, without undo experimentation. The response to this rejection is set forth above and supported by the included affidavits.
Applicant respectfully requests that the objection be withdrawn.

(2) The Examiner rejected claims 1-16 under U.S.C. §112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. This rejection is respectfully traversed. Applicant has disclosed several apparatus, fuels, and electrodes with which, one skilled in the art, would be capable of reproducing the described experiments, without undo experimentation. The claims are not indefinite and are fully supported by the structures and experiments described in the specification. The response to this rejection is further set forth above and also supported by the included affidavits.
Applicant respectfully requests that the rejection be withdrawn.

(1) The Examiner rejected claims 1 and 10 under U.S.C. §1 02(e) as being anticipated by Wessel et al (US 2011/0182392). This rejection is respectfully traversed. The system of Wessel requires ohmically heating of the fusible target, shock heating of the fusible target and adiabatically heating of the fusible target, then ignition of the fusible target. Applicant’s claims 1 and 10 are absent of these steps and there certainly is no ignition. Furthermore, there is no “charged particle,” in that applicant’s system fuses atoms. Additionally, Wessel implies very high local temperatures with resulting instability which are in direct conflict of applicant’s fundamental condition of achieving controlled nuclear fusion at the threshold energy, that is, at the minimum possible energy.

On pages 7-8 of the office action, the Examiner states that: Golberg discloses plasma compression, which is an example of a trigger according to the specification. Compression is different than a trigger, in that, compression can occur over time and be gradual. There is no implication of “sudden” in the term, compression. Applicant’s system has a trigger that is, for example, a sudden pressure change or abrupt change in the arc which forces adjacent atoms to fuse together. Furthermore, Golberg is silent on harmful emissions such as radiation or radioactive waste, only indicating that the Z-<P pinch system can be used in existing pulsed-power facilities as a stable neutron source.
Applicant respectfully requests that the rejection be withdrawn.

SUMMARY OF SUPPORTING AFFIDAVIT
Applicant has submitted three signed testimonials from the following noted scientists:
DAXI LI – Chairman of Chinese Association for Science and Business, Ph.D. in physics from CUNY
Wei Cai – Dept. Physics Qinghua University, Beijing
Leong Ying – Thermo Fisher Scientific*
Robert Brenna – Thermo Fisher Scientific*
Theodore Kuliczkowski – Thermo Fisher Scientific*

*The signed certification is from the 3 PGT representatives (now part of Thermo) who supervised the ICNF experiments and analyzed the results through the various independent consultants. These experiments were detailed in the published paper: Verification of intermediate nuclear fusions without harmful radiation and the production of magnecular clusters (New Advances in Physics, Volume 5, Number 1, 9-17 (2011).

In view of all the above, it is believed that Claims 1-16 are novel and are in condition for allowance. Claims 17-20 are withdrawn. Such action is earnestly solicited.
Respectfully submitted,
Frank Liebenow
Agent for Applicant

10-18-2012 Claims

Santilli’s final claims – AMENDMENTS TO THE CLAIMS
1. (Original) A method for intermediate fusion of a first atom of a first element with a second atom of a second element without the emission of harmful radiation and without the release of radioactive waste, the first and second atoms being light, natural and stable; a fused atom resulting from the intermediate fusion is also being light, natural and stable; the method comprising: exposing the first and second atoms to a magnetic field within a pressurized chamber causing the polarization of electron orbits into a toroid, the electrons of the first and second atoms having a toroidal shape results in exposure of the nuclei of the first atom to the nuclei of the second atom; and providing a trigger, the trigger forcing the nuclei of the first atom to fuse with the nuclei of the second atom, thereby fusing the first atom and the second atom into the fused atom.

2. (Original) The method for intermediate fusion of claim 1, wherein the magnetic field is provided by an electric arc, the electric arc produced between a first electrode and a second
electrode within the pressure chamber.

3. (Original) The method for intermediate fusion of claim 2, wherein the first atom is deuterium provided by a gas within the pressurized chamber, at least one of the first and second electrodes comprises carbon, the second atom is carbon provided by one or both electrodes, and the fused atom is nitrogen.

4. (Original) The method for intermediate fusion of claim 2, wherein the first atom is a carbon atom and the second atom is an oxygen atom, the carbon atom and the hydrogen atom are provided by carbon dioxide gas within the pressurized chamber, the carbon dioxide molecule is molecularly separated into the carbon atom and the oxygen atom by the electric arc, and the fused atom is silicon dioxide (silica) .

5. (Original) The method for intermediate fusion of claim 2, wherein the first element is oxygen provided by air within the pressure chamber, at least one of the positive and the negative electrodes includes carbon, the second element is carbon from at least one of the electrodes and the fused element is carbon dioxide.

6. (Original) The method for intermediate fusion of claim 1, wherein the trigger is a disruption in an electric power provided to the electrodes, thereby disrupting the electric arc.

7. (Original) The method for intermediate fusion of claim 1, wherein the trigger is a disruption in an electric power provided to the electrodes caused by a pulse of the electric power, thereby periodically disrupting the electric arc.

8. (Original) The method for intermediate fusion of claim 8, wherein a period of the pulse of the electric power is a harmonic of a natural resonate frequency of at least one of the first and second atoms.

9. (Original) The method for intermediate fusion of claim 1, wherein the trigger is an abrupt increase of a pressure within the chamber.

10. (Original) A method for intermediate fusion of a first element with a second element into a fused element without the emission of harmful radiation and without the release of radioactive waste; atoms of the first element and atoms of the second elements being light, natural and stable; atoms of the fused element also being light, natural and stable; the method comprising:

providing a pressure chamber having at least a positive electrode and a negative electrode within the pressure chamber, the positive and negative electrodes electrically connected to a switched source of power;

evacuating the pressure chamber;

filling the pressure chamber with a gas, thereby increasing a pressure within the pressure chamber to an operational pressure;

enabling the switched source of power, thereby initiating an electric arc between the positive electrode and the negative electrode;

providing at least one trigger, the trigger fusing atoms of the first element with atoms of the
second element into the atoms of the fused element.

11. (Original) The method for intermediate fusion of claim 10, wherein both the first element and the second element are contained within the gas.

12. (Original) The method for intermediate fusion of claim 10, wherein the first element is contained within the gas and the second element is provided from at least one of the first
electrode and the second electrode.

13. (Original) The method for intermediate fusion of claim 10, wherein the pressure is between 300 pounds per square inch and 3,000 pounds per square inch.

14. (Original) The method for intermediate fusion of claim 12, wherein the first element is deuterium provided by the gas, the second element is carbon provided by at least one of the
first and second electrodes and the fused element is nitrogen.

15. (Original) The method for intermediate fusion of claim 11, wherein the gas is carbon dioxide, the first element is carbon and the second element is oxygen, the fused element is silicon dioxide (silica) , and the carbon and oxygen are provided by molecular separation of the carbon dioxide by the electric arc.

16. (Original) The method for intermediate fusion of claim 10, further comprising the step of capturing heat from the pressure chamber and using the heat to generate electric power.

17. (Withdrawn) An apparatus for intermediate fusion of a first element with a second element into a fused element without the emission of harmful radiation and without the release of radioactive waste; atoms of the first element and atoms of the second element being light, natural and stable; atoms of the fused element also being light, natural and stable; the apparatus comprising: a source of electric power; a pressure chamber; at least one positive electrode and at least one negative electrode within the pressure chamber, the positive and negative electrodes electrically connected to the source of electric power; means for evacuating the pressure chamber; means for filling the pressure chamber with a gas, the means for filling increasing a pressure within the pressure chamber to an operational pressure as the pressure chamber is filled with the gas; means for initiating an electric arc between the at least one positive electrode and the at least one negative electrode; and means for triggering the fusion of atoms of the first element with atoms of the second element into atoms into atoms of the fused element.

18. (Withdrawn) The apparatus for intermediate fusion of claim 17, further comprising means for capturing heat from the fusion and using the heat to generate electric power.

19. (Withdrawn) The apparatus for intermediate fusion of claim 17, further comprising means for circulating the gas through at least one of the at least one positive electrode and the at least one negative electrode, thereby forcing the atoms of the resulting element out of the electric arc.

20. (Withdrawn) The apparatus for intermediate fusion of claim 17, wherein the means for triggering the fusion is a periodic, abrupt change in the electric power.

END of October 18 documents submitted by Mr. Santilli.

Part 8 – Wrapping Things Up and Comments by Gary Wright

It was interesting to read how and why Mr. Santilli changed his claims through this process, based on the initial rejections by the USPTO.

One thing I find very telling is how much time and money will be spent in trying to get people to believe your story, but the one simple thing that would always provide proof is never given.  And that is a working device.

As the patent office stated here and as I have been saying all along, just provide a working device for testing and evaluation or at least have a true independent 3rd party do a test and publish their results.  Rossi won’t do this and Santilli hasn’t done this either.

What it is all about is the “scientific method,” which is – provide a clear and complete written description of your claims  so that anyone who has expertise in that field can reproduce your claims for themselves. This written description should include not only a clear description of the device, material, and method, but it should also provide documentation of the experiments and testing that supports your claims. Even better is to also provide a working device that can be tested. In the world of science and claims nothing less will do.

But if you want to build devices in your garage or workshop and sell them that is fine too.  Just don’t expect investors to give you money unless you can clearly demonstrate with working devices that your claims are valid.  Mr. Rossi has been trying now for two years to put on a demonstration and provide testing results that will satisfy all of the critics, without success.

Ask yourself why that is.  Mr. Rossi has put untold resources into putting on his dog and pony shows, how many times now 6+, when all he had to do was have just one credible true independent  3rd party test of one of his simple 5-10 KW devices. With billions of dollars and instant world wide roll out of his devices as the result, but he won’t do that, why? No trade secrets would be lost in that type of testing.  The only sane and logical reason is that Mr. Rossi’s project is a scam and fraud obtaining money from investors and providing a means for money laundering.

“Finally, applicant is kindly invited to provide evidence of the scientific standing of the journal ” New Advances in Physics”; neither the examiner nor search support staff has been able to find said journal indexed in any commercial database.”

“According to examiner’s information, furthermore, and applicant may correct examiner if incorrect: Manager and CEO of aforementioned publishing company is his spouse, Ms. Carla Santilli, casting some doubt on the neutrality of the publishing company.”

Maybe Mr. Rossi should take note of the above when he keeps referring people to his own blog he calls a journal.

“Applicant has produced a working reactor according to the disclosure and has demonstrated such to several renowned scientists, several of whom have provided signed affidavits”

Mr. Santilli could have his patent tomorrow if he would just provide a working device to the patent office.  Why won’t he?  Mr. Santilli claims to have built three working devices, but he won’t show one to the patent office, to get his patent that he so urgently desires and is spending thousands of dollar to try and obtain?  That does not make any sense.  This is how the patent office looks at it – Mr. Santilli says he has provided a working device to others for testing and they have sent in to the USPTO their supporting declarations, so why, the patent office asks, won’t Mr. Santilli provide a device to us for testing?  You can see that it does not look good from their point of view.

Why do these people think that just providing statements by people, even scientists,  is scientific proof of anything? As any lawyer knows you can get “paid for hire” consultants to support your side to any story, and they always have many degrees and/or professional licenses.

“The examiner has not refuted the actual apparatus described. One of mechanical and electrical skill could easily make applicant’s disclosed apparatus from standard steel pipe, valves, electrodes, high-current sources, etc., as described fully in the specification.”

If this was true working over unity devices should be all over the place.  I have not heard of lots of people replicating his work.  As a matter of fact I have not even heard of one.

Basically the USPTO is asking Mr. Santilli to provide what we have been saying Mr. Rossi should provide from day one.

Mr. Santilli says it took many decades of research to perfect his device, he is now over 65 years, he may not have the time and resources to develop a new invention from scratch, and that is why he is fighting so hard to get this one through.  We will just have to wait and see if his declarations and paperwork instead of a working device will convince the patent office.

Joy & Peace
Gary Wright
October 19, 2012

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