Due to the length of analysis involved, this posting is divided into parts. This present part is Part 1. Reference to Part 2 is made here.
On August 25, 2015 a US patent issued to Leonardo Corporation on an invention by Andrea Rossi. This US patent, US 9,115,913, is part of a series of applications filed by Andrea Rossi variously in Italy, before the European and United States Patent Offices, and under the Patent Cooperation Treaty. However, this specific application, unusually, and not like the others, was filed directly before the US Patent Office by Andrea Rossi on March 14, 2012 using a new attorney. It was thereafter assigned to a company originally formed by Andrea Rossi, Leonardo Corporation, both of Miami Beach, Florida. Further assignments may have occurred, but they were not, as of August 25, 2015, available for review over the Internet at the United States Patent Office – US PTO.
The application leading to this August 25th patent was unusual in that it was not laid-open for public examination – “published” – as of 18 months from its earliest filing date, as is typical for virtually all countries around the world. This publication procedure applies even for the United States in respect of the bulk of American applications. Instead, the applicant in this case took advantage of a special provision in US law summarized as follows:
37 C.F.R. 1.213 Nonpublication request.
• (a) If the invention disclosed in an application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the application will not be published under 35 U.S.C. 122(b) and § 1.211 provided:
o (1) A request (nonpublication request) is submitted with the application upon filing;
o (2) The request states in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b);
o (3) The request contains a certification that the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication at eighteen months after filing; and
o (4) The request is signed in compliance with § 1.33(b).
Such a request was filed on Rossi’s behalf at the time of filing.
The following is a correction to what was published earlier on the prospect for foreign filings corresponding to Rossi’s US patent of August 25th, 2015, No 9,115,913.
There is a possibility, probably a likelihood, that Rossi patent applications have been filed outside the US for inventions disclosed in US patent 9,115,913. This would likely be in the form of an application under the Patent Cooperation Treaty.
Rossi filed a NonPublication request under 35USC122(b)(2) with his application when it was filed on March 14, 2012. But this section goes on to provide:
(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned.
Rossi filed a letter at the US Patent Office on July 27, 2015 withdrawing the non-publication request.
The consequence is that Rossi may have, and probably has, filed corresponding patent applications in other countries as early as June 12, 2015. This could be done on a bulk basis using the PCT. Filings made earlier that that would invalidate the US patent.
All filings made from June 12, 2015 or later would be subject to the novelty requirements of the national laws of each country applied as of the actual filing date in each country. In Europe any disclosures prior to the local filing date would qualify as prior art. Canada, Australia, South Korea and prospectively a number of other countries will shelter applications for up to one year for “self-originating” disclosures that can be traced to the applicant.
The Lugano Report released in October 6, 2014 contained a speculation that at least part of the “fuel” in the Lugano apparatus consisted of Lithium Aluminum Hydride (page 28). Lithium was also included in the initial fuel mixture. Claim 1 in Rossi’s August 25, 2015 US patent specifies for a fuel that includes both Lithium and Lithium Aluminum Hydride. The claim also stipulates for a control circuit that reheats the fuel using an electrical resistor when the reaction needs “rejuvenation”. Dependent claims add further limitations.
It is an unresolved question whether Applications filed by Rossi in countries not providing a grace period will be able to survive exposure to the prior art. Even where there is a grace period, Rossi applications will be exposed to the disclosures of independent origin arising from others.
A filing, for example under the PCT, will not normally be published until 18 months from its filing dated. Therefore some time will likely pass before the extent of such filings is known.
Quality of the disclosure
Unlike other applications filed on behalf of Rossi, and indeed many patent applications filed around the world, the disclosure in this case is relatively short and to the point. This is a sign of good patent draftsmanship. The patent disclosure contains no discussion of theory. In fact, some readers will find this disappointing; but the reality is that it is not required for an inventor to disclose a theory supporting why an invention works. It is enough for the disclosure to provide sufficient direction to enable a skilled workman in the field to reproduce the useful results promised by the disclosure.
This patent has the signs of having been drafted by a particularly competent patent attorney. The preamble section under the titles Field of Disclosure and Background are about as short as you could ever expect. In fact, under Field of Disclosure the text simply provides: “This disclosure relates to heat transfer systems, and in particular to devices for transferring heat to a fluid.” The Background section that follows contains a mere 7 sentences divided into 2 paragraphs. Compare this with the bulk of US and other national patents that have extensive content in these sections. Elaborate content in these two portions of a patent disclosure is not required. What is key is to describe how to build something that is useful and then to identify the features of what is disclosed which are novel, inventive and over which the applicant wishes to obtain exclusive rights. Too few inventors ever understand these principles.
Before leaving this portion of the disclosure it is important to remark that these statements do not define the invention. They are not binding on the scope of the exclusive rights being granted. They are merely guidelines to get a reader started in reviewing the entire patent document. The “invention” for which the patent has been granted is defined in the one or more patent “claims” that conclude the patent document. The invention in this case is not about a novel arrangement for “transferring heat to a fluid”. The novelty that supports the validity of the patent claims resides elsewhere.
Further, the Summary of the Invention portion of the disclosure is not binding on the scope of monopoly established by the claims. It is the claims that count. However, in this particular case, the drafting attorney has simply used the text of the claims in order to generate the Summary of the Invention. A simple comparison will show that one is derived from the other. This is good patent practice.
The Patent Claims
A patent is all about obtaining exclusive rights. Those rights are defined in the “claims” which appear as numbered sentences usually at the end of the patent document. Each numbered claim is actually the completion of a preamble statement such as: “I claim” or, as in Canada, “The embodiments of the invention in which an exclusive right is claimed are as follows”. Each claim completes the preamble by listing elements which are interrelated in a specific way to define something that is new, something that has never before been “available to the public.” This last phrase can be understood to include any obvious variants on things explicitly previously available to the public.
A patent can have multiple claims restating the exclusive rights over and over again with more specific detail. As a convenient compressed mode, a 2nd claim can refer-back to an earlier claim thereby adopting all of its limitations. A dependent claim, such as Claim 2, may appear to be very short. However, it is longer than Claim 1 from which it depends since it adopts all of the limitations listed in Claim 1.
It is a basic principle that if a competitor does not infringe Claim 1 then they cannot infringe any of the claims dependent on Claim 1. Therefore, for infringement purposes, it may be sufficient to stop the analysis after reading Claim 1. If you do not infringe there is no need to go further.
On the other hand, if Claim 1 is infringed, then the only recourse for a competitor is to demonstrate that Claim 1 is invalid. If this were to be achieved, then the exercise must move to Claim 2, which may be valid, and which may be infringed, or not. Dependent claims that accumulate many limitations from prior claims have a higher probability of being valid, but a lower probability of being infringed. To avoid infringement, all a competitor has to demonstrate is that they do not use every element stipulated within the claim under consideration.
The Rossi Claims
The claims of this particular patent are relatively concise, and are listed as follows:
1. An apparatus for heating fluid, said apparatus comprising a tank, an electrical resistor, and a fuel wafer,
wherein said tank is configured for holding fluid to be heated,
wherein said fuel wafer is configured to be in thermal communication with said fluid,
wherein said fuel wafer includes a fuel mixture that includes reagents and a catalyst,
wherein said electrical resistor is in thermal communication with said fuel mixture and said catalyst,
wherein said resistor is configured to be coupled to a voltage source,
wherein said apparatus further comprises a controller in communication with said voltage source, and a temperature sensor,
wherein said fuel mixture comprises lithium, and lithium aluminum hydride,
wherein said catalyst comprises a group 10 element,
wherein said controller is configured to monitor a temperature from said temperature sensor, and, based at least in part on said temperature, to reinvigorate a reaction in said fuel mixture,
wherein reinvigorating said reaction comprises varying a voltage of said voltage source.
2. The apparatus of claim 1, wherein said catalyst comprises nickel powder.
3. The apparatus of claim 2, wherein said nickel powder has been treated to enhance porosity thereof.
4. The apparatus of claim 1, wherein said fuel wafer comprises a multi-layer structure having a layer of said fuel mixture in thermal communication with a layer containing said electrical resistor.
5. The apparatus of claim 1, wherein said fuel wafer comprises a central heating insert and a pair of fuel inserts disposed on either side of said heating insert.
6. The apparatus of claim 1, wherein said tank comprises a recess for receiving said fuel wafer therein.
7. The apparatus of claim 6, wherein said tank further comprises a door for sealing said recess.
8. The apparatus of claim 1, wherein said tank comprises a radiation shield.
9. The apparatus of claim 1, wherein said reaction in said fuel mixture is at least partially reversible.
10. The apparatus of claim 9, wherein said reaction comprises reacting lithium hydride with aluminum to yield hydrogen gas.
Technically, to be valid, claims must not read-on arrangements that do not work. But analysis on this basis is complex. To be addressed on another occasion.
The challenge for competitors wishing to build a competing device that does not infringe is to ensure that their devices are not described by Claim 1. If Claim 1 describes their arrangement, then they will be an infringer. They can avoid infringement by ensuring that their product omits at least one of the features listed in Claim 1.
In a sense, the challenge for a competitor is to invent an arrangement that works but does not fall within the language of Claim 1. On the other hand, the challenge for a patent applicant and his attorney is to produce a valid statement of exclusive rights in Claim 1 that cannot be avoided by competitors wishing to market a competing product.
Analyzing Claim 1 for infringement we note the necessary requirement: “wherein said fuel mixture comprises lithium, and lithium aluminum hydride”. Is it essential that lithium be present, apart from being a component of lithium aluminum hydroxide? Did Dr Parkhomov include lithium in his mixture? Apparently not: “640 mg Ni + 60 mg LiAlH4”. This suggests that lithium may not be necessary in order to obtain an LENR effect. But if the presence of elemental lithium enhances the generation of excess energy, then this is an invention in its own right, and merits the granting of patent exclusivity.
On the other hand, if it turns out that elemental lithium need not be present in order to achieve the useful, commercially relevant effect, then this claim has an “loophole”. Patent applicants and their attorneys are expected to labor long and hard in order to draft claims that do not have a “loophole”.
Addressing another possible loophole, if the lithium aluminum hydride serves only as a source of hydrogen, is it essential for the aluminum to be present? Other sources of hydrogen could include magnesium hydride – MgH2; calcium hydride – CaH2; sodium borohydride – NaBH4 and lithium borohydride – LiBH4 as examples. Cf “Thoughts on attending ICCF-19 in Padua by David French”.
We may search Claim 1 for further limitations that may be unnecessarily specific or over limiting. For example, heat is provided to the “fuel” by the presence of an “electrical resistor [which] is in thermal communication with said fuel mixture and said catalyst”. While this language is so vague as to be difficult to visualize, the disclosure outlines a structure described as follows:
“multilayer fuel wafer 32 includes a heating section 34 sandwiched between two fuel sections 36, 38. The heating section 34 features a central layer 40 made of an insulating material, such as mica, that supports a resistor 42. FIG. 4 shows an exemplary central layer 40 having holes 44 through which a resistive wire 42 has been wound”,
“The entire set of layers is welded together on all sides to form a sealed unit. The size of the wafer 32 is not important to its function. However, the wafer 32 is easier to handle if it is on the order of 1/3 inch thick and 12 inches on each side.”
This gives some understanding as to the meaning of the words in the claim. The disclosure does not necessarily limit the words in the claim. The Disclosure is only intended to be exemplary. Claim 1 clearly stipulates for the presence of an electrical resistor. This could be in the form of resistance wire wrapped around mica sheeting, or it could be a “resistor” of another form.
The claim language is to be read as broadly as the natural meaning of the words and is not necessarily limited by the examples given in the preceding patent disclosure, unless the disclosure requires this. In this case, “electrical resistor”, while not tied to a specific structure, does limit the character and function of this component.
Furthermore, the presence of an electrical resistor is emphasized by the additional limitations stipulating:
“wherein said resistor is configured to be coupled to a voltage source,
“wherein said apparatus further comprises a controller in communication with said voltage source, and a temperature sensor,
“wherein said controller is configured to monitor a temperature from said temperature sensor, and, based at least in part on said temperature, to reinvigorate a reaction in said fuel mixture,
“wherein reinvigorating said reaction comprises varying a voltage of said voltage source.”
Taking this portion of the claim as defining the novel aspect of invention, the invention may really be all about a mechanism for controlling the generation of heat within the wafer.
If the purpose of having a heated core within the wafer is to start an LENR reaction, this might possibly be achieved by simply providing the wafer with a core plate of conductive metal which is heated externally. (Aluminum or copper may spring to mind, but these have a low melting temperature. Aluminum nitride has a melting point of 2200°C). While this might start an LENR reaction, if the use of a resistive heater facilitates controlling the rate or level of the LENR reaction, then that in itself might be a basis for the granting of patent rights. Otherwise, the stipulation for the necessary presence of a “resistor” may also qualify as a “loophole”.
These observations are not exhaustive. They are offered merely as examples. The challenge for competitors is to invent configurations that do not infringe.
This ends Part 1 of the analysis. Further parts of the analysis to follow subsequently will address inferences that can be made from the dependent claims, considerations on the treatment of the nickel, and speculations as to the types of reactions that may be occurring. Additionally, the prospect that further inventions are present in this disclosure, which have not been claimed, and the consequences, will also be explored.
David French is a retired patent attorney and the principal and CEO of Second Counsel Services. Second Counsel provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit: www.SecondCounsel.com.