The following is a further posting in a series of articles by David French, a patent attorney with 35 years experience, which will review patents of interest touching on the field of Cold Fusion.

On April 23, 2012 I posted about a patent application publication number 20110122984 originating from Robert Godes and now owned by Brillouin Energy Corp. The Brillouin Energy website made reference to this pending patent application and so we reviewed Claim 1 of that application, observing on the unnecessary restriction to establishing: “current pulses through said core”. That shortcoming may never get corrected. We now have some more news about this patent filing.

On May 14, 2012 the US examiner responsible for this application issued a “Godes US patent office final rejection SN 12911586 14 May 12“. These are the letters sent from the Patent Office to the applicant advising whether the application is in good order to be allowed to advance to grant of a patent. Here is a copy of that Office Action.

This is a classic: “Prove it works” examiner’s rejection. The fact that it is labeled “Final” is not as serious as appears. For a further filing fee, examination can be re-opened and better evidence provided. However, this application has already gone through one cycle on this basis and the additional evidence that the examiner warned would have to be filed was not provided, at least that is the assessment of the examiner. A further attempt is nevertheless still possible.

The rejection is based on the premise:

“3. The declaration under 37 CFR 1.132 filed is insufficient to overcome the rejection of claims 1-3, 5, 6, I, 10, 19 and 21-29 based upon 35 USC 101 and 112 as set forth in the last Office action because: Declaration by applicant himself does not provide the requisite counter-evidence of utility and enablement: extraordinary claims require extraordinary evidence and substantiation. The Declaration does not provide such evidence as is necessary to render credible low energy nuclear reactions, particularly fusion reactions, given the overwhelming body of experimental data and theoretical arguments against fusion under circumstances well below the coulomb penetration barrier.”

And

“Simply stating that the concepts the inventor espouses are correct is not sufficient substantiating evidence. Sufficient substantiating evidence may be based on widely accepted scientific concepts (e.g. quantum nuclear physics, credible experiment), a working model, or supporting opinion in a widely respected and peer-reviewed publication (existing credible publications do not support optimistic applicants assumptions).”

This is the essential basis for the rejection. It is standard with respect to cold fusion applications at the US Patent Office. Section 101 of the US Patent Act stipulates that an invention must be useful. All patent laws around the world include this requirement. Section 112 of the US law further stipulates that a patent application must contain instructions on how to achieve the useful results as promised. Again, this is a standard patent requirement.

Apart from complying with the law, the US PTO probably wants to maintain respect for its patents as representing meaningful and useful information. They do not want to become a publishing house for bogus disclosures, although many patents do include bogus disclosures. There are one half million applications a year filed at the US PTO and only if you are challenged on the basis of the utility requirement are you required to file proof of utility. Apparently, management at the US PTO has singled-out cold fusion patent applications as well as perpetual motion machines for imposing an affirmative requirement that evidence of utility must be filed.

The rejection is also based on failure to describe how to build a working system (section 112). This is really the same objection: it does not work; therefore the description of how to make it work is not complete. At least that is the position of the examiner.

An applicant in this situation has the option of directly filing an appeal to the Board of Appeals and Interferences within the Patent Office. An appeal will probably take several years to resolve within the Patent Office and then another year or two if a further appeal is made to the Courts.

Note, however, that appeals are based on the record before the examiner. The purpose of issuing a “Final” office action is to establish that no further evidence in support of the application can be placed on file at the Patent Office while the “final” status is still in effect. You can buy your way out of this no-further-documentation limitation by paying a further filing fee to enter further material as of right. Without doing so, the appeal is based on the record of the file as before the examiner when the Final rejection issued.

The standard on the appeal is whether or not the applicant can established before the Board of Appeals that the examiner was wrong. Unfortunately, if there are reasons to expect that an invention lacks utility, then the burden is on the applicant to provide proof that the invention works and to thereby satisfy the examiner, or Board of Appeals on appeal, that the description of the invention is sufficient.

These are the standards that apply in respect of an appeal to the Board of Appeals. In respect of an appeal to the Courts, the only issue is whether the Board of Appeals acted outrageously inappropriately or misapplied a principle of law. These are hard standards to meet.

In this case Godes is represented by a well-established law firm, Kilpatrick Townsend & Stockton LLP of San Francisco. The attorney responsible, however, is not likely to be one of the partners. The actual professional handling this file should be able to estimate in advance whether or not the documents available for filing at the US Patent Office would be sufficient to meet the utility and enablement requirement that the examiner already warned he was going to impose on this application. In fact, any patent firm representing an inventor seeking to obtain a patent directed to “cold fusion” should issue a warning from the very beginning that the applicant will be expected to provide rock-solid evidence that the statements made in the application about what can be delivered in terms of benefits are true.

Additionally, the specification has to include all of the steps, just like the recipe in a cookbook, needed to achieve this useful result. If the latter standards are not met in the original filing document, then the application is doomed to collide with the policy manifested so clearly in this rejection.

The attorneys representing Robert Godes and Brillouin Energy have a penalty-free three months from May 14, 2012 to pay the required fee and file additional submissions, or appeal. Further extensions to reply of one, two or three more months may be purchased. If no reply or appeal is filed within six months from May 14, 2012, the application will become abandoned.

However, under US law, it is permissible to start the patenting application process over again by filing a “Continuation” application which will benefit from all of the filing dates of earlier applications so long as the filings overlap in time. This will buy considerably further time before the relevance of this application has been established authoritatively through the patent office system in the United States. If this route is pursued, Brillouin Energy will be able to continue to claim that they have a “patent pending” in respect of their technology. Robert Godes has already used this procedure previously when Profusion Energy, Inc. was the owner of the rights in this invention.

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.

David French is prepared to address questions included as commentaries to any of his postings or by direct email. In particular, he would like to learn what people need to know in order to better understand patents.