David French on the Cold Fusion Now! podcast

David J. French, a lawyer specializing in Patents and Intellectual Property is the guest on the Cold Fusion Now! podcast.

A graduate of McMaster University in Engineering Physics and of the University of Toronto Law School, David French spent 35 years at private law firms and also working with the Canadian government on law reform and international patent issues. He retired to his own firm Second Counsel in Ottawa, Canada.

David is an author and has contributed to Cold Fusion Now!. He has been consulting with scientists in the cold fusion/LENR field offering patent advice and helping to secure their intellectual property.

David discusses patents and patent applications currently issued in LENR field, and how patent office policy has effected research and development in the field.

Ruby Carat is the host of episode 008. Listen at our podcast page http://coldfusionnow.org/cfnpodcast/ or subscribe in iTunes.

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Analysis of Rossi US Patent 9,115,913 issued 25Aug15 Part 2

This is Part 2 of a multi-part commentary on the above patent, US 9,115,913 issued on an invention by Andrea Rossi. Part 1 may be found here.

Please note that Part 1 has been amended since posted to retract the earlier statement that patents for the same invention cannot issue abroad if the US patent is to remain valid. Rossi has followed a procedure at the USPTO that will allow foreign filings to be made without jeopardizing the validity of the issued US patent.

Claim Principles

A most important principle from Part 1 is that, to examine the scope of the blocking power of a patent, it is inappropriate to talk about the “invention”. That is too vague. The claims must be the focus. The words of a claim are words of limitation. If you are outside the scope of the words of a claim then you do not infringe. The words mean what the inventor apparently intended them to mean, according to the description accompanying the patent grant. The starting assumption is that words have meaning corresponding to their normal usage unless the description indicates otherwise.

The scope of this patent is no broader than the span of Claim 1. If a competitor builds an apparatus or arrangement that does not fit with the wording in Claim 1, taken in its totality, this patent will not be infringed. Practicing a patent exactly as it is claimed for the sole purpose of verifying that it works is not an infringement.

No one can ever patent “generating excess heat by LENR”. This idea has already been “made available to the public”. All that can be patented now are new, unobvious, configurations that work, i.e. deliver LENR heat. The validity issue with respect to the claims of this patent requires that the claims are restricted to describing only things that are new and unobvious.

A patent is infringed if a competitor builds an apparatus or arrangement that fits with the wording of any of its valid claims. If Claim 1 is infringed and valid, then no other claims need be assessed. If Claim 1 is invalid but describes an accused infringer’s activities, then the claims dependent from Claim 1 must be assessed.

Dependent Claims

The dependent Claims 2 – 10 are straightforward. Every dependent claim adopts by reference all of the limitations of the prior claims upon which they depend. This tends to reduce the scope for infringement. If a claim does describe an accused infringer‘s operation, then that claim, taking into account all of the limitations of the prior claims upon which it depends, must also be valid for infringement to occur. Validity assessment is a complex analysis that will only be partially addressed in a subsequent posting.

Before leaving the dependent claims, we may note that they additionally stipulate for the optional presence of, amongst other things:

• nickel powder as a “catalyst” (claim 2)
• nickel powder that has been treated to enhance porosity thereof (claim 3)
• 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 (claim 4)
• said fuel wafer comprises a central heating insert and a pair of fuel inserts disposed on either side of said heating insert (claim 5)
• said tank comprises a recess for receiving said fuel wafer therein (claim 6)
• said tank further comprises a door for sealing said recess (claim 7)
• said tank comprises a radiation shield (claim 8)
• said reaction in said fuel mixture is at least partially reversible (claim 9)
• said reaction comprises reacting lithium hydride with aluminum to yield hydrogen gas (Claim 10, dependent on claim 9)

Some of these claims are silly. For example Claims 6 and 7 hardly add an idea that could provide a missing inventive feature if the earlier claims were invalid. Other claims might, in circumstances where prior art has been found that knocks-out earlier claims, add something that would create a claim that is novel and nonobvious.

Microporous Nickel

Claim 4 addresses a configuration where the nickel is microporous. This feature is addressed in the disclosure as follows:

“Preferably, the nickel has been treated to increase its porosity, for example by heating the nickel powder to for [sic] times and temperatures selected to superheat any water present in micro-cavities that are inherently in each particle of nickel powder. The resulting steam pressure causes explosions that create larger cavities, as well as additional smaller nickel particles.”

No reference is made to RaneyTM nickel which is a standard for micro-porosity for this metal. RaneyTM nickel provides actual voids: see https://en.wikipedia.org/wiki/Raney_nickel
Made by leaching-out aluminum from a solid solution of nickel and aluminum, there is always some residual aluminum present within the nickel structure after leaching is terminated. At high temperatures the aluminum will likely melt. For LENR purposes it may be desirable to use silicon-based RaneyTM nickel, if this can be obtained.

The original version of RaneyTM nickel was made by using an alloy of nickel and silicon. Any residual silicon can be expected to melt at a much higher temperature than aluminum. This original patent is exceptional for its conciseness and the broad scope of patent coverage that was granted – see claims at the end of the last above link.

Perhaps the process of “heating the nickel powder to [and] for times and temperatures selected to superheat any water present in micro-cavities that are inherently in each particle of nickel powder… [whereby] the resulting steam pressure causes explosions that create larger cavities” creates more than just microporosity. Surface conditions as hypothesized by Dr Edward Storms may be generated.

Hydrogen Generation

Claims 9 and 10 addresses a configuration wherein lithium hydride is reacted with aluminum to yield hydrogen gas, the reaction specified is said to be at least partially reversible (claim 9). The decomposition stages for Lithium Aluminum Hydride as acknowledged in the patent disclosure and described in Wikipedia https://en.wikipedia.org/wiki/Lithium_aluminium_hydride are as follows:

“When heated LAH decomposes in a three-step reaction mechanism:

3 LiAlH4 → Li3AlH6 + 2 Al + 3 H2 (R1)
2 Li3AlH6 → 6 LiH + 2 Al + 3 H2 (R2)
2 LiH + 2 Al → 2 LiAl + H2 (R3)

“R1 is usually initiated by the melting of LAH in the temperature range 150–170 °C, immediately followed by decomposition into solid Li3AlH6, although R1 is known to proceed below the melting point of LiAlH4 as well. At about 200 °C, Li3AlH6 decomposes into LiH (R2) and Al which subsequently convert into LiAl above 400 °C (R3). Reaction R1 is effectively irreversible. R3 is reversible with an equilibrium pressure of about 0.25 bar at 500 °C. R1 and R2 can occur at room temperature with suitable catalysts.”

The third reaction R3 is said to be reversible. This is the situation as required by Claims 9 and 10.

We may guess why these features are important. Reactions R1 and R2 will, when the temperature is raised over threshold levels, release hydrogen into the confined interior between the outer steel plates. Note that reaction R1 is said to be effectively irreversible. This will cause the pressure of the hydrogen surrounding the nickel particles to rise. As the temperature rises reaction R3 will add more hydrogen, increasing the hydrogen pressure further. With increased pressure more hydrogen will either enter the lattice structure of the nickel particles or be adsorbed at sites which are active in generating excess heat. Presumably this increased pressure may induce and support an LENR reaction.

The possibility to generate hydrogen in a confined volume at pressures in excess of 1000 Atmospheres through chemistry is referenced in US patent 7,393,440. In this patent, assigned to the Research Council of Canada, aluminum as a cathode is confined a sealed volume with magnesium as an anode sharing a water-based electrolyte. The combination reacts galvanically to decompose the water and release hydrogen at potentially high pressures. This is an alternative hydrogen generation mechanism outside the scope of the Rossi claims.

Returning to the Rossi disclosure, since heat is being extracted through the surrounding water jacket, this may cool the nickel-hydrogen combination below a self-sustaining reaction level. The LENR reaction at lower temperatures may need the continued supply of heat to the nickel core to keep the reaction going. A thermal gradient between the nickel core and the water jacket may be needed to sustain the generation of heat.

Operating under these conditions the reversible character of reaction R3 may also provide a means to prevent thermal runaway. Hypothetically higher heat could release more hydrogen in a rising cycle if enough Lithium Aluminum Hydride were present. Conversely, a decline in the pressure of the reaction may cause the reaction to subside. This may be why the control mechanism is stipulated as an essential feature of Claim 1.

Claim 1 stipulates that Lithium must be present, independently from the Lithium Aluminum Hydride. The Lithium is not necessarily a reactant. It could simply be a reservoir to absorb hydrogen gas, once released, by forming LiH. The hydrogen could be released from the LiH in the “rejuvenation” process.

Please note that on points of the physics of the actual reaction these observations are speculations and should not be taken as being true without further confirmation.

This ends Part 2 of the analysis. There remains to address the validity of this patent and its claims in a further analysis.

Russian scientist replicates Hot Cat test: “produces more energy than it consumes”

E-Cat World has obtained an English translation of the report by Professor Alexander Parkhomov originally published in Russian detailing his replication of Andrea Rossi’s E-Cat generator.

Download the report here:

Alexander Parkhomov has confirmed the Hot Cat experiment.
Photo: Alexander Parkhomov courtesy F. David.
Parkhomov, a disciple and colleague of Nobel prize winner Andrei Sakharov, attempted to replicate the Hot Cat experimental set-up reported in the recent paper Observation of abundant heat production from a reactor device and of isotopic changes in the fuel [.pdf] authored by a group of Italian and Swedish scientists testing Rossi’s technology.

Parkhomov writes that “the reactor is capable of generating a lot of heat in excess of electric heating”. With the E-Cat replica testing at temperatures between 1200C-1300C, the unit provided a COP of about 2.6.

However, Fig.6 of the report shows a so-called heat-after-death effect, whereby after the heating input is turned off, the reactor continues to maintain its temperature for approx. 8 minutes before dropping lower. This unique effect, when utilized fully, will allow infinite COP as there is zero input power while output power stays strong.

Fig.5 shows that no radiation beyond the normal background radiation was detected.

The English-version of Parkhomov’s report is reproduced below:

BEGIN REPORT ***************************************************************

1. The design of the reactor.

For the manufacture of reactor Al2O3 ceramics tube length of 120 mm, an outer diameter of 10 mm and an inner diameter of 5 mm is used. The tube is rounded by electric heater. Inside the tube it is 1 g Powder Ni + 10% Li [Al H4]. The thermocouple contacts to outer surface of the tube. The ends of the tube are sealed heat-resistant cement. Likewise the entire surface of the reactor is coated by heat-resistant cement.

Fig. 1 Design of the reactor.
Fig. 1 Design of the reactor.
Fig. 2 Reactor prepared for experiment.
Fig. 2 Reactor prepared for experiment.










Used by experts at verification Rossi reactor technique based on thermovision camera observation is too complex. In this experiment a methodology based on the amount of water boiled out is used. This technique is repeatedly checked. In this experiment the reactor is inside of closed metal vessel. This vessel immersed in the water. When the water boils, part of it is removed as a vapor. By measuring the decrease of water, it is easy to calculate the separated heat because the value of the evaporations heat is well-known. Correction for heat loss through the insulation can be calculated as cooling rate after shutdown reactor.

Fig. 3. Design of the calorimeter
Fig. 3. Design of the calorimeter
 Fig. 4. The reactor in operating time. The covers from a thermal insulation and vessel with the reactor are removed

Fig. 4. The reactor in operating time. The covers from a thermal insulation and vessel with the reactor are removed











2. Outcomes of the experiment

Fig. 5. Temperature changes in the heating process
Fig. 5. Temperature changes in the heating process

The power supplied to the heater stepwise varied from 25 to 500 watts. Level of 1000°C was overcome after 5 hours of heating. On the same diagram shows the count rate Geiger counter SI-8B. This counter responsive to alpha, beta, gamma and X-rays. It is seen that all during heating, the radiation situation is not very different from the background. A slight increase in temperature is noticeable only about 600°C to 1000°C. Further studies have shown that this chance or regularity. Dosimeter DK-02 is not found during the experiment set dose within the measurement error (5 mP)

Fig. 6. Temperature changes in the heating process. Area of high temperatures
Fig. 6. Temperature changes in the heating process. Area of high temperatures

Here is shown in more detail the temperature change of the heating power 300, 400 and 500 watts. It can be noted that for the same heat output there is a gradual increase in temperature, particularly strong in the last site. At the end of the site with the highest temperature there are the temperature oscillations. This section ends with the termination of electric heating as a result of heater burnout. Thereafter, at the temperature for 8 minutes kept at nearly 1,200°C, and then begins to fall sharply. It is indicates that in the reactor at this time heat is produced at kilowatt without any electric heating. Thus, from the already seen that the reactor is capable of generating a lot of heat in excess of electric heating.

Table. Determination of the extracted heat and coefficient of thermal. Calculations are made for three modes of operation with a temperature of about 1000 °C, about 1150 °C and 1200 – 1300 °C.
Table. Determination of the extracted heat and coefficient of thermal. Calculations are made for three modes of operation with a temperature of about 1000°C, about 1150°C and 1200 – 1300°C.

At temperatures 1150°С and 1200°C – 1300°C, the heat release of the reactor considerably exceeds consumed energy. During activity in these modes (90 minutes) over the consumed electrical energy about 3 МДж or 830 Wh is produced. Output Experiments with analogue of high-temperature Rossi heat source, loaded with a mixture of nickel and lithium aluminum hydride, showed that at temperatures of about 1100°C or higher this device produce more energy than it consumes.

END REPORT*****************************************

Related Links

Interview with Andrea Rossi on the new Hot Cat test report with John Maguire

The Ultimate Hot Tub

A.G.Parkhomov on ResearchGate.com

Status Report – Rossi Pending US Patent Application

Photo: New model E-Cat in operation from the report Observation of abundant heat production from a reactor device and of isotopic changes in the fuel [.pdf]

Observation of abundant heat production from a reactor device and of isotopic changes in the fuel [.pdf]

This is an update on the status of the above patent application. A previous comment on that US filing was made on ColdFusionNow – here.

This filing in the United States is descended from an original filing made in Italy on April 9, 2008. That Italian filing served as a priority filing for a PCT application, PCT/IT2008/000532, filed August 4, 2008, claiming the benefit of the earlier Italian filing date. (The original Italian filing resulted in the issuance of an Italian patent just before the Italian patent law was changed from a non-examination system to an examination system).

Following the procedures of the Patent Cooperation Treaty – PCT, the International PCT application was delivered to the US as a national entry filing on September 16, 2010. This application was duly published as serial number 12/736,193 and was placed in the queue for examination. As reported in the earlier ColdFusionNow article, a US Examiner’s Office Action issued on March 26, 2014. As is typical, this Office Action was an initial rejection, giving the applicant, 3 to 6 months to file a Response overcoming the Examiner’s objections. Such a Response, dated September 25, 2014, was filed on September 29, 2014. This posting reports on that Response.

Before addressing the Response in detail, the covering letter expresses thanks to the Examiner for the opportunity for Dr. Andrea Rossi and the attorney to have had a personal interview with the Examiner on April 22, 2014. Apparently no decisions were reached between the parties at that interview.

The Examiner’s Office Action of March 26, 2014 included a number of rejections:

Invention Inoperable

The Examiner asserted that “there is no evidence in the corpus of nuclear science to substantiate the claim that nickel will spontaneously ionize hydrogen gas and thereafter ‘absorb’ the resulting proton”. He went on to say that the nuclear conversion of nickel 58 into copper 59, while known, has only been observed experimentally “in the context of an accelerated (proton) beam into a nickel target. The element of acceleration is necessary in this matter as the only way for the proton to overcome the basic Coulomb repulsion between the proton and nickel nuclei.” The Examiner also observed that if the reaction were possible, as claimed by Rossi, it would also occur spontaneously in nature.

The Examiner also made a perfunctory further objection that, since the invention was inoperable, the disclosure that was provided was necessarily insufficient to enable workmen after the patent expired to reproduce the invention. The Examiner then requested evidence that the invention actually worked.

In the response by Rossi’s attorneys no evidence of operability was filed. Instead, the attorneys asserted that the Examiner had failed to establish a basis that would justify a request for evidence of operability. Citing In re Mitchell R Swartz, a year 2000 decision by the US Court of Appeals for the Federal Circuit, the attorneys submitted that the Examiner had failed to follow the Guidelines for Examination of Applications for Compliance with the Utility Requirement provided by the US Patent Office in its Manual of Practice and Examination Procedure. In particular, the attorneys asserted that the Examiner, in alleging that the utility described in the patent disclosure was not credible, had failed to:

a) provide support for factual findings relied upon by the Examiner in reaching this conclusion, and
b) provide an evaluation of all relevant evidence of record, including utilities taught in the closest prior art sufficient to support the basis for requiring proof of operability.

The attorneys referred to the description of the procedures provided in the patent disclosure for producing the described reaction, saying that no basis had been established for departing from the normal presumption that such descriptions are true and that the Examiner had not pointed out any deficiencies in that description.

Comment: Challenging the right of the Examiner to provide evidence of utility is an alternative to actually providing such evidence. Such a challenge provides grounds for objecting on appeal to the requirement by the Examiner that such evidence be filed. If the Board on appeal agrees that the Examiner’s requirement was legitimate and no evidence was filed, then the application will be rejected. If the Board concludes that the Examiner’s objection was unsupported, it’s unclear whether the application will be returned to examination with instructions for the Examiner to provide a better justification for such a requirement; or whether the application will be allowed to go forward on the basis that such evidence need not be filed, assuming that all other legitimate objections are overcome.

Citation of Prior Art

The Examiner had also issued a rejection based on the assertion that the invention as claimed by Rossi was “obvious” in view of the earlier technology described in a journal article authored by one Butler and others: Butler et al., “Radiative proton capture by Ni-58, and Co-59,” Phy. Rev. v.108 No. 6 pp. 1473-1495 [1957].

Butler describes a process for accelerating protons into a silver-plated nickel target. The attorneys for Rossi pointed out that Claims 1 and 7 as now pending (the only 2 independent claims) stipulated that nanometric nickel powder is exposed in a metal tube to hydrogen gas at high temperature and pressure. This, it was said, was sufficiently different from Butler that the rejection of Claims 1 and 7 on the basis of “obviousness” was not justified.

Claims 1 and 7 as amended and now pending read as follows:

1. A method for carrying out an exothermal reaction of nickel and hydrogen, characterized in that said method comprises the steps of providing a metal tube, introducing into said metal tube a nanometric particle nickel powder and injecting into said metal tube hydrogen gas having a temperature much greater than 150°C and a pressure much greater than 2 bars.

7. A modular apparatus for providing an exothermic reaction by carrying out the method according to claim 1, characterized in that said apparatus comprises a metal tube (2), including an nanometric particle nickel powder (3) and a hydrogen gas at high temperature and pressure.

Comment: If these two claims were valid the dependent claims otherwise present in the patent filing would be irrelevant. Further, apart from the objections of inoperability and obviousness both of these claims are indefinite. Claim 1 refers to: “hydrogen gas having a temperature much greater than 150°C and a pressure much greater than 2 bars”. The words “much greater than” make the claim indefinite. Similarly in Claim 7, the reference to “hydrogen gas at high temperature and pressure” is indefinite. This could easily be corrected in another Response, and the attorneys for Rossi are probably quite aware of this indefiniteness deficiency.

Additionally, both of these independent claims stipulate for the presence of a “metal tube”. In the absence of such a component, a competing construction would not infringe these claims. For example, if a ceramic tube were employed, it would not fall under the language of the claim. Neither would a metallic containment chamber if, for example, a cubic chamber were employed. These distinctions might be described as “loopholes”.

Loopholes cannot be closed by any of the dependent claims. Every dependent claim adopts the limitations of the independent claim to which the dependent claim refers back.

Unusually, the Response terminates by observing that the applicant has filed a petition to suspend prosecution of this application under the provisions of Rule 1.103 of the US Patent Rules. This reference occurs in the Response available at the US Patent Office website, but the documentation in support of this petition is not available over the Internet. This particular Rule provides as follows:

37 C.F.R. 1.103 Suspension of action by the Office.

a) Suspension for cause. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph for good and sufficient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. Any petition for suspension of action under this paragraph must specify a period of suspension not exceeding six months. Any petition for suspension of action under this paragraph must also include:

(1) A showing of good and sufficient cause for suspension of action; and
(2) The fee set forth in § 1.17(g), unless such cause is the fault of the Office.

One can speculate as to reasons that might be provided in support of such a Petition.

Overall Commentary

This Response has the look of a buy-time initiative by the attorneys acting on behalf of Rossi. No attempt has been made to file evidence of operability as requested by the Examiner. If the Examiner simply reiterates his request for such evidence, possibly providing further observations in support, then Rossi will be able to file the evidence in response. If he fails to do so, it is likely that the Examiner will make his rejection of this application final. In such event, Rossi will have the option of filing an appeal to the Patent Trial and Appeal Board or refiling the application as a “Continuation”. Either initiative will likely suspend disposition of this application for a period of 2 to 4 years.

Although not addressed by the attorneys filing this Response, this application may possibly also be defective for failing to provide a description of how to implement the invention sufficient to “enable” workmen to reproduce the results as claimed. If this were true, it would be fatal to the application, or any patent that might issue thereon in error. It is too late for Rossi to add any subsequently acquired information to this filing. Any further filings will be subject to any novelty limitations that have arisen since 2008.

US Examiner Addresses Andrea Rossi US Patent Application

The US Examiner at the United States Patent Office has finally reached the patent application of Andrea Rossi. That application was first filed as an Italian filing on April 9, 2008. It was translated into English and up-graded into an application under the Patent Cooperation Treaty – PCT on August 4, 2009. And it finally arrived at the US Patent Office as of September 16, 2010.

The text of the disclosure in this application became frozen as of the date of the PCT filing, August 4, 2009. It is not permissible to amend the story after the “final” filing of a regular patent application, which is how a PCT application is treated. Therefore this application represents Rossi’s understanding of his invention as of August 4, 2009.

As is usual with a first initiative by a US Patent Office Examiner, this Office Action rejects the application. Rossi now has three months from March 26, 2014, extendable upon fee payments up to six months, to file a Response. That Response must overcome the Examiner’s objections or the application will go abandoned, unless Rossi pays fees for Continued Examination or files an appeal.

The key claim that Rossi was endeavoring to obtain reads as follows:

“1. A method for carrying out an hexothermal reaction of nickel and hydrogen, characterized in that said method comprises the steps of providing a metal tube, introducing into said metal tube a nanometric particle nickel powder and injecting into said metal tube a hydrogen gas having a temperature much greater than 150.degree. C. and a pressure much greater than 2 bars.”

“Hexothermal” is spelling error for “exothermal” which can easily be corrected. This claim is supposed to identify a new method which will produce excess heat.

While the application explicitly states, in para [0065]: “the invention actually provides a true nuclear cold fusion”, the Examiner’s Office Action does not use the expression “Cold Fusion” to criticize the filing. Instead, the Examiner expressed doubt that the described invention would be able to provide the heat as alleged and claimed. He therefore concluded that, unless shown to the contrary, he was going to rule that the invention does not work, i.e. it is “inoperable”. An invention must be useful to qualify for a patent. Therefore, unless Rossi can prove the contrary, this application will be rejected for failing to meet the utility requirement of Section 101 of the US Patent Act.

While Rossi cannot add any further text to the disclosure in this application by way of amendment, if he can show that, following the recipes set-out in his original disclosure, the results as promised can actually be achieved, then the Examiner may withdraw this objection. Rossi would have to provide authoritative evidence to this effect, probably from an independent source such as a Research Institute or an established Engineering firm in order to be sure of satisfying the Examiner. That may cost a substantial amount of money.

Unfortunately, any outside evaluator would be required to follow the procedures described in the application based on knowledge as it existed as of the date of the PCT filing on August 4, 2009. This may prove a barrier to demonstrating utility.

As an additional ground of rejection, the Examiner has also alleged that the disclosure is inadequate as failing to meet the requirements of Section 112 of the US Patent Act which reads as follows:

“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.”

Rossi faces the challenge that he must not only prove that the invention as described in the application actually works in the manner as promised, but also that the disclosure is sufficient to enable others to achieve such useful results.

The Examiner did not refer to this specific passage in the disclosure of the Rossi patent application:

“[0025] In applicant exothermal reaction the hydrogen nuclei, due to a high absorbing capability of nickel therefor, are compressed about the metal atom nuclei, while said high temperature generates internuclear percussions which are made stronger by the catalytic action of optional elements, thereby triggering a capture of a proton by the nickel powder, with a consequent transformation of nickel to copper and a beta+ decay of the latter to a nickel nucleus having a mass which is by an unit larger than that of the starting nickel.”

The feature of using catalyzing material is addressed in one of the dependent claims as follows:

“8. A method according to claim 1, characterized in that in said method catalyze materials are used.”

Claim 8 could never go forward. There is no description in the disclosure identifying what constitutes the specific catalyzing materials. Nothing can be claimed that it is not supported by an enabling disclosure in the body of the patent specification.

Furthermore, applicants are expected to describe the: “best mode contemplated by the inventor of carrying out his invention”. If the applicant knows of special catalytic materials that make the invention work better, then he is required to disclose them in the application. Having acknowledged that such materials exist and having failed to identify them, this application violates the requirements of Section 112 and could be rejected on that basis. The Examiner may raise this point in a future Office Action if prosecution continues.

This is a serious deficiency in this application.

Another example of inadequate patent drafting is the following statement in the disclosure:

“[0062] The above mentioned apparatus, which has not been yet publicly disclosed, has demonstrated that, for a proper operation, the hydrogen injection must be carried out under a variable pressure.”

If it is known that a mandatory procedure must be employed in order to make a claimed process operate properly, then that procedure has to be included in the principal claim, Claim 1. In this case, such a limitation has not been incorporated into Claim 1. This claim could have been rejected on that basis alone.

One of the depending dependent claims does provide as follows:

“4. A method according to claim 1, characterized in that said hydrogen is injected into said tube under a pulsating pressure.”

Being a dependent claim, Claim 4 overcomes this deficiency of Claim 1 in that it does incorporate a feature asserted to be essential in the disclosure. The limitations of Claim 4 are therefore directly available to be added to Claim 1 in an attempt to repair its deficiency.

However, claims must also be definite and an Examiner would typically ask for limitations to be included in the claim that characterize the types of pulsations suitable to ensure that the claim covers a fully functional procedure. If a Response were to be filed, it would be appropriate to search through the disclosure for ranges and other limitations on pressure pulses to be incorporated into Claim 1 in order to ensure that Claim 1 describes a method that actually works.

There are no references in the disclosure as to the nature of the pulsations: their strength, frequency, duration, waveform or other parameters. If the Examiner were to raise this type of objection the consequences would be fatal to the application

There are therefore many grounds for the Examiner to have rejected this application. Not all were applied in this first Office Action. Instead, the Examiner relied upon lack of operability as the primary objection. In addition, he also made a novelty objection based on the assertion that Claim 1 describes something that had been done before, referring to published experiments wherein nickel was converted to copper by ionic bombardment using a linear accelerator. This is a pretty lame objection. A reading of Claim 1 will show that there is no stipulation in the claim that a nuclear transmutation will occur. Rather, it is in the discussion of theory in the disclosure that such allegations are made. The Examiner is wrong in criticizing Claim 1 on this basis. The Examiner was simply confused or inattentive in making this objection.

The disclosure contains an extended discussion of theory which, rather than helping an applicant will usually only get an applicant in difficulty. It’s not necessary to describe a theory why something should work. It’s essential to describe a procedure by which an actual operating version of the invention can be implemented. Any description of a theory is superfluous. Indeed, it is dangerous to suggest a theory; the theory might be wrong. As has occurred here the Examiner has seized upon flaws in the theories recited to justify his skepticism that the invention actually works as promised. It would have been much better, for patenting purposes, not to have included any discussion of theory.

One can only speculate how a patent application such as this was originally drafted and managed to go forward. It must have cost the applicant tens of thousands of dollars, including translations from the Italian, to get to this stage. Was this done intentionally, knowingly that the application was deficient? This is not logical. It’s more likely that the original patent attorney simply wrote down the material as reported to him by the inventor without giving feedback and guidance on the inadequacy of the disclosure. This happens all too often.

Inventors should be more aware of what is really expected to produce a patent application that will support a valid patent grant. This is quite apart from the separate issue of producing a valuable patent which is meaningful and effective. To minimize the risks of spending money futilely, in the case of important inventions, it would be appropriate to get a second opinion from a second attorney. This should be done well before the end of the initial priority year in time to make adjustments and corrections before the one-year deadline arrives.

This application by Andrea Rossi has been available for public examination for several years. If it describes a working invention one would presume that others would have followed the instructions in the disclosure and achieved the promise of excess energy. Though not proof of the inadequacy of the disclosure, such validating demonstrations have not been publicly disclosed. One can only speculate why this has not occurred.

Andrea Rossi is entitled to file further applications containing an improved disclosure so long as his claims focus on material that is new, i.e., are limited covering only things not previously available to the public. Such applications are not published until they have been pending for 18 months from the earliest, original filing date. It is possible that Mr. Rossi has a follow-on application that has already been filed but is not yet published. We can only wait in order to see if this is true.