Review of Cold Fusion patents – Piantelli PCT #2

The following is the second 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.

August 21, 2011 –In the previous posting in this series we identified the two patent applications filed by Francesco Piantelli. We provided links to the applications as published under the Patent Corporation Treaty – PCT. Adventurous readers will have visited those links and explored the patent documents as filed.

In this posting, we will review the second, more recent, Piantelli PCT application in greater detail. Here is a link to that document: (here). (For links in this posting to work it may be necessary to switch from the e-mail version to the Cold Fusion Now web site – here.)

The second Piantelli filing

The second filing is very much relevant as it is still in position to result in the granting of patents in some 130+ countries. The date for exiting the PCT by making national entry filings in individual countries was May 24th, 2011. The national entry filing made into Canada is already available over the Internet: (here)

From the records of the Canadian filing there is an indication that some party having over 50 employees has an interest in this application. This is not a certainty and the identity of such a party, if one exists, need not necessarily be disclosed to the patent office.

Claim coverage of the second filing

Focusing on this most recent filing, a key issue is the scope of monopoly being sought. This is best determined by examining only the independent claims and particularly claim 1 which is always independent. Based on the PCT application, claim 1 of this filing reads as follows:

1. A method for producing energy by nuclear reactions between hydrogen and a metal, said method providing the steps of:

– prearranging a determined quantity of crystals of a transition metal, said crystals arranged as micro/nanometric clusters having a predetermined crystalline structure,

– each of said clusters having a number of atoms of said transition metal less than a predetermined number of atoms;

– bringing hydrogen into contact with said clusters;

– heating said determined quantity of clusters up to an adsorption temperature larger than a predetermined critical temperature, and causing an adsorption into said clusters of hydrogen as H- ions, after said heating step said hydrogen as H- ions remaining available for said nuclear reactions within said active core;

– triggering said nuclear reactions between said hydrogen as H- ions and said metal within said clusters by an impulsive action on said active core that causes said H- ions to be captured into respective atoms of said clusters, said succession of reactions causing a production of heat;

– removing heat according to a determined power from said active core and maintaining the temperature of said active core above said critical temperature.

Patent claims are a list of have-to-have-it features that must be present for something to infringe. Therefore every word is important. I have highlighted in bold some words that I considered to be important. Words used in the claim should be defined somewhere in the disclosure. In this case the precise phrase “impulsive action” is not defined per se in the disclosure, although examples are given of several “triggering” actions. If a claim is unresolveably ambiguous, it will be invalid. But generally, the courts will interpret the claims in view of what is said in the disclosure in a manner that is seeking to understand the actual intention of the inventor.

This claim defines the limits of infringement. If someone else were to create a cold fusion effect without falling within the scope of the entire text of the above claim, then they would not be liable to Piantelli and his co-applicants for patent infringement. We are presently examining an application. The above proposed claim is just that: proposed. Claims with other wording may issue in a final patent.

In fact, a claim as general as Claim 1 above will likely be rejected as violating the novelty rule of patent law: a claim must not describe anything that was previously available to the public. The examiner will make an initial assessment for claim validity, but if he makes a favorable ruling, that will not be conclusive. A patent, or a claim of the patent, issued in error can be invalidated after it has been granted.

Another rule recognized in many countries is that every configuration covered by a claim must operate to deliver what is promised. It is said that a claim must be “operative” across the full range of its coverage. This is a very onerous requirement. The above claim is likely going to be rejected on at least one of those two bases. This is particularly true when you read the broad range of meanings given to the various words in the written disclosure. Is it true that every transition metal will work?

The dependent claims in the pending application that refer back to claim 1 are all pre-designed to serve as fallback alternatives if claim 1 were to fail. It is likely that during patent prosecution before various patent offices that some attempt will be made to modify claim 1 by adding the further limitations of some of the dependent claims to claim 1 in order to obtain an approval for its grant. This will shrink the scope of monopoly rights being granted. But the prospect for the claims to be valid will be increased.

Claim 14 is also an independent claim – check the above link to view it. Everything said about claim 1 applies to claim 14. Both of these claims are a check-off list for infringement. Both of these claims remain to be examined and may not represent the final coverage of any future patent. Typically claims as finally granted are different from those as filed or published during the application stage.

PCT preliminary written opinion

In the course of the processing of the PCT application a preliminary, non-binding, written opinion on claim validity was issued by the PCT search and examination authority. In the case of this application, this authority was the European Patent Office. According to that report (issued late, on May 24th 2011 and available at the PCT link above at the end of the printed PDF patent disclosure), claims 1 and 14 were assessed as being novel in the sense that they don’t describe the prior art exactly; but these claims were nevertheless held to be obvious and therefore unpatentable. At the same time, some of the other dependent claims that refer-back to claims 1 or 14 adding further details and limitations were held to be both novel and inventive. For those claims, this preliminary validity report is favorable. But such approved claims may be very narrow. They can be reviewed at the link, above.

Rejection of claims 1 and 14

As might be expected, claims 1 and 14 have been rejected because they come very close to describing material present in the earlier Piantelli PCT application (which had become published 18 months after its filing date). In support of the obviousness rejection, the examiner also cited a German patent application DE 40 24 515 A1: (here or  Google PatentDe translation here – look for DE4024515A1 (low-quality machine translation); or enter that number here to see figures).  Also cited was data posted on two websites: Azonano.com and Nanoword.net.

The German patent application is shown at the German patent office website as having a corresponding Japanese patent application. No other corresponding applications in other countries (which might use English for the full document) are shown. They might exist, but they have not been shown at the German patent office website. Nevertheless, available particulars in English on the German application from the German patent office are as follows:

Title: Cold fusion of neutron-contg. hydrogen nuclei – by contact with micro-clusters of subordinate gp. element atoms.

 Hydrogen nuclear fusion is effected by contacting pairs of neutron-contg. hydrogen nuclei with microclusters of 3-100000 subordinated gp. Element atoms produced from high temp. ultra-finely divided particles by cooling using a carrier medium. Pref. the microclusters pref. contain 5-200, esp. a magic number of atoms and pref. consist of Pd and/or Ti, opt. alloyed with Ag. The ultra-finely divided particles are formed by evapn., pref. by laser beams or by using particle beams contg. the hydrogen nuclei. Microclusters may be applied to a substrate layer contg. Si, Ti, Gd, Sm or other rare earth which is electrically conductive or which is converted to insulating form pref. by oxidising or nitriding. ADVANTAGE – Process provides reproducible supply of energy for peaceful use by cold fusion of deuterons and/or tritons.

Google has provided a machine translation of the full German specification which is not of high quality. From the German patent office reference, 13 figures are present and Figure 5 is of interest as it shows the carbon molecule C₆₀, “Buckminsterfullerene”. I have not reviewed to find out why this molecule may be important.

This German application was originally filed February 8, 1990 by a German inventor and, apparently, has not issued to a patent. Nevertheless, its disclosure is relevant to the second Piantelli PCT application in limiting the scope of potential patent claim coverage. This application is important for what it discloses and not what it claims.

Not cited in respect of the second Pianitelli filing was an even earlier Piantelli patent application IT 1266073  (B1) that was filed in Italy on March 26, 1992 that never left Italy and never issued to a patent. Those who can read Italian might wish to report on it.

A lot more can be learned by reviewing the disclosure portion of the second Piantelli filing. The negative opinion of the PCT Searching Authority on patentability of some of the principal claims is not binding. But it should be given some weight. The scope of coverage that may eventually arise from this application remains to be resolved by various patent offices around the world.

Piantelli’s further initiatives

Meanwhile, what can be said is that Piantelli aspires to deliver the benefits of excess energy through Cold Fusion based on hydrogen in the gas phase in a manner similar to that of Andrea Rossi. He may have partners in view of the other named individuals designated as applicants on his PCT application. As his initial Italian filing was made in November, 2008, this group has had time to develop the concepts further. According to Ivy Matt in an August 16, 2011 posting on Cold Fusion Now, the Italian patent office has reported that two new filings have been made by Piantelli as of April 26 and July 14, 2011. Assuming these filings to be part of a related series, the applications will not be published until 18 months from the filing date of the earliest application of the series.

Multiple patent filings for related inventions are often made in the year following a first filing which establishes a first priority filing date. This year is called the “priority year”. These multiple filings are then consolidated as of 12 months from the original filing date to make a final filing. If this is completed within one year, then priority can be claimed from the original priority date. This final filing would typically, though not necessarily, be made under the Patent Cooperation Treaty – PCT. A PCT filing allows a further 18 months beyond the end of the priority year before national entry filings have to be made in individual countries. No change to the text of the “story” of a PCT application can be made once a PCT filing has been initiated. Conveniently, the PCT system publishes all applications as of 18 months after the earliest filing date of the patent series.

Assuming Ivy Matt got his recent Italian filing data from the Italian patent office, this office appears to publish “tombstone” data directly after an application is filed. Some countries do this. But until 18 months from the original filing date, the full text of applications will not be available to the public.

Piantelli PCT filing of 2008, continued

Returning to the PCT filing of 2008, not enough time has passed for all of the national entry filings that have been made to be recorded either at the PCT office or on the websites of individual countries around the world. At least a national entry filing was made into Canada. We can expect that one was also made in the United States and another before the European patent office. Quite likely national filings were also made in other important countries around the world.

This second application is of interest not just for the exclusive patent rights that may possibly flow from the pending application, an issue yet to be resolved before individual patent offices. A careful reading of the disclosure will give a good impression of what the inventor thinks is required in order to achieve a Cold Fusion reaction. This disclosure is not necessarily complete. If it contains defects, this will cast a shadow over any prospective patent based on that application. This provides some incentive for the original inventor/applicant to tell the true story as best they know it in order to obtain valid patent rights. If they have made mistakes in a filing, they can make further filings, but the claims of any further filings will have to be restricted to new material.

Prospects for a “Master Patent”

Valid patent rights in respect of Cold Fusion cannot be obtained for anything that has been made previously available to the public. It may be that somewhere in the world the secret of reliably effecting Cold Fusion has already been discovered and published. If so, it is not likely that a “Master Patent” (such as that on the telephone) can issue in this field. But if somebody does establish an important trick, a have-to-have-it feature or procedure which is different from the prior art, a difference which makes a difference, then that lucky person will have something which is nearly akin to a Master Patent.

Persons wishing to make comments on this posting are invited to visit the Cold Fusion Now website where this article is posted – here.