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.

16 Replies to “Status Report – Rossi Pending US Patent Application”

  1. notice that this recent demo did not use a metal tube so it cannot be used as “evidence of operability “

    1. David French replies:

      Nothing can be used as evidence of operability that is not already written-up in the text of the patent application of 2008. Rossi is stuck with that text. He should’ve filed 2, 3, 4 different applications as he learned more. Perhaps he has filed some in the last 18 months. We don’t see applications published until 18 months from the earliest filing or priority date. I’ve checked on the Patent Cooperation Treaty website and I don’t see any fresh applications naming Andrea Rossi as the inventor.

  2. To the not-so-naieve this back and forward is an acknowlegement that this is indeed a Big Deal. I’ll bet that the hidden agenda is to try and force Rossi to disclose his secret in a moment of poor judgement.
    Patent Office: “You give us the secret and we will give you the patent.”

    Any bets that the military industrial complex might want, say, tanks that do not need a supply line? Killer robots that dont get flat batteries or have noisy petrol engines?
    Fighter jets that can stay in the air for longer than 10 minutes?
    May the evil morons rot in hell.

    1. David French replies:

      Arthur, we haven’t communicated in a while. Unfortunately, I must advise you that, since at least the 19th century. a premise for the granting of a patent is that there be a complete disclosure of how to put the invention into use. This is the rationale for giving an individual a monopoly for a number of years.. I don’t see the presence of any “evil morons” acting in this exercise.

  3. Well, that it how patents work, like it or not. A 20 year monopoly is granted in return for full disclosure, at least full enough for anyone with suitable skills to copy the device and get it to work.
    Trade secret route looks dangerous, as they will surely be figured out, starting with published data in the report and a few other details such as “why three-phase heating?”.
    Looks as though Rossi slipped up in specifying a metal tube: he should have written that the metal tube is an example but other materials could be employed. Most good patent attorneys would have filled the document with ” … but not neccessarily …” clauses.
    Peter W.

    1. David French writes:

      You’re absolutely right in everything you say. Unfortunately, Rossi used a gentleman from a firm in Milan that had an ancient tradition going back to the 1st decade of the 20th century. Perhaps an “old hand” drafted a quick application without laboring over how to elucidate the full potential scope of the invention. That’s what happens when you ask for a quick filing at low cost. If you’re willing to pay more and use high price help, they will try to do a better job.

  4. What about the catalyst? Potassium carbonate ? Have a look at the article: “Cold fusion Catalyst” on the former e-Cat Site.

  5. David French writes:

    Andrea Rossi’s original PCT disclosure, which is the same disclosure pending in the United States, originally claimed a monopoly as follows:

    6. An apparatus according to claim 5, characterized in that said nickel powder contains catalyzer materials.

    However, in the description of how to build the invention there is no reference to a “catalyzer” or “catalyst”. The disclosure is deficient in this respect, and, even if it got by the Examiner and issued as a patent, it would be very hard to enforce in Court. Apparently, Rossi knew about a catalyzer or catalyst at the time he drafted the document, but didn’t provided a description so others could have the benefit of that feature. This is against the rules of patenting.

    Also, the description as provided in the PCT application wanders all over the place with features and procedures which are apparently not needed today:

    1. The catalyst is in the patent. A chemical catalyst assists a chemical transition without changing form. An Energy catalyst assists an energy transition without changing form (not including changes of isotope). The best place to hide something is in plain sight.

      1. David French replies:

        The only hints at the nature of any catalyst that I can locate are the following passages from the patent application disclosure:

        [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.


        TABLE 2

        [0088] List of materials used for making prototypes for experimentally testing the inventive apparatus


        [0095] Boron: Danilo Dell’Amore Srl–Bologna

        If you see better references, please share them.

        David French

  6. Thank you Sir David French for your commentary on the “catalyst”. I invite you to have a look at the BRILLOUIN inventions seemingly to result in practical commercial devices. Thanks again.

  7. from the first paragraph of this status report we learn that :”Observation of abundant heat production from a reactor device and of isotopic changes in the fuel.” Said remark is discussed extensively in “Cold Fusion Now” in the article : The Ultimate Hot Tube. From that article can be learned that the nickel-formula of Andrea Rossi contains at the start lithium hydride delivering the hydrogen fuel for the reaction. In connection herewith I like to stress that LiH is not stable but at temperature near the melting point (680°C) decoposes into a lithium cation (Li+) and a hydrogen anion (H-). If a postive electrode (+) is present the anion will loose its electrons and become a proton (H+). The proton (p+) will go to the cathode (-) and encounters there the positive Li+ in the presence of the electron sea of the cathode, they become close neighbours and fuse to form in an aneutronic fusion reaction HELIUM. Such may explain the lack of radioactive radiation. Aneutronic fusion is dealt with in WIKIPEDIA. the lithium 7 isotope forms with a proton two helium 4 nuclei at the cathode becoming two helium molecules. Lithium 6 will yield with a deuteron the same helium. The test has only to be done with LiD. The above explains the depletion of the Li isotopes and the depletion of Li7 being the highest because it has been present at the start in a content of 93% with respect to the whole lithium content.. At last I like to put forward that the Fleischmann- Pons electrolysis proceeds in the presence of LiOD wherein in my opinion the Lithium plays the role at the palladium cathode as pointed out above. Comments are welcome.

  8. Why not use a plasma containing protons and Li+ ions as described in Belgian patent BE1002780 disclosed in English on the former e-Cat Site in the article :”Belgian LANR Patents?

  9. Why not use a plasma containing protons and lithium cations (Li+) as described in Belgian patent BE1002780 to be found in English on the former e-Cat Site in the article: Belgian LANR Patents,

  10. David French replies;

    I am not competent to assess the efficacy or practicality of carrying-out reactions in a plasma. I understand that there are considerable difficulties associated with confining a plasma at reasonable cost. Others will have to evaluate this proposal.

  11. Thank you Dr. French for the quick reply. I like to comment that the plasma involved in the BE1002780 invention has not to be kept away from the walls of the reactor as is the case in the TOKOMAK (ITER) for fear of cooling down . It is here a plasma as in a luminescent tube containing anions such as deuterons (+) and electrons The electrons go to the central anode and the cations to the mantel-cathode that gives its heat to the external cooling liquid e.g. for producing steam.In the presence of lithium cations hydrogen cations i.e. protons will aneutronically fuse to form non-radioactive HELIUM. See for aneutronic fusion WIKIPEDIA. The fusion reaction at the cathode is comparable to the fusion in the electron well of POLYWELL reactor of Dr. Bussard US-inventor, see also the FUSOR device of Dr. Farnsworth.

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