Ex parte Sturt

• Decision Date: 02 June 2015
• Docket Number: Appeal 2013-004048
• Parties: Ex parte ALAN CHARLES STURT [1] Application No. 12/312, 902 Technology Center 2800
• Court: Patent Trial and Appeal Board

Ex parte ALAN CHARLES STURT ^[1] Application No. 12/312, 902 Technology Center 2800

Appeal No. 2013-004048

United States Patent and Trademark Office, Patent Trial and Appeal Board

June 2, 2015

FILING DATE 05/282009

Before BRADLEY R. GARRIS, CHUNG K. PAK, and JEFFREY T. SMITH Administrative Patent Judges.

DECISION ON APPEAL

PAK Administrative Patent Judge.

This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's decision ^[2] finally rejecting claims 31-60 which are all of the claims pending in the above-identified application. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

The subject matter on appeal is directed to "a method and apparatus for reducing radioactivity of a particle." Specification filed May 28, 2009 ("Spec") at 1, ll. 3-4. The method and apparatus are said to "transform radioactive material into less radioactive products in a controlled way, substantially instantaneously and on demand, so as to obviate the need for special storage [for a thousand years or more for each year's production of radioactive waste associated with the current practice]." Spec. 2, ll. 8-12. Details of the appealed subject matter are recited in representative claims 31 and 51, ^[3]which are reproduced below from the Claims Appendix of the Appeal Brief:

31. A method for reducing the radioactivity of a particle comprising the steps of:

accelerating at least one first particle comprising one or more of neutrons, protons and electrons,

colliding the at least one accelerated first particle with at least one second particle in a collision zone located within a housing to thereby decompose the at least one first particle and at least one second particle to form at least one collision mass comprising neutrons, alpha particles and electrons or neutrons, alpha particles, protons and electrons, and in which substantially all neutrons of the at least one first or second particles are converted into alpha particles or protons and electrons as a result of the collision of the at least one first particle at a first velocity that is greater than or equal to about I *10 meters per second;

controlling the position of the at least one collision mass with electric or/and magnetic fields; detecting one or more radioactive fragments of the particles;

separating the fragments using an electro-magnetic field generator; and

exhausting the at least one collision mass from the housing wherein the exhausted at least one collision mass comprises substantially only at least one of one or more of an alpha particle, proton, electron, and electron antineutrino.

51. An apparatus for reducing the radioactivity of a particle comprising:

an accelerator for accelerating at least one particle comprising at least one of one or more of neutrons, protons and electrons to a first velocity greater than or equal to about 1 "10⁸ meters per second;

a collider for colliding the at least one accelerated first particle with at least one second particle in a collision zone located within a housing to decompose the at least one first particle and at least one second particle and form at least one collision mass comprising neutrons, alpha particles and electrons or neutrons, alpha particles, protons and electrons, and in which substantially all neutrons of the first or second particles are converted into alpha particles or protons and electrons as a result of the collision;

electric or/and magnetic control field generator for generating fields for controlling the position of the at least one collision mass;

a detector for detecting one or more radioactive fragments of the particles;

an electro-magnetic field generator for separating the fragments; and

an extractor for exhaust the at least one collision mass from the housing wherein the exhausted at least one collision mass comprises substantially only at least one of one or more of an alpha particle, proton, electron and electron antineutrino.

App. Br. App'x 1 and 4-5, (emphasis added).

The Examiner has maintained the following grounds^[4] of rejection:

1. Claims 31-60 under 35 U.S.C. §101 as failing to comply with the utility requirement;

2. Claims 31-60 under 35 U.S.C. §112, first paragraph, as failing to comply with the enablement requirement for the same reasons advanced in connection with the utility requirement;^[5]

3. Claims 31-60 under 35 U.S.C. §112, first paragraph, as failing to comply with the enablement requirement for reciting the decomposition of protons before the decomposition of alpha particles;

4. Claims 31-60 under 35 U.S.C. §112, second paragraph, as being indefinite due to inadequate written descriptive support resulting from the Specification failing to provide an enabling disclosure for the claimed invention;

5. Claims 31-60 under 35 U.S.C. §112, second paragraph, as being indefinite due to the unclear scope of the claim language "one or more radioactive fragments of the particles";

6. Claims 31-60 under 35 U.S.C. §112, second paragraph, as being indefinite due to the unclear scope of the claim language "alpha particles or protons and electrons"; and

7. Claims 31-60 under 35 U.S.C. §112, second paragraph, as being indefinite for "omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections." Final Act. 6-9 and Ans. 3.

In support of unpatentability of the claimed subject matter under 35 U.S.C. §§101 and 112, first paragraph, the Examiner relies upon the following evidence^[6] (Final Act. 3, 10, 11, 13, 17, and 18 and Ans. 5 and 7-9):

Heitler et al, "Gehorchen die Stickstoffkerne der Boseschen Statistik?", 77 Naturewissenschaften 673-674 (1929)(hereinafter referred to as "Heitler").

Rasetti, F., "Uber die Rotations-Ramanspektren von Stickstoff und Sauerstoff, " 61 Zeitschrift fur Physik A, Hadrons and nuclei, Nos. 9-10, 598-601 (1930) (hereinafter referred to as "Rasetti").

Ehrenfest et al, "Note on the Statistics of Nuclei, " 37 The Physical Review, 2nd series, No. 4, 333-338 (February 1931) (hereinafter referred to as "Ehrenfest").

Heisenberg, W., "Uber den Bau der Atomkerne, I", Zeitschrift ful Physik Band 77, 1-11 (1932) (hereinafter referred to as "Heisenberg").

Weimer et al, "K-Electron Capture in Radioactive Argon A³⁷, " 66 Physical Review, Vol., Nos. 7-8, 209-215 (October 1944) (hereinafter referred to as "Weimer").

Goldstein et al, "On the Theory of Slow Neutron Scattering by Liquid Helium, " 77 Physical Review,, No. 3, 319-329 (February 1950) (hereinafter referred to as "Goldstein").

Blatt et al., Theoretical Nuclear Physics, ISBN: 0-486-66827-4, Dover Publications, Inc., New York, 1-3 and 39-43 (1991) (hereinafter referred to as "Blatt").

Chadwick et al., "Cross-Section Evaluation to 150 MeV for Accelerator-Driven Systems and Implementation in MCNPX, " 132 Nuclear Science and Engineering, 293-328 (1999) (hereinafter referred to as "Chadwick").

DISCUSSION

Rejection 1 (35 U.S.C. $101)

Having carefully considered the evidence and arguments relied upon by the Examiner and Appellant, we determine that Appellant has not identified reversible error in the Examiner's finding that the claimed method and apparatus for the accelerated reduction of the radioactivity of a particle are inoperable and therefore lack utility within the meaning of 35 U.S.C. §101. Accordingly, we sustain the Examiner's § 101 rejection of claims 31-60 for the factual findings set forth in the Final Action and the Answer. We add the following primarily for emphasis.

It is well established that a claimed invention which is inoperative does not satisfy the utility requirement of 35 U.S.C. §101. Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571 (Fed. Cir. 1992); In re Hardwood, 390 F.2d 985, 989 (CCPA 1968). If the asserted utility is reasonably questionable or borders in the incredible in light of contemporary knowledge of the particular art, a prima facie case of lack of utility is established and then the burden is placed on Appellants to submit sufficient evidence to substantiate the asserted utility. Fregeau v. Mossinghoff, 776 F.2d 1034, 1038 (Fed. Cir. 1985); In re Ferens, 417 F.2d 1072, 1074 (CCPA 1969).

Moreover when the mode of operation does not conform to generally accepted principles, it is incumbent upon Appellants to demonstrate workability of the operative principles relied on for the claimed invention. In re Chilowski, 229 F.2d 457, 462 (CCPA 1956). "While a patent covering a meritorious invention should not be struck down because the patentee has misconceived the scientific principle of his invention, the error cannot be overlooked when the misconception is embodied in the claim." Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983), cert, denied, 469 U.S. 835 (1984); see also Noma Lites Canada Ltd. v. Westinghouse Elec. Corp., 399 F.Supp. 243, 253 (D.C.D.C. 1975)("When an incorrect or questionable theory of operation is included in a patent claim, that claim is invalid.") Lack of utility based on inoperativeness is a question of fact. Fregeau v. Mossinghoff, 776 F.2d at 1038; see also In re Cortright, 165 F.3d 1353, 1356 (Fed. Cir. 1999)(explaining that lack of utility is a question of fact).

Applying the above principles of law to the present facts, we determine that the Examiner has not erred in finding that the asserted utility or result of the accelerated reduction of the radioactivity of a particle recited in claims 31-60 falls into the category which borders on the incredible in light of contemporary knowledge of the art. Final Act. 13-14. As acknowledged by Appellant,

There is currently no known process for accelerating the decay of radioactivity in a material. Presently, the only way of handling waste radioactive materials

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