ENERGY SCIENCE ESSAY NO. 8A
Cold Fusion: My Story: Part II
Copyright © Harold Aspden, 1998
This is a chronological account of my experience to date in
seeking the grant of a patent on the subject of 'cold fusion', by application
to the United States Patent Office. The invention in its primary form is that
disclosed in the British Patent Application discussed in Cold
Fusion: My Story: Part I as illustrated there by the Fig. 1 illustration
of the granted British Patent No. 2,231,195.
February 16, 1990The application as filed on this date was
assigned its U.S. Serial No. 07/480,816. It was based on a claim to the priority
date of the above-referenced British Patent Application by virtue of the
International Convention applicable to patent rights.
March 2, 1990The United States Patent Office (USPTO) advised
that the subject matter of the application appeared to be useful in the
production or utilization of nuclear material or atomic energy. To head off a
'Formal Requirement' being issued within 45 days, requesting the filing of an
oath or declaration describing the circumstances giving rise to the invention, I
duly confirmed that "I had made and conceived the invention on my own time using
my own facilities, funds, information etc." I added that was a retired scientist
with a Visiting Senior Research Fellow connection with Southampton University in
England, but had no contractual ties with the university.
February 19, 1992The USPTO issued the first Office Action.
All 17 claims were rejected. It was said that claims 1-9 were drawn to
'apparatus', and claims 10-17 to a 'method'. These were deemed to be two
inventions. The Examiner said that the inventions were 'distinct' and would need
different classification for search purposes, which meant I must choose by
restricting to one of these two categories.
The Action further declared that a choice had to be made of one of three
species, so proceeding either with the embodiment shown in Fig. 1 or that shown
in Fig. 2 or that shown in Fig. 3.
The Action went on to say that if the first specie choice was made I must
restrict the claims to either the embodiment where the hydrogen
isotope-containing fluid is a liquid or the embodiment where the hydrogen
isotope containing fluid is a gas. Subject to that choice I was required further
to elect one of the following disclosed species for prosecution on merit, namely
the embodiment where the conductor is hollow or the one where the conductor is
Examiner Harvey Behrend had been assigned and the above were his
requirements. A shortened statutory period for reply was allocated, this being
30 days from the date the Examiner's Office Action was issued. Note that I live
in England and was handling this application myself and postal communication
both ways across the Atlantic does eat into that thirty day period.
February 24, 1992Acting like lightning I made my response
and mailed it to the USPTO on this date.
I made the appropriate elections, based on Claims 1-9, Fig. 1, the hydrogen
isotope containing fluid being a liquid and the conductor being of solid form. I
also submitted some minor corrections with a modest revision of claim,
substituting new Claims 18-21 for Claim 6.
June 15, 1992Examiner Behrend issued his second Office
Action. Although I had air-mailed my reply to the first Action on February 24 it
was stated by the USPTO that it was not received until March 6. This second
Action gave me 3 months for response. It declared that Claims 1, 2, 5, 18-21
were all allowed, seemingly an error, because the Examiner's commentary appended
to the communication was a very substantial document that attacked my
application. I counted 36 items in the package of 'prior art' cited. Of these,
only 10 items were patent specifications which were 'prior art', as understood
by that term in the patent profession. The rest, mainly journalistic comment
about cold fusion, were items published after the priority date on which I was
basing my claim.
Some of the key features of the Examiner's remarks, spread over 14 pages,
were as follows.
1. 'There is no reputable evidence of record to support any
allegations that the invention involves nuclear fusion nor that any of the
allegations or claims of "excess heat" due to nuclear and/or chemical reactions
are valid and reproducible, nor that the invention as disclosed is capable of
operating as indicated and capable of providing useful output.' In short, I was
told that my invention had not been tested and proved operative by what was of
record in the 'prior art'. Had it been, then the Examiner would have been in his
rights to reject my patent application by citing that specific prior art.
2. 'The invention is based on the "cold fusion" concept set forth by
Fleischmann and Pons (F & P) (see March 24, 1989 article by D. Braaten).
This "cold fusion" concept is still no more than just an unproven concept'. This
statement was backed up by references to laboratories that had performed tests
to confirm the F & P claims, but 'It was also the general consensus of those
working at these various laboratories that there is no reputable evidence of
neutron, gamma ray, tritium or helium production to support the allegation or
claim that nuclear fusion is taking place, nor is there any reputable evidence
to support the allegation or claim made to excess heat production.'
3. 'Claims 1, 2, 5, 18-21 are rejected under 35 U.S.C. 101 because the
invention as disclosed is inoperative and therefore lacks utility.'
4. 'Applicant at best has set forth a what may be considered a concept or an
object of scientific research. However, it has been held that such does not
present a utility within the meaning of 35 U.S.C. 101. See Brenner v. Manson,
148 U.S.P.Q. 639.'
5. 'Claims 1, 2, 5, 18-21 are rejected under 35 U.S.C. 103 as being
unpatentable over any of Pons et al, Brumlik et al, Lewis et al, Zachariah or
Rabinowitz et al, in view of any of Diller, Vincent or Childs.'
Now, there is no point in reciting further from the Examiner's Office Action,
but readers who are interested in more detail can scan parts of my response,
sections of which are included as Appendix
I as an attachment to this Essay.
August 14, 1992I decided to argue my case, but run the
contest by the tactic of trying to escape from the 'stigma' of the 'cold fusion'
topic and concentrating my fight to secure grant based only on four new claims,
Claims 22-25. My response was mailed on this date to the USPTO. See that Appendix
Now, at about this time I had visited USA and had had occasion to meet with a
representative of an organization in UTAH, originally named FEAT, but later
named ENECO. Interest was being shown in my patent efforts on the cold fusion
front and overtures were made to bring my patent applications under the
licensing umbrella of that organization. In the event, during the months ahead,
my British rights based on the two patents I had pursued on cold fusion
inventions were assigned to ENECO. A similar transfer of my pending U.S. rights
had also been agreed, but then came the first 'shock' in this fiasco.
August 8, 1993I understood that there were problems in
processing the numerous 'cold fusion' applications in the U.S. Patent Office and
was still awaiting the USPTO Office Action in reply to my submission of the last
Amendment, when I received a communication entitled 'Notice of Abandonment' on
the basis that I had failed to respond to the 'Office Action mailed on December
In fact, no such Office Action had been received by me in U.K. I was quite
bewildered, especially so as I had been arranging for the transfer of the case
to ENECO's in-house Patent Agent in UTAH. I surmised that the communication had
got itself lost in the pre-Christmas mailing activity, though I did wonder if
its absence was contrived in some way, because nothing had gone amiss in my
communications with the USPTO before, apart from my concern that their mailing
practice to overseas locations could be surface mail. However, I could but
advise ENECO's Agent, who, as a matter of urgency, was able to procure a copy of
the missing Office Action from the USPTO. The Notice of Abandonment had been
dated August 3, 1993 and I was able to mail my Response to them on August 16
coupled with a notification that I intended to petition to have the application
Concerning the substance of the December 16, 1992 Office Action, this advised
me that one of my claims fell foul of the election of specie requirement and
that the other three were rejected. The Examiner cited several items of new
'prior art' and took another 15 pages plus 4 attachment sheets to summarize his
He said I had 'added' new matter, by deleting from the 'Background of
Invention' section some ten pages of introductory material which he had found
objectionable by his earlier comnments. I was required to cancel the 'new
matter' as part of my response, meaning I had to put the 'old matter' back into
He then went to great lengths to explain that I could not have 'a single
point of connection to a metal conductor by which its output current returns to
the d.c. power source'. I had, in fact, disclosed two separate current circuits,
but the cathode potential was common to both circuits and so it only needed one
common connection to assure that. Then he argued that I had not supported by my
disclosure the structure by which 'a.c. circulates in an all-metal closed path
which, within the housing, is exclusively that of the cathode'. He said that
some current of that circuit would leak through the electrolyte. Here, knowing
that the electrical conductivity of metal versus electrolyte can be of the order
of 10,000, indeed 100,000, times greater, I was bewildered at such an
Although I had done everything I could to purge my disclosure of all
dependence upon 'cold fusion' as an essential phenomenon, the Examiner persisted
in declaring that:
"The invention is to the generation of heat by the interaction of
deuterium in a palladium material wherein the deuterium has been
electrochemically charged into the palladium so as to undergo nuclear fusion.
This particular concept or expedient has become known in the art as 'cold
The Examiner then persisted in denying the possibility of excess heat or
nuclear fusion and so concluded that my invention could serve no useful purpose.
His onward remarks included comments such as:
"The Broad article in the March 17, 1991 issue of the New York
Times indicates some of the data relied upon by F & P as showing evidence
of fusion was faulty."Since my priority date on which I was basing
my claim was April 15, 1989 and since the comments in the New York Times did not
refer to tests based on what was disclosed in my patent application, such
remarks were not, in my opinion, relevant. The essential comments in my response
are presented in Appendix
II as part of this Essay, but I was here facing not only the fact that the
Examiner declared his rejection as being 'FINAL' but the fact that I was about
to seek revival of the application by lodging a Petition at the USPTO.
I did, shortly thereafter, compose a text which I headed 'A Commentary on the
Physics of Cold Fusion'. It was dated 12 October 1993 and I sent it to ENECO
suggesting that it could be used in the onward struggle with the USPTO to help
in the quest to procure patent grant in this field. ENECO did not use it for
that purpose, but I included it as an Appendix in a U.S. Patent Application that
I did contrive to negotiate to the grant stage, namely U.S.
Patent No. 5,734,122 and the full text of that patent, including the
Appendix as there published is of record in these Web pages.
However, the saga of all this was only just beginning!
February 3, 1994On this date ENECO mailed to me a copy of
the Petition to revive Application Serial No. 07/480,816 coupled with the
statement that 'The filing of these documents will permit the filing of the
continuation-in-part application that we discussed'.
So, noting that it is important in U.S. patent practice to preserve the
earliest claim one can to the priority date to which one is entitled, we now
move on to the next platform of this somewhat 'theatrical' performance.
February 15, 1994I was notified by the ENECO Patent Agent
that the Continuation filed to revive the abandoned application had been granted
Application Serial No. 08/191,381, implying that the petition had been approved.
The USPTO filing date was February 3, 1994.
This was followed by another USPTO (Department of Energy)
request for confirmation that what appeared to be something "useful in the
production or utilization of atomic energy" had or had nor emerged from activity
involving U.S. government sponsored resources. Here was an Examiner saying that
such inventions that relate to 'cold fusion' are not of any practical use and
yet the official Department of Energy posture that vets the U.S. applications as
filed requires an oath or declaration based on the contrary assumption!
April 3, 1995Examiner Behrend issued his first Office Action
on the revived application. He went through the same election of species tactics
as before, and this resulted once again in an election to proceed with the
species drawn to apparatus, the Fig. 1 embodiment, a new election restricted to
palladium as a cathode material, an election of the liquid species and a further
election of a hollow conductor as a cathode.
The opportunity was taken to revise all the claims in the application and the
response substituted new claims 36 to 46 for those that were put on record by
the continuation application. This response was sent to the USPTO by Express
Courier on August 22, 1995 as part of a 30 page document. This explained the
basis of the claims and, in the hope that this would head off another Examiner
diatribe on the impossibility of generating excess heat by electrolytic methods
deemed to involve 'cold fusion', the remarks submitted included substantial
supporting explanation which could not be added to the text of the
Owing to the possible interest of readers in the technical content of that
document, sections of it are to be found in Appendix
III. Note particularly the emphasis placed on the 'stifling action' of the
caloriments used by those who purported to test cold fusion cells based on the F
& P model. My argument essentially is that it is the setting up of
temperature gradients in the cathode, as aided by injecting a strong circulating
current through the cathode, that is the catalyst for the 'fusion' reaction.
Those calorimeters, in seeking to measure heat generated by ensuring a uniform
temperature through the test cell, were, in effect, 'killing the goose that lays
the golden eggs'.
December 7, 1995Examiner Behrend now issues his Office
Action presenting the prior art once again! This time, however, there were 53
citations, 10 of which were 'prior art' in the legal sense and the rest of which
were mainly journalistic and research periodical comments about cold fusion, all
published after the priority date claimed. The 10 items of 'prior art' were
mainly old patents which illustrated the structure of electrolytic cells. In
normal patent prosecution, only these items would be involved in the contest and
the technical issues can be argued on their merits, without the saga of cold
fusion being a dominant factor. However, processing the application by reference
to the clear structural issues of the inventive features of the apparatus were
not a dominant consideration for Examiner Behrend.
He rejected all claims. Again he argued that cold fusion was a non-viable
pursuit, relying on articles in the New York Times, a television show "Cold
Fusion in a Jar" and a book by John Huizenga "Cold Fusion: The Scientific Fiasco
of the Century" plus other similar reports. On the more substantive issues he
persisted in his argument that:
The claims were vague, indefinite, incomplete and misdescriptive
in referring to the d.c. power source as being connected to a single terminal
on the cathode. They were vague, indefinite, incomplete, inaccurate and
misdescriptive in referring to the a.c. as circulating in an all-metal
circuit, because it would appear that the a.c. would also pass from the
cathode through the electrolyte to the anode.
Indeed, after reading that I wondered how I had survived in the patent
profession for my whole working life, personally prosecuting countless patent
applications concerned with electrical engineering and never, ever, encountering
such criticism of my circuit descriptions from any patent examiner in the world
until Harvey Behrend drew his sword!
However, here was my patent application and I had to fight to keep it alive,
given that the rejection I confronted was not based on 'prior art' but on
February 17, 1996On this date I mailed my response to the
USPTO Office Action of December 7, 1995. This was a text some 40 pages in
length, sections of which can be seen as Appendix
IV. It was long because I had to respond fully to all the art cited by the
Examiner. I could not dismiss it as 'frivolous' even though that was clearly the
case. Two points drawn from my response that I present here, instead of
deferring them to that Appendix, are evident from the following quotation from
the document I mailed to the USPTO:
The following comments track the Examiner's remarks by page
reference to his Office Action.
Page 5: He stated that claims to
initial positive results were generally retracted or shown to be in error by
subsequent experiments (see article by Stipp in Wall Street Journal). I
replied that: the Stipp article (ref. 8) said that the neutrons observed in
the first experiment were based on false measurements and not confirmed in the
second experiment but 'the researchers said their second experiment yielded
more heat than the first one'.
Page 5: He further applied the same
statement to page A22 of M. W. Browne's article in New York Times. I noted in
my reply that: the Browne article (ref. 2) said that Caltech failed to find
any symptoms of fusion in that no emitted neutrons, gamma rays, tritium of
helium were seen, contrary to claims of the Utah group. Then it reads 'The
Caltech team intentionally reproduced experimental errors leading to the same
erroneous conclusions reached by the Utah group, Dr. Lewis said. By failing to
install a stirring device, temperature differentials in the cell led to false
estimates of its overall heat, he said. This may have suggested to the Utah
group that its cell was producing fusion energy.'
comments hold up. The Caltech work indicates that they discovered how not to
generate excess heat energy but did not disprove the possibility, if that
temperature gradient in the cathode is the key.
June 6, 1996Examiner Behrend now issues a statement saying
that I have been non responsive in my above communicaton, which was received at
the USPTO on February 20, three days after it was mailed. His communication to
me arrived nearly three weeks after it was mailed from USA and gave me one month
in which to reply. His objection was that the claims were not readable on the
elected species because they are not directed to a "thermally activated
electrolytic apparatus" having a heat transfer means for heat generated within
June 28, 1996Acting promptly I submitted an Amendment to the
USPTO in which I submitted new Claims 50 - 52, meaning that the application was
now in contest with only three claims, contracted to cover the specifics of the
structure clearly disclosed in Fig. 1. I declared that my object was to 'salvage
from the disclosure and claims of the specification as originally filed a
minimal cover for the invention' as then presented. I then added the following
The new claims define a novel, non-obvious structure that can be
fabricated and which has utility in a technological field that is commanding
extensive interest in spite of competitive pressures. The remarks made on
pages 4 and 5 of the 2/20/96 response were aimed at directing attention to the
structural aspect of apparatus according to the invention, in an effort to
avoid the ongoing debate on the 'cold fusion' issue. Those researching this
field are now finding that the metal composition of the cathodes can change by
producing metal isotopes as well as excess heat and that signifies nuclear
transmutation. (See 'Anomalous Isotopic Distribution in Palladium Cathode
after Electrolysis' (authors T. Mizuno, T. Ohmori and M. Enyo) March/April
1996 issue of 'Infinite Energy'). I further note that cathodes which are
plated as laminar structures including nickel as well as palladium are
reported as producing substantial excess heat. As will be appreciated,
temperature gradients set up in layered bimetallic films on a cathode can
promote closed circuit current flow by thermoelectric effects. My subject
invention is wholly concerned with that closed circuit flow, though my
invention provides a different structural implementation.
February 13, 1997It was on this day that I received from the
USPTO a communication dated February 3, 1997, that is 10 days after mailing,
which was headed 'NOTICE OF ABANDONMENT' for the stated reason of 'Applicant's
failure to respond to the Official Letter, mailed on June 6, 1996'.
I had responded, but here was the USPTO declaring that I had not responded
and, sadly, I had no 'proof' of mailing from the U.K. I then wrote to the USPTO
to explain my bewilderment and asked that they check their files and records
pertaining to the application to trace the missing document, saying I had mailed
it personally and enclosing a copy for their reference. I pointed out that my
letter was really no more that an amendment submitted as a specific claim
restriction worded as required by the Examiner. The circumstances were such that
I would not abandon my application faced with such a request from the
Circa March/April 1997I received an undated communication
from Charles T. Jordan, Supervisory Patent Examiner, Group 2200, which DENIED my
request to withdraw the holding of abandonment. It stated that I may request
reconsideration of withdrawal of the holding of abandonment by petitioning to
revive the application on the grounds that the failure to respond was
unintentional. To proceed I would incur more fees and, frankly, my patience was
wearing a little thin, and, bearing in mind that I was fighting a similar battle
on another front, a separate continuation on the same base patent application,
also involving Examiner Behrend, I accepted that my struggle concerning U.S.
Patent Application Serial No. 08/191,381 had ended in defeat.
I note that ENECO in Utah had been experiencing their own problems in their
efforts to secure a U.S. Patent on the initial Fleischmann-Pons inventions and
there came the time when they relinquished their interest in my patent rights
and reassigned them to me, which is why I have continued the struggle with the
USPTO on my own account.
An Equally-Shameful USPTO Treatment!
Here I shall refer quite briefly a separate pursuit of trying to
secure a U.S. Patent corresponding to a U.K. Patent Application which I filed
at the British Patent Office on January 12, 1991. It was entitled:This was a development of the structural features
of the invention which were the subject of the above primary U.S. Patent
Application on the so-called 'cold fusion' topic. As one can see from the
specification of that GB Patent 2,251,775 the third paragraph of the description
of the 'FIELD OF INVENTION' reads:
"Heat Generation by Ion-Accelerated Energy
"Although some reference to the nature of
the atomic nucleus of a hydrogen isotope will be made in describing this
invention, it is stressed at the outset that the energy processes exploited in
this invention are non-nuclear and are not related to what is termed 'cold
fusion'. The energy technology is that of electrodynamics and ion
Here the cathode conductor comprised alternate segments of
two different metals. This had the attribute, given a choice of metals, and
especially if one metal is nickel, of setting up thermoelectric effects as well
as phenomena related to the Nernst Effect. The latter involves the setting up of
temperature gradients in metal, given a magnetic field which is inevitably
present owing to current flow through the conductor. That generates electric
charge in the cathode. There are also anomalous electrodynamic effects when the
flow of ions (deuterons) carry, in some small measure, some of the current
through the cathode. Accordingly, the invention was of potential value in the
quest to generate heat in a manner deemed anomalous by orthodox
Reference was also made in the specification to a paper of
mine published in 1986 in Hadronic Journal and entitled 'The Theoretical Nature
of the Neutron and the Deuteron'. There I had explained how, in order to give a
precise theoretical account for the magnetic moment and mass properties of the
deuteron, the deuteron must constantly flip between quark-like states,
undergoing transitions involving, in effect, protons, antiprotons, electrons
and, positrons. For 2 parts in 7 of the time it comprises two negatively-charged
concentrations of mass energy of proton size. All this, activity in a host
metal, seemed to militate in favour of the 'cold fusion' scenario, but my object
in the patent application was to cover just the structure that could be
conducive to the exploitation of whichever phenomenon was giving the anomalous
generation of heat.
In any event the U.K. Patent was duly granted on
April 20, 1994 as GB Patent No. 2,251,775 but the fate of the U.S. Patent
Application was very different, as we now see.
chronologically, as before:
January 17, 1991This was the date of filing of the U.S.
Patent Application Serial No. 07/645,192 as a Continuation-in-Part of the
primary application Serial No. 07/480,816.
February 19, 1992The first Office Action was mailed by
USPTO. The Examiner was Harvey Behrend. This, as before, was a request for
election of species, a more elaborate sequence of species selection than applied
to the parent application.
The embodiment choice was between Figs. 1 and
2. The fluid serving as the hadronic source had to be selected from the species
'gas', 'molten salt' and 'water', even though the structure of the apparatus
claimed and its electrical excitation were the features of the invention that
mattered from a claim point of view. Then further restriction as between
'tubular' cathode or a 'cathode formed as a surface coating on an insulating rod
or core' was demanded, even though in both cases the cathode is 'tubular' in its
Examiner Behrend added in his Action the comment that the
background reference to GB Patent No. 2,002,953 in my specification, as filed,
was effective as relevant prior art anticipatory of my application. That GB
patent was one of which I was inventor. It dated from 1978. In my response to
the Examiner I explained why this could not be anticipatory. Interested readers
can inspect the relevant section of that as Appendix
June 8, 1992Examiner Behrend mails his second Office Action.
All claims are rejected. This was another diatribe attacking cold fusion. There
were 39 citations, seemingly almost all comprising a standard set of journalist
accounts on the theme of cold fusion, that Harvey Behrend had assembled and was
citing against anything that hinted at the potential of such a
I had been given three months in which to reply, dating from
June 8, 1992.
August 14, 1992On this date I mailed the following Letter to
RESPONSE TO OFFICE ACTION DATED 06/08/92
The subject application (07/645,192) was filed as a
continuation-in-part in respect of earlier-filed application
The first substantive examination report, which rejects all
the claims, has been issued one week ahead of the corresponding report on the
parent application. The Applicant had expected that most issues concerning the
first application would have been resolved before having to determine action
on the continuation-in-part application.
In these circumstances, the
Applicant seeks the indulgence of the Examiner in the following
The full response to the action on the parent application,
with a new set of claims and severe restriction of the specification, is being
lodged together with this communication.
Since the claim cover sought
in the parent application, if allowed, would now, in present circumstances,
suffice for the Applicant's onjectives, it is requested that the processing of
the subject application should be deferred pending the outcome of the
Examiner's evaluation of the response now submitted on the parent
It is the Applicant's intention to abandon the subject
application if the new claim 22 of the parent application is found
Please advise whether or not this request is
I thought this
was a reasonable posture to adopt. It was an appeal to the Examiner for
direction and it was aimed at easing his task considerably whilst appeasing my
situation. I awaited advice.
January 25, 1993This was the date of mailing by USPTO of the
next communication I was to receive in connection with Application No.
07/645,192. It was a 'Notice of Abandonment' owing to 'failure to respond to the
Office Letter mailed on June 8, 1992.
My reply of August 14, 1992 had
Upon petition to have this holding of abandonment withdrawn
I was advised that the USPTO had been unable to locate my August 14, 1992 letter
and that upon scrutiny of the copy of that letter sent with my petition, that,
as a response, would not in any event 'entitle the petitioner to reconsideration
for further examination'. This advice was signed by Robert E. Garret, Director,
Group 220/290 at the USPTO.
So it was that my second attempt to secure
the grant of a U.S. patent that came under processing by Examiner Harvey Behrend
died an unnatural death! In both cases my letters sent to USPTO as responses to
Office Actions in the later stages of examination had somehow gone
That plus the fact that the parent U.S. application of both of
these continuation applications, 'killed' owing to mail 'loss', also died an
unnatural death. It was also killed by a 'loss' of mail in the transmission of
an Office Action in the latter stage of prosecution and that is, indeed, quite
remarkable. Three patent applications in this 'cold fusion' category all deemed
abandoned owing to mail loss! Yet, apart from these 'cold fusion' applications
in USA, I have never experienced any such mail loss in all my years in patent
The Struggle ContinuesHere I shall come now to the worst part
of this whole saga, the third attempt to secure a U.S. Patent based on a third
U.K. Patent Application which I filed at the British Patent Office on May 25,
1993. It was entitled:
Hydrogen Activated Heat Generation Apparatusand its subject
matter can be understood from the following abstract of record in the published
UK Patent No. GB 2,278,491, which was later granted on March 26, 1997.
In order to research the generation of heat by promoting the
fusion of protons or deuterons adsorbed by a host metal, the apparatus
provides a structural configuration by which the direction of heat flow
through the metal is transverse to the direction of an applied magnetic field.
Thermal priming means, which may include pre-cooling on the heat output side
or electrical heating of the host metal, provide the initial temperature
gradient triggering fusion. Alternating current activation of the magnetic
field, the intensity of which may be enhanced by using nickel as the host
metal, combined with a non-uniformity of the magnetic field and/or heat flow
through the metal, assure the abnormal presence of a residual negative
electron pooulation in the metal. Such charge nucleates the merger of positive
charge and enhances the fusion process.
The relevant figure of the patent is Fig. 7 reproduced below. It merely shows
the functional detail of a segment of the main tubular structure shown in Fig. 6
of the patent, which includes a metal conductor along its central axis. The flow
of a very strong current I in that conductor, which is a closed circuit and
involves small power input for very large current, sets up the circumferential
field acting on the deuterated metal mesh inside the thermally insulating sleeve
25. By virtue of the heat insulation 24 metal flanges 20 provide cooling
surfaces for heat developed within the sleeve or within the liquid electrolyte
in the inner tubular section of the structure. Heat flow through that deuterated
metal mesh is directed parallel with the central axis. The design aims to
exploit the Nernst Effect by which a transverse magnetic field and a heat flow
in metal produce, within that metal, an electrical field, in this case a
non-linear radial field which implies space charge within that deuterated metal
By setting up a negative space charge within metal
containing deuterons, those deuterons are more likely to come together in a cold
fusion reaction, this being the basis of the invention described in the
Now I shall continue my account in the same chronological
manner as I did for my primary U.S. Patent Application on this subject of 'cold
fusion'. The story I tell is based on my initial British patent filing which
developed into the parallel filing by ENECO of an International Patent
Application via the USPTO under the provisions of the Patent Cooperation Treaty,
with the result that both applications ran together in parallel. I allowed this
to occur deliberately, even though customary practice is to process only one
International Application and let that develop into national patents. I knew I
could not secure a patent in U.K. by both applications, but I was playing safe
and could back-off on one after seeing how things developed.
May 25, 1993The U.K. Patent Application was filed at the
British Patent Office. This served as a priority record. One then has one year
in which to determine the filing of onward national and foreign patent
May 3, 1994The U.K. formality was completed by which the
U.K. Patent Application was assigned its effective national application date,
namely May 3, 1994. This resulted in an Examiner's search for prior art, the
only two items cited being my own earlier cold fusion cases GB 2,251,775 and GB
May 23, 1994This was the date assigned to the patent filing
by the Receiving Office handling Patent Coperation Treaty applications under the
auspices of the administration of the World Intellectual Property Organization
in Geneva (WIPO). Since in this case the Applicant was ENECO in Utah, this
patent application was processed by the arm of the United States Patent Office
that assists in the processing of such applications. Had the application been
filed through the British Patent Office as a Receuving Office, the search
examination would have been assigned to an international body in Holland, the
IIB, and then the later substantive examination phase would have transferred to
the European Patent Office in Munich, Germany. As it was, the application was
duly committed top processing by US Patent Examiner Harvey Behrend.
it should be understood that there are certain standards to be complied with in
processing such International Applications, particularly concerning timing of
the various steps involved. The intentions of the Treaty are that a search of
relevant prior art will be conducted and a Search Report issued in due time so
that it can feature as part of the publication of the patent specification,
which should occur little more than 18 months after the initial priority filing.
That priority date in this case was May 25, 1993. You can understand then why it
was that WIPO in Geneva published the International Application, WO 94/28197, on
December 8, 1994.
November 30, 1994The U.K. Patent Application was published
as GB 2,278,491A. It had 18 claims, the above prior art only being cited with
respect to claims 1 and 6. The prospect of securing grant was good.
December 8, 1994The International Application, WO 94/28197,
as published on that date, was a 40 page specification plus three sheets of
drawings having 10 figures, carried the legend:
'Published without international search report and to be
republished upon receipt of that report.'
What this meant
was that Harvey Behrend had not provided the necessary Search Report in due
December 28, 1994However, there was a swift follow-up,
presumably owing to an official interjection from the WIPO in Geneva, because
the U.S. Commissioner of Patents and Trademarks, being responsible for the
ISA/US (International Search Authority/US) now issued that Search
Examiner Behrend, true to style, had gone to town, as it were.
There were 13 citations of prior art, but, in this case, no Washington Post or
New York Times articles. Now, there are eight separate catgories under which
prior art is cited in PCT proceedings. These range from items categorized as A,
meaning 'of general interest to the state of the art but not of particular
relevance to the invention' to X, meaning 'document of particular relevance; the
claimed invention cannot be considered novel or cannot be considered to involve
an inventive step when the document is taken alone'.
Harvey Behrend did
not categorize any of those 13 citations with that X symbol. He could not have
contended that, given the facts he confronted. My claimed invention was
certainly something new. In the event, however, Harvey Behrend applied the
category Y to 11 of the 12 of the 13 citations. Y means 'document of particular
relevance; the claimed invention cannot be considered to involve an inventive
step when the document is combined with one or more other such documents, such
combination being obvious to a person skilled in the art'.
11 of those 12 uses of the category Y, he specifically declared that it applied
to every single one of the 18 claims of record in the application.
there would be little point in ever filing a patent application on an invention
on something so simple and mundane that it is anticipated in every respect by
numerous items of prior art applied to so many separately claimed features in
the manner suggested here by Examiner Behrend. On this basis one can, in effect,
take a standard textbook on electrical power generation technology and apply it
to every patent application purporting to concern such technology. One cannot
patent what is obvious, but there are criteria in patent work which temper how
one judges what is or is not obvious. To Harvey Behrend, this PCT application
disclosed an invention that was so obvious that the legal hurdles could not be
overcome. Yet I knew I was destined to secure the grant of a British Patent on
precisely this invention, based on the identical patent specification and a
review of all that prior art, taking 'obviousness' factor into consideration. I
knew that British Patent Examiners work to the same standards as the European
Patent Office and indeed the standards expected by WIPO in the handling of
International Patent Applications. So, apart from protesting about the unity of
invention issue which the Search Report said was lacking, I decided to await the
outcome of the formal examination stage.
Behrend's objections were
following the standard pattern of his earlier comments in the other US cases
already mentioned. The fluids for removing heat could have different forms and
the invention could not be common to all. The thermal priming means could
involve 'pre-cooling' or 'direct electrical heating' and he deemed that these
had no common significance and so there was no unity of invention. All this was
manifestly unreasonable and was surely calculated to block progress and any
prospect of securing patent grant in the designated countries in which national
patents emerging from the PCT process could be procured.
November 30, 1995On this date, another year gone, I was sent
by the U.S. Commisioner of Patents, acting as IPEA/US (International Patent
Examining Authority/US), a 'Notification of Transmittal of International
Preliminary Examination Report'. This bore the name 'Harvey Behrend: Authorized
Officer'. It stated that the application lacked 'unity of invention'. It stated
that 'in response to the invitation to restrict or pay additional fees the
applicant had paid additional fees under protest. It further stated that there
was a lack of inventive step based on the disclosure in my own British patents
GB 2,251,775 and GB 2,231,195.
Now, here, I must explain that the whole
idea underlying the International Patent Cooperation Treaty is to expedite the
grant of patents on an international scale and so save the applicant and
officialdom excess duplication of work. However, the price paid for these treaty
obligations is the acceptance by those responsible for the examination activity
that they keep to time and meet deadlines. When Harvey Behrend issued that
Preliminary Examination Report some 30 months plus 5 days had lapsed from the
'Priority Date' of record. The Notification of Transmittal to which that Report
was attached said:
"The applicant must enter the national phase before each elected
Office by performing certain acts (filing translations and paying national
fees) within 30 months from the priority date."
although the U.S. Patent Office did allow this PCT application to enter the
national phase in their country, I had, thanks to the dilatory processing by the
IPEA/US, for which the U.S. Commissioner of Patents carries responsibility, been
denied the entitlement of having sufficient time in which to act in proper
manner to secure the related patents elsewhere. Note that full translations into
languages such as French, German, Japanese etc as well as transmittal by mail
cannot be accomplished in 'negative time'. The Report was not issued until the
'negative time' count had reached minus 5 days, and adding time for mailing from
U.S. to my U.K. address that made things far worse.
chance to extend the filing to several National Patent Offices was lost. It was
prudent of me to retain the British application active and separate from this
The substantive arguments presented by the Examiner in the Report
do not warrant comment. They are much the same as those used by Harvey Behrend
in the three U.S. applications already discussed. There was one concession which
he made. I had protested about the assertion of lack of unity of invention which
said that there was no common technical feature in the setting up of a
temperature gradient in a metal core by cooling or heating. This was an absurd
proposition. If you seek to get heat to flow through metal, you can either cool
one side or heat the other side; what is seen in the metal is a flow of heat and
a temperature gradient and that is what the invention is all about! So, in the
event, the Report declared that my 'protest had been found justified to the
extent that partial reimbursement in the amount of $280 will be made in due
course'. That was advice dated November 30, 1995.
In spite of three
reminders addressed to the U.S. Commissioner of Patents and Trademarks over the
period since that time I have not received any intimation of when that repayment
will be made!!!!
Take note that such is the manner in which the USPTO in
their International role as an agency administering under the Patent Cooperation
Treaty do their business. I interject at this point that years ago I visited
WIPO in Geneva many times to participate in international meetings on topics
concerning patents etc. Though this was normally as a representative of the
International Chamber of Commerce there was one occasion when, owing to a crisis
situation affecting U.S. representation, being with IBM, I was called upon at
two days notice, without a briefing, to represent the interests of NAM, the U.S.
National Association of Manufacturers, at a meeting where we discussed the
chapter-by-chapter details of a draft of the Patent Cooperation Treaty. In
retrospect, I can but say that, being aware of the good intentions on which that
Treay was founded, I am very saddened by my experience with the subject
October 27, 1995On this date the above PCT application
entered the U.S. National phase. This was the date of filing accorded to
Application Serial No. 08/256,872.
March 26, 1997The U.K. Patent Application was granted as GB
2,278,491B. All 18 claims had been allowed and the British Patent Examiner had
not disputed the technical description or the 'cold fusion' issue, though he had
become aware of the fact that an International Patent Application was in process
for the same invention and had alerted me to the consequences should a separate
U.K. patent be sought upon conclusion of the international proceedings.
October 16, 1997The first Office Action is mailed from the
USPTO on Application Serial No. 08/256,872. Harvey Behrend is the Examiner once
again. There is again the requirement to elect species. Notwithstanding his
concession on the unreasonable nature of the species election in the parent PCT
application, already examined by Harvey Behrend, he still requires election as
between species Ia, where the thermal priming involves pre-cooling and species
Ib where it involves heating. Indeed, the tactics are the same on all counts. It
is almost like a re-run of a computer program!
October 28, 1997Again I responded promptly and fully to the
Office Action. I mailed it to the USPTO on this date.
January 21, 1997On this date the USPTO mailed to me, under
the reference 08/256,872 of the above pending application, a message
NOTIFICATION OF CHANGE DUE TO PTO MOVE AND CONSOLIDATIONwhich
declared in block capital letters:
THE EXAMINER OF RECORD HAS RECENTLY MOVED AS PART OF THE PTO
CONSOLIDATION INTO TECHNOLOGY CENTERS. PLEASE USE THE FOLLOWING INFORMATION IN
FUTURE RESPONSES AND INQUIRIES TO THE PTO.
EXAMINER: BEHREND, HARVEY ---
NEW GAU: 3641
June 1, 1998On this date I received from the USPTO, under
the reference 08/256,872, an undated communication signed by examiner Harvey
Behrend. It was headed 'NOTICE OF ABANDONMENT' and stated that no response had
been received in reply to the Office Letter of October 16, 1997.
stated above I had in fact mailed such a response on October 28,
So, here again, we see the same tactics at work. Harvey Behrend had
adopted the posture that no reply had been filed.
Now, in this particular
case I had paid the British Postal Authorities to provide a Recorded Delivery
service and send to me a confirmation of delivery of my letter. That
confirmation record came back duly stamped by the USPTO and bearing the stamp
Nov 03 1997
PTO MAIL CENTERThe USPTO had received my response but Harvey
Behrend declared that it had not been received.
June 1, 1998On this day I wrote to the U.S. Commissioner of
Patents drawing the above situation to his attention, including a copy of the
response I had mailed on October 28, 1997 together with a photocopy of the
Official Advice of Delivery, bearing the USPTO date stamp, and requesting
reinstatement of the application. I sent the message by fax and mailed its
confirmation on this same day.
I now await any USPTO action in this
matter, well realizing what is implied by this development.
January 29, 1999On this day the U.S. Patent Office sent me a
DECISION ON REQUEST FOR CORRECTION.It said that my
letter received by the USPTO on June 8, 1998 would be treated as a petition to
withdraw the holding of abandonment. It went on to say:
Since a timely response to the Office letter was filed, the
holding of abandonment is withdrawn and the application is restored to pending
status. The application is being forwarded to the Examiner via the Sepervisory
Legal Instruments Examiner for prompt action on the merits of the
I will update this Web page as the situation develops.
To choose another cold fusion topic, see:
If not seen already, do not miss:
Fusion appears in a U.S. Patent
Breakthrough: U.S. Patent No. 5,734,122
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