Thanks to Omega Z for providing a link to the full patent amendment recently filed on behalf of Andrea Rossi in which an extended time period is requested for consideration of the application pending the upcoming third party tests.
Readers here might recall that Sean Burke, patent examiner at the US Patent and Trademark Office, in March of this year issued a “non-final rejection” of Andrea Rossi’s patent for the following stated reasons:
“The specification is objected to as inoperable. Specifically 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…”
“There is presently no peer-reviewed evidence to demonstrate the spontaneous fusion of nickel and protons…”
“Additionally the Examiner notes that if the reaction occurred as claimed by the Applicant, it would also spontaneously occur in nature.. not be patentable subject matter,,.”
“…the specification and all claims are found to be inoperable.”
The amendment document shows a response from Rossi’s team. Typographical and grammatical errors found in the first patent are corrected, and claim number 8 in the original application — “A method according to claim 1, characterized in that in said method catalyze materials are used” — is cancelled.
In the remarks, the examiner is thanked for granting a personal interview to Andrea Rossi and his patent attorney on April 22 where the invention was discussed as well as the non-final rejection decision. In this interview the examiner “indicated that a submission which provided evidence of the operability of the process would be considered.”
In response to the reasons for rejection of the claim provided by Mr. Burke as quoted above, the document states:
“Furthermore, the objection to the specification as being inoperable has not been based on any cited reference. It is essentially a recitation of opinion that is not supported by any authority and does not address the subject matter of the claims of the present application. When inoperability is raised by the PTO, the legal basis for refusing the application is actually the lack of a practical utility for the claimed subject matter. The burden is upon the Office to provide evidence that one of ordinary skill in the art would reasonably doubt the asserted utility.”
In other words, Rossi is contending here that rejection of a patent on the grounds inoperability cannot be based on uninformed opinion of the examiner — it must be because a device does not work, and the Patent Office must have some evidence of that. If the upcoming test results demonstrate that the E-Cat does indeed work reliably, it may cause the examiner to reconsider this application.