Appeal No. 1999-0928
Application No. 08/334,952
Swartz, 232 F.3d at 864, 56 USPQ2d at 1704. “If the PTO provides
evidence showing that one of ordinary skill in the art would
reasonably doubt the asserted utility, however, the burden shifts
to the applicant to submit evidence sufficient to convince such a
person of the inventions’s asserted utility.” Swartz, 232 F.3d
864, 56 USPQ2d at 1704, underlining added. Appellants do not, on
this record, assert a utility involving “cold fusion” (Brief,
page 10). The examiner makes the assertion that appellants’
invention involves “cold fusion” (Answer, pages 5-11). The
claims, as represented by claim 1 above, are directed to a method
for electrolyzing water to produce oxygen, hydrogen and heat.
The specification is only directed to this utility, i.e., the
electrolysis of water to produce oxygen, hydrogen and heat (see
the specification, page 1, ll. 8-11; and page 2, ll. 32-35). The
examiner has not presented any evidence or reasoning to show that
the asserted utility of electrolyzing water to produce oxygen,
hydrogen and heat is inoperative or not obtainable. In fact, the
examiner has applied prior art (Horvath) that shows the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007