Given the scientific communityâ€™s considerable doubt regarding the utility of â€œcold fusionâ€� processes, we hold that the examiner established a prima facie case of lack of utility and enablement. Accordingly, the burden was shifted to Dash, and we hold that substantial evidence supports the Boardâ€™s finding that Dash failed to meet that burden.After construing the term â€œproducing heat energyâ€� in the preamble of each claim to require â€œexcess energyâ€� produced by cold fusion, the court noted that "the issues of utility and enablement. . . collapse into a single issue." Although Dash argued that the evidence supporting the examinerâ€™s prima facie case were anecdotal or not peer-reviewed, and did not exactly correspond to the invention as claimed, the Federal Circuit was not persuaded:
With regard to Dash's rebuttal evidence of excess heat produced by fusion , the court stated that
We are aware of no rule that forbids the examiner from relying on related technology, anecdotal information, or sources that are not peer-reviewed to establish a case of inoperability. These details merely go to the weight of the evidence, not whether it can be relied upon at all. Thus, we understand Dashâ€™s arguments as attacks on the weight the Board accorded to the cited information.
Substantial evidence supported the Boardâ€™s finding that the examiner established a prima facie case of inoperability. While it may be ideal for the examiner to offer peer-reviewed data on precisely the claimed invention to establish such a case, such extreme certainty is not required. The examiner must only establish that a person of ordinary skill in the art would reasonably doubt the asserted utility.
It was reasonable for the Board to conclude that the examiner had established such doubt based on the number and quality of cited references that debunked claims of cold fusion.
Dash did not produce evidence sufficient to show that his invention
generated excess heat. Although Dash compared his D2O cell to an H2O cell and measured a higher temperature in the D2O cell, references cited by the examiner show that temperature differences between the two cells would be expected even without the production of excess heat because the differing properties of H2O and D2O, such as their different heats of absorption. Dashâ€™s other evidence, such as his claim of localized melting on the palladium electrode, at most establishes that some localized heating took place, not that the invention produced a net output of heat. Several studies cited by the examiner suggest that localized melting could have been the product of an electrochemical process that would not represent a net output of heat.
Dashâ€™s evidence that his invention achieved cold fusion likewise does not convince us that he rebutted the examinerâ€™s prima facie case of inoperability. Dash produced evidence regarding detection of tritium, transmutation of palladium, and physical transformation of the cathode, as well as corroborating experiments and calculations designed to show excess heat. For each type of evidence Dash produced, the examiner found at least one sound reason to disbelieve the evidence in either the literature that supported the prima facie case or in Dashâ€™s evidence itself. The Board affirmed the examinerâ€™s findings. The evidence cited by the examiner constitutes substantial evidence in support of the Boardâ€™s decision. Accordingly, we hold that the Board acted reasonably in concluding that Dash did not make a showing sufficient to rebut the prima facie case of inoperability established by the examiner.