Daniel Rudolph Krugel - [2022] APO 41

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Daniel Rudolph Krugel [2022] APO 41
Patent Application: 2016238389

Title:A method and device for detecting a material

Patent Applicant: Daniel Rudolph Krugel

Delegate:Xavier Gisz

Decision Date: 21 June 2022

Hearing Date: Written submissions filed on 17 March 2022 and video evidence received on 18 March 2022

Catchwords: PATENTS – examiner objection – device for detecting a material – the invention is not clearly enough and completely enough described and thus does not comply with section 40(2)(a) – the claims are not supported by the description and thus do not comply with section 40(3) – application refused

Representation: Churchill Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2016238389

Title:A method and device for detecting a material

Patent Applicant: Daniel Rudolph Krugel
Date of Decision: 21 June 2022

DECISION
The invention is not clearly enough and completely enough described and thus does not comply with s 40(2)(a). The claims are not supported by the matter disclosed in the specification and thus do not comply with s 40(3).
I do not consider that the above findings could be overcome by an allowable amendment.
I refuse the application.

REASONS FOR DECISION
Background

Patent application 2016238389 is the national phase entry of PCT application PCT/IB2016/051704 (publication number WO2016/151538) and claims priority from ZA 2015/02058 with a priority date of 25 March 2015.
Examination was requested on 7 January 2020. A first examination report (containing a sufficiency [s 40(2)(a)] objection) was issued on 12 November 2020. A response was received on 20 April 2021 accompanied by amendments.
A second examination report (containing a utility [s 18(1)(c)] objection) was issued on 27 April 2021. A response was received on 30 June 2021 accompanied by a declaration by Daniel Krugel, the equivalent US patent (US 10,459,115), and a paper titled “Sustained Quantum Coherence and Entanglement in the Avian Compass”.
A third examination report (containing a sufficiency [s 40(2)(a)] objection and a support [s 40(3)] objection) was issued on 28 July 2021. A response was received on 6 October 2021.
A fourth examination report (containing a sufficiency [s 40(2)(a)] objection and a support [s 40(3)] objection) was issued on 1 November 2021. A request to be heard on the matter was received on 11 November 2021.
On 1 February 2022 a Delegate informed the Applicant that the hearing would be by way of written submissions, and those submissions were due by 1 March 2022. On 3 February 2022 the Applicant requested to attend the Patent Office to demonstrate the invention. On 4 February 2022 a Delegate informed the Applicant that the demonstration was unnecessary and could instead provide video footage of the invention. On 16 February 2022 the Applicant advised that they would be providing video evidence and requested more time to file that evidence and their submissions. On 17 February 2022 the Delegate allowed the Applicant until 1 April 2022 to provide their evidence and submissions.
On 17 March 2022 the Applicant provided their written evidence and submissions. A video demonstration of the invention was received on the 18 March 2022.
The invention
The invention is broadly described in page 1 of the description as follows:
“THIS INVENTION relates to a method and a device for detecting a target material at a distance.”
The field of matter detection consists of a variety of technologies to detect and locate matter. For example inductive coils and magnetometers are used in metal detectors to locate metal objects of varying size. In geophysical surveys ultrasound is used to determine the density of ground and hence infer what constitutes it. In medical applications, high magnetic fields, radio waves and field gradients are used to map the spatial distribution of water in tissue and hence map the body's structure.
At present there exists no technology to simply detect and identify specific types of matter (e.g. precious materials, dangerous weaponry, disease) while some detection methods do not work well at a distance (e.g. metal detectors).
This patent seeks to exploit the underlying forces and/or energies between similar matter using relationships between matter's own in-built energy (e.g. chemical, thermal, kinetic, potential, quantum mechanical) and fields (e.g. light, electric, electromagnetic, magnetic) over a variety of distances.
The inventor through a number of experiments, which will be elaborated herein in detail, claims to be capable of showing that like matter communicates and/or attracts other like matter.”
The preferred embodiment of the invention is a needle that points in the direction of a target material when a sample material (which is the same type of material as the target material) is placed in the device.
The invention is predicated on the theory stated at page 1 lines 33 and 34:
“…[L]ike matter communicates and/or attracts other like matter”
One embodiment of the invention is shown in Figure 7:
The corresponding description states at page 18 lines 29 to 33:
“In figures 7 and 8, the primary energy source is a laser light emitter 72 subjecting light energy 74 (photons) onto the target material 70 (i.e. a diamond) in a direction towards a collector member in the form of a metal cone 66 [Figure 7] or metal plate 76 [Figure 8, not reproduced as this is the only difference]. A connector member 68 connects the collector member 66, 76 to the detector 10.”
The invention includes an indicating means that is described at page 15 lines 21 to 30:
“A shaft 20, possibly make [sic] of carbon fibre material, extends between free ends of the plates 14, 16. The shaft 20 is mounted for free rotation in mounting members 24 and 26 attached to the top and bottom plates 14, 16 respectively.
The detector further includes a means 28 for indicating the direction to a target material to be detected. The indicating means 28 may incorporate at least an information output component, for outputting information relating to the target material, and at least one moving component on which a force or energy of the target material operatively acts.”
Another embodiment is shown in Figure 10:
The corresponding description states at page 19 lines 1 to 6:
“Figure 10 illustrates another embodiment where no collector or conductor members are utilised. In this embodiment, the primary energy source is a laser light emitter 72 subjecting light energy 74 (photons) onto the target material 70 (i.e. a diamond or a magnet retaining some properties or signature or quantum characteristic of the diamond) in a direction towards the needle 28.”
[There is no item 70 in Figure 10; presumably this paragraph meant to refer to item 80.]
Another embodiment is shown in Figure 4:
The corresponding description states at page 18 lines 1 to 5:
“In figure 4, the primary energy source is heat from a receptacle 58 holding a volume of heated liquid 59, i.e. water, over which the needle 28 is located. It will be appreciated that the heated water in this embodiment may act as both the primary energy source and the primary sample material.”
Another embodiment is shown in Figure 5:
The corresponding description states at page 18 lines 7 to 9:
“Alternatively, and as illustrated in figure 5, a collector member 62 may be submersed in the heated liquid 59 and connected to the detector 10 via a conductor member 64.”
Another embodiment is shown in Figure 3:
The corresponding description states at page 17 lines 24 to 33:
“In figure 3, the primary energy source is an electrified metal plate 52, supplied with electrical current from a battery 54 and conductors 56, and on which a primary sample material is locatable. Alternatively, the primary energy source 38 may be the incandescent light bulb 55 (or other light/heat emitter), connected directly to the battery 54 by the conductors 56 without the electrical plate 52, above or near which the primary sample material is locatable. In this embodiment, it would be preferable to locate the needle 28 above the incandescent light bulb 55 such that the primary sample material is near, and more preferable, lies between the incandescent light 55 and the needle 28.”
Another embodiment is shown in Figure 11:
The corresponding description states at page 19 lines 8 to 20 (with my emphasis in underline):
“Figure 11 illustrates an embodiment of the detector 10 including, on the needle 28 thereof, a purpose-built spoon-like formation 84 into which a sample material 86 (typically a secondary sample material, which will be elaborated on later in the description) is supported or mounted. It will be appreciated that instead of having a purpose-built spoon-like formation 84, the sample material 86 may simply be supported or mounted directly on the needle 28 of the type depicted in any of the figures 1 to 10.
The detector 10 further includes a means for sensitising it, and/or more particularly, the indicating means 28 thereof (being the needle 28 in the illustrated embodiments), thereby to detect the force or energy acting on it by the excited target material, based on the maxim that similar matter communicates, more specially attracts and/or repels, other similar mater.”
The description states at page 16 lines 24 to 31 (with my emphasis in underline):
“With reference now to figure 2, the detector 10 is mounted in a support structure, shown schematically by the dotted lined box 36 and includes a primary energy source 38, being some or other energy source emitter, for subjecting a primary sample material to energy thereby to excite the primary sample material and consequently, and to the best of the inventors knowledge and observations, excite similar target material in an excitation zone, which may span thousands of kilometres from the primary energy source 38, thereby to identify the target material to be detected.”
Claimed invention includes within its scope magnetized objects
The claimed invention appears to include within its scope the well known effects of: a) magnetizing an object and b) the magnetic attraction between a magnet and the magnetized object. The description states at page 17 lines 10 to 17:
“The primary sample material may even be an electromagnet or permanent magnet that at least temporarily retains within it, or within its electromagnetic or magnetic field, some of the properties or a signature or quantum characteristic of the target material, through a process that will be described later in the specification. The use of electromagnet or permanent magnet to effectively "clone" the target material enables the detector 10 to operate in the field without having to carry around expensive, dangerous or contagious sample.”
The description further states at page 27 lines 24 to 34:
“Another example is an alternative process for the "cloning" of electromagnets or permanent magnets, whereby a fresh electromagnet or permanent magnet is brought into the electromagnetic or magnetic field of the already "cloned" magnet there by to "clone" the fresh magnet (electro or permanent).
The inventor concedes that he may not fully understand the scientific principles that enable the technology described herein to work, but is confident that matter communicates (energies, frequencies, vibrations) with other similar matter on a premise similar but not necessarily the same as how magnetic objects attract and/or repel one another.”
The process of "cloning" appears to have some overlap with the process of magnetizing an object. This process is of course limited to objects that contain ferromagnetic metals (iron, cobalt or nickel) and can thus be magnetized.
Common features of the embodiments of the invention
The features common to all embodiments of the invention are:
·A sample that has been ‘excited’ by an energy source (e.g. laser, heat, or electricity)
·A way of ‘sensitising’ the device to the excited sample (that is, associating the excited sample to the device)
·An indication means (e.g. a needle) on the device which points towards a target which is the same (or ‘related’) material as the sample
The claims
The Applicant proposed amendments on 20 April 2021. The amended claims comprises two independent claims and 18 dependent claims. The independent claims are reproduced below:
1. A device for detecting a target material including:
a means for indicating the direction to the target material having a moving component;
a primary energy source configured to generate an excitation zone extending about a primary sample material and the target material so as to excite the primary sample material and the target material, wherein the primary sample material:
(i) is similar to the target material;
(ii) is related with the target material; and/or
(iii) at least temporarily retains within it, or an electromagnetic or magnetic field thereof, some of the properties of the target material; and
a means for sensitising the device and/or the indicating means thereof thereby to detect a force or energy acting between the operatively sensitised device and/or the indicating means thereof and the excited target material;
wherein the sensitising means is:
(i) direct sensitising means is the physical mounting of a secondary sample material on the moving component of the indicating means; and
(ii) indirect sensitising means is a secondary energy source for subjecting a secondary sample material to energy within a detection zone which:
a. extends from the moving component of the indicating means outwardly; or
b. is spaced from the indicating means and lies between the secondary energy source and a collector member, the collector member being connected by a connector member to the device or the moving component of the indicating means thereof.
and the secondary sample material:
(i) is the primary sample;
(ii) is similar to the target material;
(iii) is related with the target material; and/or
(iv) at least temporarily retains within it, or an electromagnetic or magnetic field thereof, some of the properties of the target material.
such that in use, and under the influence of such force or energy of the excited target material acting on the sensitised device and/or the indicating means thereof, the moving component of the indicating means points in the direction of such detected target material,
10. A method for detecting a target material including the steps of:
(A) providing a primary energy source configured to generate an excitation zone extending about a primary sample material and the target material so as so as to excite the primary sample material and the target material, wherein the primary sample material:
(i) is similar to the target material;
(ii) is related with the target material; and/or
(iii) at least temporarily retains within it, or an electromagnetic or magnetic field thereof, some of the properties of the target material;
(B) sensitising a device and/or an indicating means having a moving component thereof thereby to detect a force or energy acting between the operatively sensitised device and/or the indicating means thereof and the excited target material; and
(C) allowing the moving component of the indicating means, under the influence of such force or energy, to move and point in the direction of such detected target material, wherein the sensitisation of the device or the indicating means is attained directly and/or indirectly, and further wherein:
(i) direct sensitisation is attained by physical mounting a secondary sample material on a moving component of the indicating means; and
(ii) indirect sensitisation is attained by subjecting a secondary sample material to the energy of a secondary energy source within a detection zone which:
a. extends from the moving component of the indicating means outwardly;
or
b. is spaced from the moving component of the indicating means and lies between the secondary energy source and a collector member, the collector member being connected by a connector member to the device or the moving component of the indicating means thereof.
wherein the secondary sample material:
(i) is the primary sample;
(ii) is similar to the target material;
(iii) is related with the target material; and/or
(iv) at least temporarily retains within it, or an electromagnetic or magnetic field thereof, some of the properties of the target material.
Construing the terms
Primary energy source
The embodiments of the invention include a wide variety of primary energy sources which include: heat, light (laser light), electricity. Because the primary energy source includes things that include ‘ambient’ properties such as heat which all objects have, I have construed the term purposively such that it only includes when the sample is provided with significantly more of the energy source than the target. So for example, if the sample and target are water and the energy source is heat, then the sample water must be heated to a significantly higher temperature than the target.
Sample and target materials
The primary sample material is defined as being one of: similar, related, or retains properties of the target material. The description explains these terms (similar, related, or retains properties of the target material) at page 17 lines 4 to 17:
“The primary sample material may be similar to the target material – for example a diamond where the target material to be detected is a diamond. Alternatively, the primary sample material may be related with the target material - for example a strand of hair where the target material is the human being from whom the hair originated.
The primary sample material may even be an electromagnet or permanent magnet that at least temporarily retains within it, or within its electromagnetic or magnetic field, some of the properties or a signature or quantum characteristic of the target material, through a process that will be described later in the specification. The use of electromagnet or permanent magnet to effectively "clone" the target material enables the detector to operate in the field without having to carry around expensive, dangerous or contagious sample.”
The ‘material’ defined in the claims include all types of materials ranging from minerals (diamond) to biological material (hair).
It is not possible to specify how ‘similar’ or ‘related’ a sample and target material would need to be (or the extent of the ‘retain[ed] properties’) to fall within the scope of the claims. I consider that it is unnecessary to decide whether this is so unclear that the claims would be invalid due to a lack of clarity; the issue is overshadowed by the other grounds of invalidity discussed below. For the purposes of this decision it suffices to proceed on the understanding that the target and sample materials are essentially the same. There may be some additional uncertainties in the claim language (e.g., how can energy per se as an alternative to force “influence” or “act” such that “the moving component of the indicating means points in the direction of such detected target material”), however I consider that discussing those is also unnecessary for the same reasons.
Sensitising a device
The claims include the feature of ‘sensitising’ the device. This term is being used to capture all the different ways (shown in the various embodiments) the sample is ‘associated’ with the device such that it can detect the target material. The specification shows that the sensitising can be done directly wherein the sample material is placed on the indicating means (for example, as shown in Figure 11), or indirectly via collector member (for example shown in Figures 5 and 11), or indirectly wherein the sample is within the ‘detection zone’ of the indicating member (for example, as shown in Figures 4 and 10).
The Examiner Objection
The objection in the examiner’s fourth report states:
“I have considered the applicant’s argument regarding s40(2)(a) and s40(3) and found it unpersuasive. The applicant argues that the person skilled in the art would, from the provided examples and a principle of general applicability, be able to perform the invention across its full scope. I do not agree with this argument, for the reasons discussed below.
Relevance of unknown mechanisms of operation to s40
The applicant argues that objections under s40(2)(a) and s40(3) do not arise due to the absence of any theory or mechanism to explain the operation of the present invention. When determining what would constitute an undue burden on the person skilled in the art, it is important to determine what knowledge they can be expected to have about the disclosed invention (that is, the common general knowledge in the art). In the case of inventions that do not have a known mechanism to explain their function or function due to some mechanism that appears to contradict the established state of the art (such as is the case in this application), the common general knowledge in the art can reasonably be taken to be extremely limited.
In these cases, it is necessary for the description to provide a greater degree of direction to allow the person skilled in the art to fully perform the invention.
The application does not provide clear enough and complete enough disclosure
The applicant further argues that the description provides a number of examples that provide the person skilled in the art a starting point, from which they can vary the invention to perform it across its full scope without undue burden. The applicant argues that, from these starting points, the person skilled in the art could vary parameters such as dimensions, distances, power and wavelengths and so perform the invention across its full scope. I disagree both that person skilled in the art would be able to vary the disclosed embodiments to perform the invention across its full scope and that the provided embodiments provide a suitable “starting point”.
Disclosure does not allow the person skilled in the art to vary all parameters
The applicant discusses how the person skilled in the art, starting from the embodiments given, could vary parameters and determine any positive or negative effect by simple observation of the functionality of the device. I disagree that this would allow the person skilled in the art to perform the invention across its full scope. For example, the person skilled in the art would have no way of knowing how to perform the invention for materials other than those discussed in the description. The methods of varying parameters the applicant discusses in their response could not be applied to this type of parameter and, given the lack of common general knowledge discussed above, the person skilled in the art would have no method of finding a configuration of the invention that works other than performing an undue amount of trial and error.
While the applicant has discussed the principle of general application, for this to apply the description must provide sufficient information for the person skilled in the art to perform alternative applications of the principle in a way that, while not explicitly disclosed, would nevertheless be obvious to the person skilled in the art. As the person skilled in the art would not understand how the invention works, these alternative applications of the principle cannot be obvious.
Simulations 2, 4 and 5 do not provide sufficient disclosure
Additionally, I disagree that the provided embodiments provide a sufficient starting point. Many of the embodiments do not define key details that would allow the person skilled in the art to perform them. For example, simulation 2 describes electrifying a metal plate but does not define key parameters such as the metal the plate is made from, the voltage and amperage of the current, or whether the current should be DC or AC (and if it is AC, details such as the frequency and phase of the current). Likewise, simulation 4 describes the use of a laser and simulation 5 describes the use of a radio wave emitter, but neither simulation provides information on key parameters , such as wavelength, intensity or polarisation.
Without knowledge of the mechanism of operation of the disclosed invention works, the person skilled in the art would require an undue amount of trial and error to find the parameters necessary to make the invention work.
Simulations 1 and 3 do not provide sufficient disclosure
Even in the case of embodiments where these parameters are given (such as in simulation 1, where a (well-known) torch is used and simulation 3, where hot water is used), key information that the person skilled in the art would require to perform the embodiment is missing. For example, the construction of the needle (part 28) is not described and therefore the person skilled in the art would require an undue amount of trial and error to determine the correct material (for example) with which to construct the needle.
If a robust prior art base existed, it could reasonable be assumed that the person skilled in the art would, as a matter of course, know how to construct the needle. However, in the absence of that prior art base, the person skilled in the art cannot be assumed to have this knowledge.
Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477
In the response the applicant's request that the examiner consider the recent case of Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477, I make the following observations:
1)   This decision is related to pharmaceutical and biotechnical inventions. The specifications of the patent applications that were considered describe in great detail how the working embodiments were developed and proven to work using techniques that are entirely standard and well-known and accepted by the person skilled in that art.
2)   This decision finds that the claims are not supported because the specification in question did not provide sufficient disclosure to enable the claimed invention across the full scope of the claims. ([548-557])
3)   While the claims considered in that decision did contain material that could potentially be supported (see para [556-557]), these embodiments were described and demonstrated to achieve the claimed benefit in the specification. As noted above, this was done using well-known, standard techniques of experimentation and proof that they do provide the claimed benefit of treating or protecting a human susceptible to pneumococcal infection.
In contrast, and as I have explained above, the present specification does not use techniques that I consider well-known and standard to the person skilled in the art or provide the expected amount of detail necessary.
In summary, the key reasons for this objection are the:
1)   absence of a robust prior art base and lack of understanding by the person skilled in the art of how the alleged invention works as the applicant mentioned in the response.
2)   limited information given for the parameters, materials and arrangement used in each embodiment.
These two factors, in combination, prevent the person skilled in the art from being able to perform the invention across its full scope without undue burden.
Therefore, I consider that complete specification does not provide a clear enough and complete enough disclosure of the invention, under s40(2)(a), and that the invention defined by claims 1-20 lacks support under subsection 40(3).”
Applicable Law

The present application was filed on 25 March 2016 so substantive amendments to the Patents Act1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012, effective 15 April 2013, apply in the present case.
Thus the standard of proof that applies to the examination of the present application is the balance of probabilities (Section 49 of the Patents Act). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied then I can refuse the application.
Section 40(3)
Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 (Merck), Burley J explored the requirement of support at [546]-[547]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed”.
In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR) that was referred to with approval in Merck, the delegate Dr Barker formulated the following test in order to determine whether a claim is supported by the description.
•Construe the claims to determine the scope of the invention as claimed,
•Construe the description to determine the technical contribution to the art, and
•Decide whether the claims are supported by the technical contribution to the art.
Section 40(2)(a)
The requirement for clear enough and complete enough disclosure was introduced into the Act as part of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“RTB”) reforms. Specifically, s40(2)(a) reads as follows:
“(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;…”
As indicated in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 (“Encompass”) at [167] the requirements of s 40(2)(a) equates to enablement of the invention; I note that this was undisturbed in the appeal to this decision in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161. As explained in the Explanatory Memorandum to the RTB legislation at item 8, enablement amounts to a requirement that “…sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention”.
The nature of s 40(2)(a) was considered in some detail by a Delegate of the Commissioner in CSR, including an extensive consideration of a number of UK and EPO decisions relevant to an understanding of this part of the Act. After this consideration the Delegate provided a test for s40(2)(a) at [95]:
“In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:
i) construe the claims to determine the scope of invention as claimed,
ii) construe the description to determine what it discloses to the person skilled in the art, and
iii) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.”
In Evolva SA [2017] APO 57 (“Evolva”) at [45], a Deputy Commissioner provided some further analysis and consideration of UK and EPO decisions relevant to the question of s40(2)(a). After having done so, the Deputy Commissioner expanded on the third point from the test in CSR as follows (at [45]):
“Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims, and in particular:
(a) Is it plausible that the invention can be worked across the full scope of the claim?
(b) Can the invention be performed across the full scope of the claim without undue burden?”
Burley J referred to the approach in Evolva with apparent approval in Cytec Industries Inc. v Nalco Company [2021] FCA 970. Evolva can be seen as adding a plausibility requirement as a kind of threshold test in assessing s40(2)(a), that is there can hardly be said that there is an enabling disclosure where it is implausible that the invention can be worked across the full scope of the claim.
Evidence
The evidence comprises:
·A declaration of Daniel Krugel dated 25 June 2021
·A paper titled “Sustained Quantum Coherence and Entanglement in the Avian Compass”.
·A copy of the corresponding US patent US 10,459,115
·A letter of appreciation from the South African Police Service dated 13 July 2021
·A letter of appreciation from the South African Police Service dated 22 June 2020
·A letter of appreciation from the South African Police Service dated 27 August 2020
·A second letter of appreciation from the South African Police Service dated 27 August 2020
·A video demonstration of the invention by Daniel Krugel filed on 18 March 2022
Submissions
The submissions can be summarised in the following two points:
·a scientific explanation of why the invention works is not necessary; and
·basic trial and error by way of routine experiments allow the invention to be practiced across the full scope of the claims
The evidence is discussed below. However, it should be noted that sufficiency of disclosure must be satisfied at the filing date, on the basis of information in the patent application together with the common general knowledge. Post-filing evidence may be used to refute a contention (in this case the examiner’s) that the invention does not work, but it cannot substitute sufficient disclosure.
The Krugel declaration
Mr Krugel states at paragraph 5 of his declaration:
“In the following paragraphs I will detail instances where my invention has been shown to work. I mention that these instances were not isolated and are representative of the real utility of the invention.”
Mr Krugel explains at paragraphs 5 and 6 that his device was used in diamond mines to detect stolen diamonds and also to “identify new foci of diamond deposits”.
At paragraph 8 Mr Krugel explains that he used his device to locate a canister of oil hidden deep inside a mine.
At paragraphs 9 and 10 Mr Krugel explains that he has demonstrated the invention ‘live’ in front of national television audiences.
Mr Krugel states at paragraph 11:
I am uncertain as to how my invention operates. I have considered more closely the possibility of quantum entanglement as an underlying mechanism as suggested by the Australian Examiner, and agree that might a good candidate. Importantly, the device works in my hands and also in the hands of others without knowing the physical basis of operation. All that is required is for the user to watch for movement of the needle.
In the first sentence of paragraph 11 the inventor claims he does not understand (the underlying theory) how the invention operates. The second sentences of paragraph 11 provide speculation that the device might work through “quantum entanglement”. The third and fourth sentence of paragraph 11 tacitly addresses the possibility that the person holding the device provides some influence on the direction of the indicator, but states the device works even “in the hands of others without knowing the physical basis of operation”.
Mr Krugel states at paragraph 12:
I do not assert that my device works each and every time. Sometimes movement of the needle is very obvious and sometimes it is more subtle. On some occasions a target object could be located only with a triangulation method whereby the direction of the needle is noted from two or more different locations, and the location deduced geometrically. However, taking a broad view there is no question in my mind that my device is useful in locating objects that are concealed or lost.
Paragraph 12 appears to be an admission that the device does not work “each and every time”. There is no further explanation of this point. If the invention works 99.9% of the time, then this is very different than if it works only 50% of the time. There is a lack of evidence as to how to identify if the invention is likely to work or not, and how to adapt in circumstances of failure.
The letters of appreciation
The four letters of appreciation from the South African Police Service thanking Mr Krugel for his help with their investigations provide no information on how the present invention works. Presumably the inference the Applicant wants to be drawn from these letters of appreciation is that the invention works, although even this inference is not made explicit in the submission. It is unclear to what extent the invention was used by Mr Krugel in the information he provided to the police, and to what extent Mr Krugel relied on other information. I can therefore give these letters no weight in my determination.
The video demonstration
In the video the inventor, Daniel Krugel, demonstrates the use of three embodiments of the device with various materials (each embodiment falls within the scope of claim 1).
The first embodiment of the device is a D-link with a piece of thin string held taut between the two ends of the D-link. A piece of balsa wood is rotatably supported by the string. The inventor shows that when he holds the device above a (sample) cup of room-temperature tap water and moves another (target) cup of water around the device, the balsa wood is relatively still. The inventor then holds the device above a (sample) cup of hot water and moves another (target) cup of water around the device; the long end of the balsa wood moves towards the (target) cup of water.
A screenshot from the video of the first embodiment of the invention is shown:
The second embodiment is a hand-held device. The upper portion of the device has a rod that is rotatably mounted to the upper portion of the device at one end of the rod allowing the other end of the rod to rotate freely. The middle portion of the device is a hand-grip. The lower portion contains a port into which a wire can be attached. The inventor first attaches a plastic spoon to the free end of the rod. The inventor holds the device in one hand, and with the other hand places a room-temperature coin (1 rand coin) in the spoon and moves another coin (1 rand coin) around the device, the rod is relatively still. The inventor then takes the coin out of the spoon and (holding the coin with tweezers) heats the coin with a flame, and then places the hot coin back into the spoon and moves another coin around the device; the rod (with spoon and heated coin) rotate such that it follows the moving coin.
A screenshot from the video of the second embodiment of the invention is shown:
In a first modification of the second embodiment of the device, the inventor unclips the spoon from the end of the rod and replaces with a rectangular plate. There is an auxiliary device comprising a base with a laser and a detector, and a space between the laser and detector for a sample (in this case a R100 note). A wire extends from the detector at one end, to the lower portion of the hand-held device at the other end. The inventor demonstrates that when the laser is turned off, and moves around a R100 note around the detector, the rod is relatively still. The inventor then shows that when the laser is turned on and shines on the sample R100 note, and then moves a target R100 note around the detector, the rod follows the target R100 note.
In a second modification of the second embodiment of the device, the inventor removes the auxiliary device. The inventor places a (sample) R100 note on a table and holds the device such that the rectangular plate (at the end of rod) is directly above it. The inventor demonstrates that when he moves a (target) R100 note around the device, the rod is relatively still. Then he places a bright LED light underneath the (sample) R100 on the table. The inventor demonstrates that now when he moves a (target) R100 note around the device, the rod follows the target R100 note.
The third embodiment of the device is a hand-held device similar to the second embodiment. The end of the rod has a clamping device that allows a sample to be held. This embodiment is different to the other two embodiments which required an external activation energy source. In this embodiment, the auxiliary device runs the “activation energy” into the sample that is held at the end of the rod. The inventor demonstrates the device by clamping a (sample) R100 note to the end of the rod. When the auxiliary device is off mode, the inventor demonstrates that when he moves a (target) R100 note around the device, the rod is relatively still. When the auxiliary device is turned on, the inventor demonstrates that when he moves a (target) R100 note around the device, the rod follows the (target) R100 note.
A screenshot from the video of the third embodiment of the invention is shown:
Clear enough and complete enough disclosure - s 40(2)(a)
Principle of general application
The Applicant concedes that the underlying scientific principle of the invention is not understood. Nonetheless, the description contains statements and processes that appear to contradict the established scientific principles, e.g., ‘the maxim that similar matter communicates, more specially attracts and/or repels, other similar mater’. However, the Applicant argues that a heuristic understanding of the invention is sufficient to enable the invention over the full scope of the claims.
The Applicant explains this heuristic understanding at paragraphs 26 and 27 of the submissions:
“The present situation may be considered analogous to the following. In chemistry, a general principle of application was discovered in that a metal ion could be identified by the colour of the light emitted when the ionic compound is placed in a flame. For example, lithium produces a red light, potassium produces a pink light and barium a green light. The physics behind the phenomenon was not understood at the time of the discovery, but it was later found that the colours are due to the input energy causing electrons to move to higher orbitals, with different wavelengths of light energy being emitted by electrons falling from the higher orbitals back to their ground state lower orbitals. Because each metal ion has a different ground state electron configuration, each ion species emits a characteristic colour. A person seeking to practically identify a metal ion must know the basic practical principle by which the test is conducted (i.e. input heat energy and discern the emitted colour) but does not need to know the quantum physics forming the basis of the test in order for the discovery to be enabled across its full scope.
Given the basic principle of application (and without any understanding of the underlying quantum mechanics), the skilled person would conceive that heat energy may be input into a metal ion by methods other than a flame. For example, it would be immediately apparent that a very strong radiant source of heat or the heat formed by an electrical arc may be operable. In any event, it would be a simple matter to try any method of heating a test ionic compound and observing the colour emitted.”
I agree that a complete scientific principle underlying the invention is not necessary in all cases to have a principle of general application. However, without a known scientific principle and when the operation is supposedly governed by principles contradicting the established state of science, the operating parameters must be well documented. In this case, although there are many embodiments disclosed in the specification, there are several parameters which are not explained and an apparent lack of consistent efficacy that demonstrate the lack of a principle of general application underpinning the scope of the claimed invention.
Is it plausible that the invention can be worked across the full scope of the claims?
The idea at the heart of the invention – that similar (ordinary) objects are attracted to each other (even from thousands of kilometres away) – is simply not plausible. The suggestion that quantum entanglement via a ‘spooky action at a distance’ (as Einstein called it), which I accept is not referenced in the specification, could somehow lend legitimacy to the idea is a mistake. This suggestion is akin to that discussed in Huping Hu [2014] APO 17 where the delegate considered the possibility of quantum entanglement giving rise to a phenomenon that was contrary to conventional scientific understanding. Similarly in this case, even ignoring the extraordinary difficulty in quantum entangling two objects (and then maintaining the quantum entangled state), it is well understood that no information or energy can ever be communicated with quantum entanglement in the manner that would be required to facilitate the working of the claimed invention. Although a device which outwardly resembles the invention but relies on the ideomotor effect can indeed be made, such a device does not fall within the scope of the claims where it has only the structural but not the functional properties claimed.
Thus, the disclosure fails at the first (or threshold step) articulated in Evolva.
Can the invention be performed across the full scope of the claim without undue burden?
Even though the disclosure has already failed the plausibility threshold step, for completeness I note that the disclosure also fails the second step of the Evolva test.
The Applicant argues that any information missing from the specification can simply be determined from routine experimentation. The specification, though lengthy, is still vague on many details. By providing no details about when the device works and when it does not, how to distinguish between these two circumstances, and how to deal with instances of failure, the person attempting to reproduce it would be left with significant difficulties and uncertainty. I consider this to be an undue burden.
The combination of: (i) the invention supposedly working on principles that contradict the established scientific knowledge, (ii) the absence of information about operating parameters, and (iii) the admission that the invention does not work each and every time, leaves the person skilled in the art with insurmountable difficulties in performing the invention over the full scope of the claims.
Analysis of video demonstration
The video demonstration shows that the device is hand-held. This is a feature not apparent from the description. The description mentions at page 14 line 9 the device has a ‘hand held support’, but it is not clear if this is simply to aid moving the device, or that the device is held by hand during use.
The video shows how the device, when held by the inventor, apparently operates over short distances. There is no evidence of efficacy in a blind test or when the device is not handheld or over the “thousands of kilometres” envisaged by the specification.

Furthermore, I note that slightly tilting the device will cause the rod to swing in the direction it is tilted. To put another way, the apparent necessity of a person holding the device perfectly level is inexplicable. There is no explanation as to why the device could not be used by simply placing the device on a level and immovable surface. If a person must hold the device, and that the person appears to be part of the ‘phenomenon’ (and tilting the device (unconsciously or deliberately) to cause the movement of the indicator and thus acting as an ideomotor), this is a significant part of the invention which has not been explained in the specification as filed. In any case, my decision is based on the specification as described, and the demonstration does not illustrate that a skilled person could, on the basis of the disclosure in the specification, work the invention across its full scope.
Conclusion - s 40(2)(a)
I am not satisfied that there is a principle of general application which allows the invention to be reproduced across the full scope of the claims. I further consider that there would be undue burden on a person skilled in the art attempting to recreate the invention.
An embodiment of the invention which falls within the scope of the claims (the magnetized pieces of iron discussed earlier in the decision) is so well known that even the brief disclosure in the specification is considered sufficient. However, the full scope of the claims includes a large range of possibilities (including the embodiments of the invention) which have not been adequately described.
The specification does not provide a clear enough and complete enough disclosure to allow a person skilled in the art to perform the invention. Consequently, the patent application does not comply with s 40(2)(a).
Support – s 40(3)
As discussed above, the embodiment of the invention comprising magnetized pieces of iron is supported by the description by the mere fact that it is so well known no explanation is needed.
However, as discussed above in relation to the full description of the invention there are a large range of devices falling within the scope of the claim which have insufficient descriptive support. Consequently, the claims are not supported by the disclosure of the specification and does not comply with s 40(3).
Other comments
The ground of utility was not raised in the examiner’s last examination report and so it was not a ground I could consider and did not form part of this decision. However, I note that if the utility objection had been maintained in the last examination report and I could consider it, then it is likely that an adverse finding would have been made for reasons overlapping with the present adverse findings.
Conclusion
The invention is not clearly enough and completely enough described and thus does not comply with s 40(2)(a). The claims are not supported by the matter disclosed in the specification and thus do not comply with s 40(3).
The only subject matter which could potentially comply with s 40(2)(a) and s 40(3) is the embodiment wherein the target is magnetized and magnetic attraction causes the indicator of the device to point towards the target. However, any hypothetical claim specific to the use of magnetized sample and target would not make a contribution to the art given that this is a well known phenomenon.
I refuse the application.
Xavier Gisz
Delegate of the Commissioner of Patents