Patents on the Fringe

By Samuel Petuchowski, Ph.D..

December 2009 IP Update

Every so often, an inventor seeks patent protection for the likes of a calculator that divides by zero or a vehicle for traveling faster than light. What should the U.S. Patent and Trademark Office do when an applicant seeks to patent a process, machine, manufacture or composition of matter that lies outside the bounds of the known laws of nature: a patent application that is meaningless, or that can’t work?

One might argue that, once a patent examiner has determined that the invention is neither anticipated by prior art nor obvious, no harm is done if a patent is granted for a fanciful, or simply inoperative, invention. The patent can hang on the inventor’s wall in rightful acknowledgement that “no one has ever done that before.” And assertion of that sort of patent will prevent no one from actually doinganything, since such a patent does not cover anything that can be done.

However, in addition to requiring novelty and non-obviousness, Congress has seen fit to limit the grant of U.S. patents to inventions that are useful, and the Patent Act requires that the applicant provide a written description of the invention in full, clear, concise and exact enough terms “as to enable any person skilled in the art to which it pertains, or to which it is most nearly connected, to make and use the invention.”  (35 U.S.C. § 112) That requirement can be especially challenging to inventions on the fringe.

In 2002 and 2003, two patent applications were filed by a single inventor, with claims drawn to methods for generating electricity and methods for generating a sustained nuclear reaction. In both cases, a stream of gas flows through a pipe, and is rapidly heated (to a temperature of approximately 500º F) at a sufficient rate as to cause the components of the gas stream to undergo sustained nuclear reactions, which in turn are used to generate heat; or, additionally, to produce hydrogen atoms from the water, ionize the hydrogen, after which a magnet and conductor are used to collect free electrons as a source of electricity.

Separate examiners rejected these cases as unpatentable, explaining that the inventions are inoperative, and therefore lack utility, and that the descriptions fail to enable a person skilled in the art to practice the inventions. Both rejections were appealed to the Board of Patent Appeals and interferences (BPAI)[1], which recently upheld the rejections in both cases (Ex parte Lin, and Ex parte Lin).

The prosecution histories of the two applications reveal that one of the examiners invoked the literature refuting the notorious claims of Fleishman and Pons, while the other simply found there there is no reputable evidence that cold fusion is an operative process. Lin argued, in response, that Fleishman and Pons taught a “batch” process, and its refutation should not be applied against his process, which produces continuously excess heat.

The BPAI’s parallel rulings rehearsed the proper legal process articulated by the Federal Circuit Court of Appeals in In re Brana (1995):Once an examiner provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility of an invention, the burden shifts to the applicant to submit evidence sufficient to convince such a person of that utility. The examiner may properly consider utility and enablement together, because, “obviously, if a claimed invention does not have utility, the specification cannot enable one to use it.”

The BPAI determined that the applicant failed to rebut a prima facie case of inoperability, and that the applicant’s assertions (without factual evidence) that experiments were conducted by a highly reputable (but unnamed) research company, that the applicant had been invited to numerous international conferences, and that patents had been granted in the United Kingdom and China, even if assumed to be true, failed to address the examiner’s findings. In particular, the applicant failed to show any error in the examiner’s reasoning that the requirement that heat be added at a “rapid rate sufficient to …induce nuclear reactions” was indefinite and thus unpatentable.

Thus, by screening cases that fail to meet utility standards, examiners preserve some of the cachet associated with the term “patented.” Applicants should bear in mind that a patent practitioner is ethically precluded (37 CFR § 10.39) from filing an application that is not warranted under existing law.

[1] The BPAI is composed of three administrative patent judges, and its decisions are final administrative decisions that may be appealed to the Federal Circuit Court of Appeals or else in a civil action in the U.S. District Court for the District of Columbia.