In re Dash and Keefe (Fed. Cir. 2004) (Unpublished).
In 1990 professor John Dash filed a patent application for producing heat energy using nuclear fusion at a low temperature. Experimental results suggesting that nuclear fusion occurred in their apparatus were submitted to the Patent Office in support of Dash’s attempts to overcome utility rejections mounted by the PTO.
Dash appealed the Board’s rejection of his application for lack of enablement and utility.
On appeal, the CAFC relied on the "scientific community’s considerable doubt" regarding the utility of "cold fusion" in sustaining a prima facie case for lack of utility and enablement — even though the articles relied upon by the PTO were anectodal and not peer-reviewed.
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of no rule that forbids the examiner from relying on related technology, anecdotal information or sources that are not peer-reviewed to establish a case of inoperability. . . .
The Examiner must only establish that a person of ordinary skill in the art would reasonably doubt the asserted utility.
The court then rejected Dash’s Rebuttal Evidence:
For each type of evidence Dash produced, the examiner found at least one sound reason to disbelieve the evidence.
Comment: (i) All this comes in the wake of the DOE’s report that they are accepting quality research proposals on cold fusion. (ii) If this were a published opinion, it would be quite a precedent — giving some real teeth to the utility requirement.
Here is the conflict: Applicants use statements from experts saying "a certain result cannot be accomplished" to prove that the result is nonobvious. Now, the court brings a double-edged sword — finding that those statements can now be used to show a lack of utility.