Federal Circuit: Enablement More Difficult When Invention Faces Skepticism

By Dennis Crouch In re Hoffman (Fed. Cir. 2014) (non-precedential decision) Gene Hoffman and David Lund’s patent application is directed to method of weakening the strength of tropical cyclones by delivering super-coolant from an aircraft into the eye of the hurricane. The inventors here have never tested their method, but did provide some preliminary calculations that – they argue – suggest success. The USPTO rejected the application for failing to enable the claimed invention under 35 U.S.C. 112(a). In particular, the examiner identified three failures: (1) the preliminary calculations contained unexplained assumptions and mathematical errors; (2) the specification noted a need for experimentation to determine the proper amount of coolant to add and the optimal strike time; and (3) a number of weather scientists have expressed doubt as to whether similar approaches would work. In reviewing the rejection, the PTAB affirmed and that decision (rejecting the application) has now been affirmed on appeal. Pending claim 36 is identified as representative and claims:

A process for disrupting a formed or forming tropical cyclone eye wall or eye or center of lowest pressure comprising:

Introduction of a super coolant chemical agent sprayed with force (the super coolant is stored in a vessel under pressure) and or released from pre-measured containers from an appropriate number of large aircraft to reduce the temperature within the eye wall (top to bottom at sea level),

thereby circulating the super coolant throughout the eye wall by the centrifugal force of the eye wall, alternatively into the eye or center of lowest pressure to reduce the temperature in the eye or center of lowest pressure and the water beneath,

[t]hereby reducing the wind and storm surge of the eye wall or raising the pressure in the eye or center of lowest pressure and converting it back to a tropical rainstorm.

The claim form here does not really follow the standard ordinarily used by professional patent drafters. Here, it appears that claim drafting and prosecution were handled pro-se by the inventors. For more than 150 years, patent law has been seen as an arcane area of law full of traps for non-experts. In some ways, this decision confirms that tradition. The first sub-section of 35 U.S.C. § 112 requires that the patent document disclose enough about the invention so as to enable an artisan skilled in the particular area of science and technology to make and use the invention. The statute reads:

[The patent must disclose] the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.

35 U.S.C. §112(a). The court has added some gloss to the statute in that precedent allows missing elements from the specification so long as the skilled artisan could fill-in those gaps without undue experimentation. The court also uses the “Wands factors” to help determine whether the disclosure meets the enablement standard. These factors include:

  1. The quantity of experimentation necessary,
  2. The amount of direction or guidance presented,
  3. The presence or absence of working examples,
  4. The nature of the invention,
  5. The state of the prior art,
  6. The relative skill of those in the art,
  7. The predictability or unpredictability of the art, and
  8. The breadth of the claims.

In re Wands, 858 F.2d 731 (Fed. Cir. 1988). In applying these, the Federal Circuit found that there was no doubt that the USPTO’s decision was correct. Although the court did not go into depth in its analysis, one interesting aspect of the decision is that the Federal Circuit identifies skepticism in the scientific community as the most important factor here. The court writes:

And perhaps most significantly, the very efficacy of the method itself is subject to considerable doubt in the scientific community.

In other words, the enablement burden is more difficult to meet when the invention is surprising or when it goes against conventional wisdom. Of course, those same inventions will more easily surpass the central patentability test of non-obviousness. My point here, though, is that patentees with clearly groundbreaking inventions should take extra pause to ensure that the surprising result has been properly enabled.

71 thoughts on “Federal Circuit: Enablement More Difficult When Invention Faces Skepticism

  1. This sounds like a classical example of an “invention” in the “perpetual motion/machine” category. Surprised there wasn’t also a 35 USC 101 rejection (for inoperability).

  2. It must be considered doubtful that cooling would work because it was established in “Sharknado” that a propane explosion is the way to dissipate a sharknado!

    1. RandomGuy, all I can say is thank god that the PTO took a stand on this one. It is amazing the junk the PTO issues. Did you check the claim in the Cyberfone case? (The 101 case that Prof. Hricik thinks is a travesty.)

      1. Ned,

        Your post indicates that you do not think that the Prof. Hricik line of thought applies.

        Do you think that that case is NOT a 101 travesty (this question quite apart from other reasons to tank the patent)?

        Do you think 101 jurisprudence is correct in that case?

        You have said that you agree with my position, and yet your posts continue in various forms showing that you do not appreciate what that position actually is.

        Stop. Take a deep breath. Rest your jihad and focus on the legal issue of 101. Clearly and distinctly think about this and then – and only then – reply.

  3. We have a single-element method claim. It requires

    Spraying with force (spraying what is not stated) an (unknown amount) of super coolant (what super coolant?) from an appropriate number (what has this to do with anything?) of large (? what is “large?”) planes …

    There follows a requirement “to reduce the temperature within the eye wall (top to bottom at sea level). How much of a temperature drop is not specified. What does “within” a wall mean? What does “top to bottom” at sea level mean?

    Given the current state of Federal Circuit jurisprudence, the Federal Circuit would never find anything indefinite about this claim. But honestly, why should we tolerate such claims?

    1. A small helicopter owned by US government flies back from a mission skirt a tropical storm towards Guantanamo. It dumps fuel into the Caribbean, then lands.

      A tropical storm encounters the dumped fuel, some still in the air, some on the ocean, and almost immediately loses 5mph off its peak winds.

      Mr. Hoffman sues the US government in the court of claims. You are retained represent the government. List your possible defenses other than lack of enablement.

        1. LB, I don’t know. But truly, the claim is vague on where the coolant is dropped, what it is, etc., etc., etc.

          So long as it has the effect claimed, there appears to be literal infringement.

          The matter the small helicopter — is that really important? I would argue equivalence.

          Assume the spec. disclosed a specific coolant, dropped at a specific location, in a specific amount and for a specific period. The claim itself is far broader. Should we apply 112(f) and construe the claim to cover this disclosed method or not?

          I would simply declare the claim invalid under BOTH 112(a) and (b).

  4. If they used enough LN2 to effect their invention, would they suffocate everything/everyone below them?

    Also, is this really a case of undue experimentation? The experiment is simple, and there are usually plenty of hurricanes every season.

  5. I have another idea thought guys, see if you guys like my idea. Instead of just injecting some material into the places mentioned and hoping for the best, how about we instead send up a small fleet of balloons with the material in tow, track their altitude and GPS position and explode/extrude the contents of the various balloons when they’re in the positions we’d like to apply material to?

    I’m dedicating it to the public!

  6. ” (the super coolant is stored in a vessel under pressure) and or”

    Christ sakes does nobody make objections anymore?

    1. 6, I know the PTO rejects for single means. Does it reject for single-element method claims — as this appears to be?

          1. Is it your position that a method with only one step is ipso facto res ipsa loquitur automatically “indefinite”? And if so, what pre-1952 case from the 1800’s are you citing in support of that?

            1. Not necessarily. If the step has enough detail such that it will necessarily provide the claimed effect, then it does not suffer from the Morse problem.

              But simply spraying a coolant in order to achieve an effect is not sufficient as it doesn’t say what, how much, how long, from where, to where or anything else that would, if performed, result in the effect.

              The claim is little more than to the result.

      1. as this appears to be

        Try as I might, I cannot reduce the claim, no matter how inaptly written, down to a single element.

        1. 1. A computer adapted to conduct a predetermine algorithm.

          The algorithm is disclosed and defined.

          How many computers do you count?

            1. Ned,

              How about answering my questions related to the Nazomi case.

              How about answering my questions related to the Grand Hall experiment.

              How about answering my questions related to controlling law and the exceptions to the printed matter doctrine.

            1. May I suggest, anon, that

              1) an apparatus claim that discloses a single apparatus is not a combination claim.

              2) a method that discloses a single act is not a combination claim.

              3) an article of manufacture is not a combination claim;

              4) a composition is not a combination claim.

              A product by process can have multiple steps

              Back to the method under consideration, we have

              1. spraying a super coolant with force and/or releasing it from pre-measured containers by an appropriate number of large airplanes to reduce the temperature of the eye wall (there is an alternative step as well).

              I count one act: an act, broadly defined, to product an effect.

              Now, just how is this different from the claim in Morse?

              The only thing I see is the spraying with force or releasing of super coolant. But is this sufficient?

              Now assume the spec. said that one should spray a particular liquid at a particular temperature with a specific force into a specific location in the storm. Does this specification enable this claim to all super coolants, from all locations, to all locations, with all forces so long as any such alternative is effective?

      2. The legal theory behind the In re Hyatt “single means claim” rejection is that 112(f) requires claims to a combination, and a single means claim is not to a combination, so the single means element cannot invoke 112(f) in its construction. The claim is thus directed to everything conceivable that could perform the function, not just what’s disclosed, and so the scope of the claim and the enabled scope are not consonant (112(a)).

        For a method claim, this would rely upon an attempt to recite the single method step in a “step plus function” way. I’m not aware of much legal precedent surrounding this, mostly because nobody ever uses it. If the method step were claimed based solely on its effects rather than reciting any substantial acts for its performance, then the same issue could potentially arise.

        Aside from that, a single step method claim isn’t necessarily rejectable under 112(a). For instance, a method for curing a headache with the single step of “ingesting at least one capsule containing 200mg of ibuprofen” would likely be just fine under 112(a).

        1. APoTU, I agree with this statement. But compare Perkins Glue.

          “28. A glue comprising cassava carbohydrate rendered semifluid by digestion and having substantially the properties of animal glue.”

          The glue here was defined by its properties. Indefinite.

          So, we have a method step. It say do act A. It then says, to achieve result X. Now I have no problem if act A produces result X. But if the disclosure says, as it did in Perkins Glue, the result is achieved only if act A is done under particular conditions, the claim is indefinite — and overbroad and not enabled for its full scope.

          Turn to the claims in this case: forcefully spray super coolant to lower temperature in the eye wall. The claim is not limited to any super coolant, to any degree of force, to any location of spraying. It effectively claims any process that will effect the result using some sort of coolant.

          Now, even if the specification disclosed one effective method, that method would not enable claims of this scope. The claims are indefinite and not enabled.

          But, let me tell you, APoTU, the PTO issues claims of this type all the time when it issues claims to “do A to effect X,” or “configure anything to do X.” Just check the literally millions of patents that issue with “configured to” or “adapted to” in the claims where the particular claim element is not claiming something old, but the invention itself — in effect, any apparatus, composition, or act that achieves the claimed function or result.

    1. Anon. I don’t know exactly how this is relevant, but the applicants here filed a petition to make special based upon their agedness. Lund born in 1937 and Hoffmann born in 1927.

      1. From the skill of the illustration, I would have guessed that the ages of the inventors was at the other end of the spectrum. I had thought that perhaps the inventors were children and that the application was a civics project exploring the patent system.

        That the pro se applicants are at the other end of the age spectrum stills speaks to a child-like state, but in a much more sad way.

        1. Although I must say that an application filed two years after Eugene and David’s by a group including Bill Gates (yes that Bill Gates) on a similar concept makes for an, um, interesting discussion point.

          Application 12/006,805

  7. I’m interested in exactly where the serious doubts arise.

    I ask because the invention seems to be simply to squirt coolant into the eye, in order to cool the eye, and I can’t imagine there is any serious doubt that a coolant cools. Obviously, a coolant cools!

    Of course, whether the amount of cooling is enough to convert the cyclone to a mere storm must be very doubtful. But the claim does not require such conversion. Or does it?

      1. Good question IANAE. I was adverting to a squeeze between sufficiency and obviousness, enabled by the absence of data. Thus:

        If the requirement is merely to reduce the severity of the storm, even a small amount of liquid N2 supercoolant will “work” and be “useful”. That much is obvious.

        But if even a relatively small amount of N2 will transform a tropical cyclone into a mere rainstorm, that would be surprising, and not obvious. Trouble is, the inventors have presented no data that renders that surprising result plausible.

        Thus, either way, they fail.

    1. I think a professionally written and prosecuted application with the same starting point “invention” would have had a good chance of being allowed.

    2. I ask because the invention seems to be simply to squirt coolant into the eye, in order to cool the eye, and I can’t imagine there is any serious doubt that a coolant cools. Obviously, a coolant cools!

      Sounds obvious. But where does the heat go in this case?

      1. Where does the heat go? I was thinking it went to convert the squirted liquid nitrogen into gaseous nitogen. How much latent heat does that need though. I haven’t a clue, LB.

        1. How much latent heat does that need though.

          Phase changes are well known to require a lot of latent heat. Nitrogen takes 5.56 kJ/mol to vaporize. The rest of the energy (much less, about 29 J/mol per Kelvin) would go into heating the nitrogen to the temperature of the swirling air.

          1. Huh. By my calculations, vaporizing 4 kg of liquid nitrogen requires an energy equal to about one-microsecond’s worth of the kinetic energy in a typical hurricane. Apparently the hurricane releases about 400 that much energy in generating clouds and rain. I don’t know what the implications are for how much liquid nitrogen you need to weaken the eye wall, but I bet it’s a lot…

            1. Yeah I know. But we both know that the storm was started when some butterfly flapped its wings, right? So perhaps it takes only one butterfly flap in the right place to damp it down (only joking).

              Frankly, it astonishes me, how much energy, sweat and money some inventors will expend, to get their precious baby as far as the Federal Circuit.

              And I bet Messrs Hoffmann and Lund still think that nobody understands, and that they have been cheated out of their rights.

              If only they had paid somebody at the outset, to fly them into the middle of a tropical cyclone, just to see how much energy there is there.

            2. I’m pretty sure that the idea is not to simply cool down the whole storm area with your little squirt of material. The idea is to disrupt the cyclonic activity enough to stop the cyclone from cycloning around and revert to a tropical storm (with more or less the same heat energy in the tropical storm).

            3. I’m pretty sure that the idea is not to simply cool down the whole storm area with your little squirt of material.

              No doubt. That’s why my calculations were for an exceedingly tiny fraction of the storm’s power. I was actually surprised at how low my result turned out to be. Of course, my calculations could be wrong…

            4. “No doubt. That’s why my calculations were for an exceedingly tiny fraction of the storm’s power.”

              Yes and I’m pretty sure that we’re talking about completely different things which we’d work out quickly irl between us.

              I do wonder though, has anyone thought about a nuking the area to induce pressure changes to disrupt the pressure system creating the spout? Wouldn’t need to be a ginormous nuclear blast.

              Looks like they have.

              link to motherjones.com

      1. What the claim “requires” Ned is, for me, a bit of a mystery. But I’m happy for you, that you can see what it is. Squirt for spray though, eye for eye wall. It is not so far away, is it?

      1. Interesting Leopold, but easily distinguishable with:

        but if they are in more than one country, the location of the whole for purposes of the United States Patent Law is where the “master” station or stations are, which is in the United States of America, and where all the stations are monitored, presently Washington, D.C.

        No such territorial “master” or monitoring within the US is captured with the application under discussion. The application can operate entirely outside of US jurisdiction, so the reference you supply is inapposite.

        1. The application can operate entirely outside of US jurisdiction, so the reference you supply is inapposite.

          I don’t know what it means for the application to operate entirely outside of US jurisdiction. If you mean that the entire method is likely to be practiced outside the US, you’re probably right. Anyhow, in view of Decca (and NTP v. Research in Motion, for that matter), if I were prosecuting this application, I’d put some sort of control step in there, perhaps simply a “directing the takeoff of the aircraft.” That way, you’d have a potential claim against missions that were initiated in the U.S.

          1. Thanks Leopold.

            Even for your momentary, um, “not understanding,” you seem to have understood the important point that the case you provided will not cover this patent application.

            There are easier ways to say: “You are right again, anon.”

            1. … you seem to have understood the important point that the case you provided will not cover this patent application.

              I have no idea what it means for a case on infringement to “cover this patent application.” Or do I, since you seem to know better than I what I understand?

            2. Funny if you now want to slink back to some pedantic “not understanding” that you still recognized that the case you cited wont work with the application and that you sough to change the application by introducing the very item I pointed as being deficient.

              But hey, you are welcome to try to avoid saying “you are right again, anon” any number of ways.

              We both know that you are backtracking from the Decca case.

              Shhhh – I won’t tell anyone if you don’t.

            3. that you sough to change the application by introducing the very item I pointed as being deficient.

              Isn’t it amazing how often somebody else’s comment says exactly what you so clearly said first?

              There are easier ways to say: “You are right again, anon.”

              Well don’t keep me in the dark any longer, anon, just what are those easier ways? I would have thought that “you’re probably right” would suffice, but apparently not.

          2. I’d put some sort of control step in there, perhaps simply a “directing the takeoff of the aircraft.”

            Surely, your best bet is to claim

            “Providing instructions for causing the take-off of an appropriate number of large aircraft configured to introduce a super coolant chemical agent…”

  8. Um,… tropical cyclones…

    What part of the continental US (for which patent protection would apply) covers tropical cyclones?

    1. The hurricanes which impact the U.S. are indeed tropical cyclones. Hurrican is simply the commonly used name for northern hemisphere cyclones. The term “tropical” simply refers to where the storm originally forms.

      1. MJM,

        Please note the difference between any hurricanes that might affect the US (i.e. origin is not the point) and the geographical limitations that any scope of protection afforded by the aforementioned patent would provide (use of the patent would be generally outside of the US control).

        The patent is toothless for all effective purposes.

        I had to check my calendar to make sure it was not the day after March 31.

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