An incredible invention (incredible = not credible).

In re Hu (Fed. Cir. 2021)

Huping Hu (PhD, JD) and his spouse Maoxin Wu (MD, PhD) have been working for many years to understand human consciousness and its relationship to quantum theory.  In a series of patent applications, the pair have disclosed and claimed various applications of quantum entanglement.

Pending claim 1 of their Application No. 11/944,631 lists three easy steps for taking advantage of quantum entanglement. The basic approach:

  1. Create quantum entanglements between an originating & a targeting substance (“by irradiating said substance with magnetic pulse, laser light or microwave, or letting said substance sit for at least thirty days”);
  2. Separate the substances;
  3. Heat/cool/alter the originating substance.

The result then is a “change in weight, temperature and/or pH value of said target substance.”  The figure above shows a schema “for non-locally influencing a biological system in vivo such as a human body by first applying said target substance into said system in vivo and then manipulating the originating substance quantum-entangled with said target substance. [Published Application: 20090114526A].  This application as well as two others are pending in the case:

  1. Application No. 11/944,631 (non-local effects via quantum entanglement);
  2. Application No. 13/449,739 (treatment device for humans emitting quantum-entangling photons or magnetic pulses);
  3. Application No. 13/492,830 (treatment with water-based target);
  4. Application No. 11/670,996 (similar)

The Patent Office rejected applications as inoperative and the Federal Circuit has affirmed.  Operability is not expressly required by the patent act, but is directly derived from the utility doctrine of 35 U.S.C. § 101 (“new and useful”).  In addition, an inoperative creation also lacks enablement — especially in situations like this where the claims are directed to a functional result and not just the machine assembly.

On appeal, Hu argued that the USPTO based its decision on speculation, skepticism and ignorance rather than evidence.  The USPTO presented no prior art or any other contrary evidence.

On appeal, though, the Federal Circuit found that the USPTO had presented a prima facie case by noting that the invention: “violates the first law of thermodynamics,” is “contrary to traditional understanding of chemistry,” and “violates the classical laws of physics” including conservation of mass.   The Board noted an “absence of any known scientific principles explaining how Appellant’s invention could possibly operate in this manner, the absence of any cogent explanation in Appellant’s Specification regarding the general principals [sic] or mechanisms causing this to occur, and the absence of any verifiable test data reasonably attributable to the purported result, the Examiner reasonably characterized Appellant’s invention as being of an incredible nature.” Although Hu presented 25 scientific articles, the Board failed to find any scientific basis supporting the particular claims in Hu’s applications.

The appellate panel explained its support for the conclusion:

The PTO, as the nation’s guardian of technologic invention, must be receptive to unusual concepts, for the core of invention is unobviousness. However, concepts that strain scientific principles are properly held to a heightened standard, typically measured by reproducibility of results. Here the Board was presented with an apparent departure from conventional scientific understanding, and the Board appropriately sustained the examiners’ requirements for experimental verification. The Board applied a reasonable and objective standard, and acted reasonably in sustaining the examiners’ requirements. Should further investigation bring peer recognition and verifiable results, the PTO and the scientific community would surely be interested.

Id.

Note here – the result of this decision is not barring patentability of this type of invention, but rather a requirement that the inventor provide a better showing that the invention actually works as claimed.

93 thoughts on “An incredible invention (incredible = not credible).

  1. 9

    I will try yet again, to get my issue understood by readers of this thread.

    Obviousness and lack of novelty are different attacks. Prior publication D1, to be novelty-destroying, must disclose something within the scope of the claim under attack, and must enable that which it discloses. And remember, no mosaicing allowed, right.

    So what if, on its date of publication, D1 fails to enable that which it discloses, and ONLY because of that lack of enablement, the novelty attack fails. What if , following publication of D1, the art (trans-luminal self-expanding stents, say) advances rapidly, and with that advance enables the disclosure of D1. It’s going to be decisive to the success or failure of the novelty attack, whether the enablement enquiry is as of the date of publication of D1 or as of the date of the claim under attack.

    So far, so good. As AAA JJ points out, the MPEP purports to deal with this point, basing itself on In Re Donohue. So, let’s look at Donohue.

    Donohue cites In Re LeGrice, a CCPA case from 1962. Looking into the LeGrice Decision, we find it basing itself on an 1876 Supreme Court case called Cohn v. United States Corset Co. which had to assess an 1854 publication of one Johnson.

    In Cohn, the Supreme Court Decision states:

    “But the evidence shows that the Johnson specification, in connection with the known state of the art at the time when it was filed and published, was sufficient to enable one skilled in the art of corset-making and in the use of the jacquard to make the patented corset”

    That strikes me as fairly definitive, that one conducts the enablement enquiry as of the date of publication of D1, and not as of the date of the claim. It would put US law on enablement in the context of novelty attacks in line with settled law under the European Patent Convention.

    But that would be a surprise to many readers here, would it not?

    1. 9.1

      MaxDrei, please.

      This ‘issue’ that you so painstakingly describe at post 9 is excessively banal and is no more than the ‘science’ portion of an item AT that item’s date as a reference.

      This does not touch upon our past discussions in the least – does not touch upon the interesting effects of your own stated “expansion” over time, and in regards to developments AFTER the date of the reference in question.

      You stress a point that NO ONE is arguing about, while leaving everything of interest untouched.

      1. 9.1.1

        You may well be right, that nobody in the USA is yet “arguing about” what date applies, for the assessment of enablement in a prior publication used for a novelty attack. But based on the arguments about it over the last 40 years in Europe, the arrival of a First to File system in the USA, the slough of despond that is the eligibility part, and the pit of despair that is the obviousness part of the determination of validity of a claim in the USA, it won’t be long before you do find yourselves arguing about it, also in the USA.

        1. 9.1.1.1

          I just do not see that happening – not for the minuscule fact pattern that you detailed above.

          Now for the other items that have previously been on the table…..

          1. 9.1.1.1.1

            Miniscule deliberately, to keep to a minimum the number of facts contained within a hypo intended to flush out the core point.

            But in complex real world litigation between innovative pharma and generics companies in the ever faster-moving advance of technology, and ever higher pressure to file as early as possible, the point occurs with increasing frequency in litigation in England. That might be because every litigator is well aware of it and so is looking out to use it to win the case. Perhaps a burgeoning consciousness of the point, in the USA, within the litigator community, will lead to an incremental increase in the use of the point, also in US cases.

            1. 9.1.1.1.1.1

              Except… the ‘point’ that you appear to be striving for in that ever constrained situation is already banal here.

              You are too eager to engage on a “your-side-of-the-pond” issue that is NOT an issue here (leastwise, as mentioned, in the over-constrained and dull setting that you have set forth above).

  2. 8

    link to perkinscoie.com

    Well we knew it would be a woman of color. She doesn’t look like she is in the pocket of SV. Looks like it will be good for big pharma.

    1. 8.1

      Our new CAFC judge.

    2. 8.2

      Looks like, though, that she spends her time as a D attorney.

      Hmm….

      Still a partner at Perkins Coi that does a lot of litigation can’t be all bad.

      1. 8.2.1

        At least she’s young enough to have probably used a computer in her lifetime, which gives her a leg up on some of the judges.

      2. 8.2.2

        Night Writer,

        There is some mix of D and P, as well as TS work.

        Two points though that raise my eyebrows are

        1) emphasis on litigation as opposed to prosecution. As most all can see on these boards, comments from litigators tend to skew towards Efficient Infringer mindsets; and

        2) clerking for Judge Dyk. One has to wonder what types of bad habits may have been picked up from that formative experience.

        1. 8.2.2.1

          Good comments anon.

    3. 8.3

      The next big thing on this board is how ignorant chemical engineers are of technology.

      1. 8.3.1

        Sounds like it was written from a script.

        1. 8.3.1.1

          “Anticipating criticisms of worker conditions at their fulfillment centers in particular, Amazon designed Veritas to train fulfillment center workers chosen for their “great sense of humor” to confront critics”

          link to theintercept.com

          What can I say? That does sound like me!

          1. 8.3.1.1.1

            I am not certain that you are purposefully (perhaps playfully) being blithe, but your link actually supports the long running storyline from Night Writer that ‘paid bloggers’ are active.

            Sure, your story is one in particular to the Bezos machine of Big Tech, but clearly, this can directly support the same type of activity in regards to other interests of Big Tech – and in particular to this blog, the use of paid bloggers to ‘promote’ the ideals of Efficient Infringement.

            In your attempt to be witty, you apparently have ‘armed’ your enemy.

            You ask, “What can I say?”

            Maybe you want to check yourself about what you have already said (and provided a link to).

  3. 7

    Here is a hypo for you, based on Real World events. I refer to the NITINOL stent.

    Suppose an MIT professor postulates a shape memory alloy, and things made from it, including a trans-luminal stent, built of a material that exhibits an Austenite/Martensite twinning behaviour within its crystal lattice. The patent application is published (call it D1) but no patent issues because the invention is not enabled. The inventor is unable to describe a working example for want of a suitable material.

    Five years later, the US Navy publishes (D2) details of its invention, NITINOL, and its use for making hermetic pipe seals.

    Five years later, J&J invents the NITINOL stent, files its patent application and gets issued with a patent on it.

    Never mind obviousness. Does D1 deprive the J&J claim of novelty? If so, how?

    1. 7.1

      Depends on what they claim.

      1. 7.1.1

        AAA JJ

        Try googling criticism of “critical race theory”, which is the left, and then look for intellectuals discussing “equity”. You will find intellectuals from Harvard, Columbia, and many other places that say “equity” is exactly what I said it was. Insuring the outcome is equal based on race.

        And the intellectuals say that “critical race theory” is neo-Marxism using race rather than class.

        Wake up. These people are dangerous.

      2. 7.1.2

        And seriously before you yap out any more stuff about this spend some time and listen to what the intellectuals are saying about “critical race theory” and “equity”.

        1. 7.1.2.1

          link to hlrecord.org

          At the heart of Critical Race Theory lies the rejection of colorblind meritocracy. “Formal equality overlooks structural disadvantages and requires mere nondiscrimination or “equal treatment.”[1] Instead, Critical Race Theory calls for “aggressive, color conscious efforts to change the way things are.”[2] It contemplates, “race-conscious decision making as a routine, non-deviant mode, a more or less permanent norm”[3] to be used in distributing positions of wealth, prestige, and power.[4]

          This country is not now, never was, and never will be (unless we address the past) a “color blind meritocracy.”

          We cannot redress 246 years of slavery and 100 years of American apartheid by just saying, “Ok, golly gee, we’ll make all of our decisions now as a color blind meritocracy. That’s fair for everyone.”

          White families have, on average, 10X the wealth of Black families in this country.

          link to brookings.edu

          Why do you think that is? What do you think caused that? What do you think should be done about it? Do you think anything at all should be done about it? If you think that all that needs to be done is to “make color blind decisions” and to tell Black people and others who were, by law, denied the full benefit of citizenship for centuries, “Hey, just work real hard and catch up” or “Pull yourself up by your own bootstraps like I did” then you’re part of the problem.

          You can’t run a 100 yard dash and give one group a 95 yard head start and claim that the results are fair and just.

          1. 7.1.2.1.1

            At the heart of Critical Race Theory lies the rejection of colorblind meritocracy and the inclusion of Rac ISM with the patent excuse to fight that very thing.”

            There – fixed for accuracy.

          2. 7.1.2.1.2

            But you didn’t actually listen or read what intellectuals have to say about all this.

            You set up a lot of strawmen and stated there is a problem.

            1. 7.1.2.1.2.1

              What strawmen did I set up?

              You don’t think there are any racial problems in this country that need to be addressed?

            2. 7.1.2.1.2.2

              I’m not about to scour the internet at your behest. If there are “intellectuals” with views on CRT that you find “dangerous” please provide some names and I may review their positions.

              The idea that we need “race conscious decision making” to address the inequities that exist after 246 years of slavery and 100 years of American apartheid is not dangerous. It’s actually quite logical.

              1. 7.1.2.1.2.2.1

                If there are “intellectuals” with views on CRT that you find “dangerous”

                Your own link already provides that.

                Your own link is nothing but abject Rac ISM itself.

                If you had any sense whatsoever, you would be supremely embarrassed to be promoting such filth.

                1. That you think the addressing the inequities caused by 246 years of slavery and 100 years of American apartheid is “filth” says a lot about you. None of it good.

                2. Nice strawman – maybe try reading your own provided link to see the filth.

                  Engaging in overt Rac ISM under any guise is nothing but
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              2. 7.1.2.1.2.2.2

                AAA JJ:

                Look, the problem is that CRT is based on belief and not empiricism and rationality. Not the scientific method. Not even humanity.

                The strawmen you set up include that if you don’t “believe” in CRT then you don’t believe racism is a problem.

                It is terrible seeing people once filled with the light of Enlightenment fall back into the darkness of the medieval times and that is what CRT is.

                Anyway, just google “criticism of CRT” and there are lots of academics that say CRT is neo-Marxists using race rather than class.

                Look, do you realize that many of these people think that what China is doing is a good idea? That they like the idea of monitoring people 24×7 and giving people a rating of how good a citizen and then using that rating to determine your privileges for such things as travel, school, jobs, and so forth.

                1. You don’t answer any of my questions. How do we address the inequities caused by 246 years of slavery and 100 years of apartheid?

                  Your position appears to be: color blind decision making.

                  That’s not going to work. It hasn’t worked.

                  “Look, do you realize that many of these people think that what China is doing is a good idea? That they like the idea of monitoring people 24×7 and giving people a rating of how good a citizen and then using that rating to determine your privileges for such things as travel, school, jobs, and so forth.”

                  Because I agree that we need race conscious decision making doesn’t mean I agree with anything and everything that other people who support that may propose or like. The Ku Klux Klan endorsed Drumpf. Does everybody who voted for Drumpf agree with everything the Ku Klux Klan believes in?

                  “The strawmen you set up include that if you don’t ‘believe’ in CRT then you don’t believe racism is a problem.”

                  If you believe that racism is a problem, what do you propose to address it?

                2. You don’t answer any of my questions. How do we address the inequities caused by 246 years of slavery and 100 years of apartheid?

                  One sure fire answer is NOT to employ Rac ISM of any kind.

                  You do not beat
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                  by becoming
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                  As to your “Trump and White Supremacy” flawed analogy, YOU are the one that touted a link that exemplifies the
                  E
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                  So no, you
                  F
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                  as this is not at all saying that someone who supports Trump necessarily supports white supremecy.

                  It is very much saying that your use of the “white supremacy” mirror is as use of the “white supremacy” mirror – and is every bit as
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                  You should really spend the effort to get to know the foundation of the Beliebs that you are spouting.

                3. Giving you clear guidance on what is NOT an answer IS an answer.

                  It may not be the answer that you wanted to hear, and it may not be the complete answer, but only an arse would pretend that no answer at all has been provided.

                  Wake up son – your wokeness is nothing but the very shackles that have upset you in the first place.

                4. And to follow up — AAA JJ not only does not answer the counter point, but he too provides NO answer himself.

                  Leastwise, no answer that is not mired in the very thing that he is so upset about.

                  Go figure.

              3. 7.1.2.1.2.2.3

                link to bing.com

                You can start there but there are also a lot of black scholars who say CRT is neo-Marxist and dangerous.

          3. 7.1.2.1.3

            For an intellectual critical of race theory who has thoughts I find well thought out Andrew Sullivan is interesting to look at. I am slightly worried though how we got from this post to this discussion as they seem rather unrelated..

            1. 7.1.2.1.3.1

              I think that what you are seeing here is a spillover from a ‘politically correct’ Liberal Left push on another patent blog (namely, IPWatchdog – over several columns there).

              near as I can tell, Night Writer is trying to bring AAA JJ to the table of discussion and actually own up to some of the mindboggling premises behind AAA JJ’s position.

              He is not alone, as both I and a poster with the abbreviated handle of “B” have also attempted to have AAA JJ do a little self-reflection on the basis of his adoption of
              H
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              and use of Rac ISM with the thin veneer that such use if somehow justified to fight past Rac ISM.

    2. 7.2

      What does your D1 contain – as of its filing date?

      What within D1 is science, and what within D1 is fiction?

      Simple and direct point: fiction – at its date – is and always will be fiction.

      You seem to want to (constantly) confuse OTHER things as somehow being able to rewrite the past and create something in fiction AT THE DATE OF THE fiction, that such is not – and cannot be.

      Items within D1 that are instead science, are science. Those things, like any other things, may be able to have patent defeating aspects of later patents based on the date of the item.

      This really is not rocket science.

    3. 7.3

      Why wasn’t J&J’s claim rejected as obvious over D1 in view of D2?

      1. 7.3.1

        Who says it wasn’t? Of course it almost certainly would succeed.

        But I’m trying my best here to explore the law of novelty and with my hypo shut out irrelevant and distracting considerations of obviousness.

        I hope you are not going to tell me that my enquiry doesn’t matter because if, on “a technicality”, a novelty attack fails it is of no consequence because an obviousness attack will surely succeed. Are you though?

    4. 7.4

      Incredible. I ask a simple question, and nobody is willing or able to answer it.

      A reference (a printed publication D1 with an unambiguous and definite date of publication in, say, 2010) is non-enabling on its date of publication. Therefore, as of its date of publication, it is not good enough to destroy the novelty of a claim to subject matter Y with a date a month later, in 2010.

      So far so good, so uncontroversial. But suppose by the year 2020, the skilled person’s knowledge base has expanded so much that, for that person, at that time, the teaching in D1, together with that knowledge base, enables the subject matter that was disclosed in D1 back in the year 2010.

      The patent law issue is whether the novelty-destroying capability of D1 is fixed as of its publication date, or whether it expands with time. Has the issue never arisen, in the USA because it certainly has here in Europe.

      1. 7.4.1

        Max, first you have to clarify what you mean by “novelty-destroying capability:” Full U.S. 102 anticipation [requiring enablement] or a 103 obviousness reference that is combinable with a 103 reference to the subsequent enabling material?

      2. 7.4.2

        “Has the issue never arisen, in the USA…”

        You may wanna review MPEP 2121.01 which states “A reference contains an ‘enabling disclosure’ if the public was in possession of the claimed invention before the effective filing date of the claimed invention for applications or patents subject to the first inventor to file provisions of the AIA or the time the invention was made for applications or patents subject to pre-AIA law. ‘Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his [or her] own knowledge to make the claimed invention.’ In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985).”

        1. 7.4.2.1

          Thanks JJ. I shall read Donahue with great interest.

        2. 7.4.2.2

          AAA JJ,

          One point that MaxDrei is driving at is that a reference that is known (or taken as) to have a specific item to be fiction (at that item’s reference date), can magically later due to other references be “enabled” and turn to non-fiction from fiction for its earlier date.

          He used the term, “Capability expands with time.

          While he was directly talking about “102,” the larger and more important point is one he glosses over, but wants that same ‘magic’ expansion for in view of “103.”

          The criticality here is less (while not fully to be) 102 or 103, but more that FOR the date of the (prior fiction) reference, there is magic afoot that can change the content of impact, while its date is fixed in time (based on things outside of the four corners of that reference).

          No one is questioning that as time rolls by that other references may emerge and those references (for the timing of those references) may themselves be proper prior art.

          But that is not his aim.

          His aim is to inflate content of the prior dated first item (of fiction).

          1. 7.4.2.2.1

            The word “dismissed” was missed in the parenthetical “not fully to be”

      3. 7.4.3

        Max, consider the following “publication”:
        Power a car with an internal combustion engine.

        In the 1800s, that would be non-enabling, but as of the present day, *combined with the knowledge base of a skilled engineer*, that could be considered enabled… but that’s because of all the other art out there. *Those* references would be novelty destroying for a simple car, and really, my “publication” is just the same as taking Official Notice. Official Notice can be taken that an invention is not novel, and on its own, the ON is not enabled: rather, it’s a statement that the fact in question is so well known that it is beyond question.

        So, to answer the final question, when is my publication enabled? When the knowledge base is such that one could take official Notice of the “facts” stated therein.

        1. 7.4.3.1

          “Official Notice can be taken that an invention is not novel, and on its own, the ON is not enabled…”

          Uh, no it can’t.

          But thanks for the laugh.

          1. 7.4.3.1.1

            You laugh, but isn’t that essentially what SCOTUS did in Bilski? A fundamental economic practice, long since prevalent…

            1. 7.4.3.1.1.1

              Official Notice – as a prior art concept – has zero overlap with eligibility concerns of something ‘being an abstract idea.’

              Do NOT confuse a broken score board as being on point here.

            2. 7.4.3.1.1.2

              In light of these precedents, it is clear that petitioners’ application is not a patentable “process.” Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk: “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” 545 F.3d, at 1013 (Rader, J., dissenting); see, e.g., D. Chorafas, Introduction to Derivative Financial Instruments 75-94 (2008); C. Stickney, R. Weil, K. Schipper, & J. Francis, Financial Accounting: An Introduction to Concepts, Methods, and Uses 581-582 (13th ed.2010); S. Ross, R. Westerfield, & B. Jordan, Fundamentals of Corporate Finance 743-744 (8th ed.2008). The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.

              130 S.Ct. at 3231.

              So no, that’s not “essentially what SCOTUS did in Bilski.

              1. 7.4.3.1.1.2.1

                They kind of did, though. Rader’s quote there was without citation in his Federal Circuit dissent, and SCOTUS adopts it as true. Their citations are questionable, given that every one of them post-dates Bilski’s application by at least a decade (as well as procedurally questionable since they seem to be expanding the evidentiary record, given that they were cited by the lower court). In holding that hedging is “long prevalent”, they are taking Official Notice of that as factual, albeit without coming right out and saying they are… and of course, many Examiners play the same game.

                Now, yes, anon’s right in that it *should* have zero relationship to whether something is an abstract idea, but I think he and I both agree that SCOTUS’ decisions in this area are terrible.

                1. Abstract iDan,

                  I appreciate your distinguishing the matter – thanks. Most would prefer to run roughshod over such a distinction, and then wonder why they end up with legal nonsense.

                  As to your new Official Notice point, I would offer a distinction in that a member of the Article III branch of the government and a member of the Executive Branch of the government do NOT engage in the same manner with those same words of “Official Notice” (for example, the APA and the MPEP limit the examiners).

                2. Well, surprisingly, no… “Official Notice” was originally called “judicial notice”, and is commonly done by courts, too – see In re Knapp Monarch, citing to Wigmore on Evidence (also described here: link to jstor.org)
                  Now, sure, the APA arguably limits Examiners from issuing arbitrary decisions, but so does the constitutional right to due process arguably limit courts from issuing arbitrary decisions. So they both have the same constraints (whether or not they follow them…).

                3. Those are definitely NOT the same constraints (and very much reflects a ‘Ends do not justify the Means’ point as to the differences in those two Means).

                4. “Well, surprisingly, no… ‘Official Notice’ was originally called ‘judicial notice’, and is commonly done by courts, too – see In re Knapp Monarch, citing to Wigmore on Evidence (also described here: link to jstor.org)
                  Now, sure, the APA arguably limits Examiners from issuing arbitrary decisions, but so does the constitutional right to due process arguably limit courts from issuing arbitrary decisions. So they both have the same constraints (whether or not they follow them…).”

                  There is a very large difference between an executive branch employee (which includes examiners and APJs), who has a burden of proof under the APA, taking “Official Notice” and an Article III judge taking judicial notice of a fact outside the record. That very large difference matters. The editors of the MPEP may not know that (and it’s clear from reading the MPEP they don’t, or if they do they simply have no ethics whatsoever), but it matters. A lot.

                  None of the cases cited in the MPEP support the proposition that an examiner, who has the burden of proof, can acknowledge a complete lack of objective evidence to establish a fact but make a bald assertion that it is a fact and then shift the burden to applicant to prove, or even explain, why it’s not a fact.

                5. “None of the cases cited in the MPEP support the proposition that an examiner, who has the burden of proof, can acknowledge a complete lack of objective evidence to establish a fact but make a bald assertion that it is a fact and then shift the burden to applicant to prove, or even explain, why it’s not a fact.”

                  E pur si muove

        2. 7.4.3.2

          Dan, your hypothetical is actually close to the actual case of the George Seldon patent [kept pending for many years] licensed to most early car manufacturers except r Ford, who was sued and won on appeal for his gas engine spec embodiment not being really operative, as shown by a test model, if I remember the facts correctly.

      4. 7.4.4

        Incredible. I ask a simple question, and nobody is willing or able to answer it.

        Even more incredible- you are given a better understanding from which to understand your own question, and – yet again – choose to not understand.

        And then you want to play the unglaubich game…

        1. 7.4.4.1

          At #9, anon, you will find a fresh exposition of the problem. AAA JJ drew my attention to a passage in the MPEP. I took it from there, and it took me back to an 1876 Supreme Court case. Perhaps you would like to take it on from there?

          1. 7.4.4.1.1

            Your ‘fresh’ is actually a retreat to something stale and rather empty.

            No ONE is arguing about elements of any reference that as of the date of that reference can be recognized as a bit of ‘science.’

            This speaks nothing to the other bit that – at the date of the reference – is NOT science.

            This speaks nothing to your attempted “expansion” over time (after the date of the reference) and in view of ongoing OTHER developments.

  4. 6

    Of course, the rejection is either wrong or irrelevant: if the PTO is right (as I’m sure we all believe), then no one could ever infringe a patent issuing off these claims. Alternately, if someone could infringe, then the PTO was wrong. Accordingly, simple game theory suggests that the PTO should grant such applications to collect issue and maintenance fees from snake oil inventors, while wasting no time on substantive examination.

    1. 6.1

      Dan, even if the PTO was that cynical about issuing inoperative inventions, you are overlooking the strong PTO management incentive not to be ridiculed in public media or attacks in Congress for issuing patents attacked as ridiculous.

      1. 6.1.1

        you are overlooking the strong PTO management incentive not to be ridiculed in public media or attacks in Congress for issuing patents attacked as ridiculous.

        Agreed – hence, such programs as SAWS (retired for its own ridiculing in public media), or – critically, as admitted by the Office itself when it finally fessed up to the clandestine SAWS program – that SAWS was merely one of many such (STILL clandestine) programs.

        This, despite 37 CFR 1.2.

    2. 6.2

      “Alternately, if someone could infringe, then the PTO was wrong.”

      Unless that someone is the person who enables the techniques. This attitude penalizes actual inventors.

  5. 5

    What’s next?! Barring perpetual motion machines?

    Sheesh.

    1. 5.1

      We patent lawyers would have nothing to work on, if that’s the new rule!

  6. 4

    Waiting for the outrage that the courts use 101 to kill these applications rather than 112.

    1. 4.1

      You probably won’t get it. Had the court used the lazy, evidence and fact free “judicial exception” “analysis” you might have. But I doubt this will raise any eyebrows.

      Of course, 112(a) non-enablement was/is also an option.

      1. 4.1.1

        Claims were rejected under 112(a) also.

      2. 4.1.2

        Yes, 35 U.S.C. § 101 “new and useful” requirements for “utility” are not the same as Alice-101 rejections. But I suspect that PTO rejections for lack of “utility” are even rarer than for “inoperability” even if the latter is a subset of the former? I remember one PTO official joking that utility as a paperweight would probably be sufficient for many machine patents.

        1. 4.1.2.1

          I heard a similar story for compounds: throw it on the lawn: it the lawn grows, it is a fertilizer; if the lawn dies, it is a herbicide.

          Of course, the unstated (and oft ignored) proposition is that the utility requirement has always been meant to be an exceptionally low bar.

          This has do to with the historical fact that “promote” was never meant to be exclusive to any type of linear or non-linear advancement, and included within its meaning the mere “spread of word” that is associated with the advertising sense of promotion.

          Once this aspect is understood, the “calamity” and fear-mucking loses its ‘sting,’ though.

  7. 3

    Quantum entanglement is something that, at the moment, appears to be a real effect that cannot be explained. There are very few of those running about, and not being an expert, I think the PTO and the appellate panel handled the application quite well. Someday we may look back and say these folks were visionary -but too early to the office since lacking a technological invention based on the concept. They are probably not quacks. Quantum radar is a slick example built on the effect, but can one be built? The whole idea of entanglement is disturbing to the modern materialist mind. It should be.

    1. 3.1

      > The whole idea of entanglement is disturbing to the modern materialist mind.

      Yea, the whole point of quantum computers, etc. is to “violat[e] the classical laws of physics.” And yet, they are actually being used in labs today.

      1. 3.1.1

        OC,

        Your post remains me of such things as the Aether, Phlogiston, and other artifacts, as well as the wisdom (as it were) of the Treachery of Images (this is not a pipe).

  8. 2

    Rarely does the PTO reject pending claims for inoperability even though that is the epitome of 112 non-enablement. A more typical example thereof is “perpetual motion” machines which assertedly require no power or generate their own power with no energy source. [Usually that is disguised, unappreciated by the inventor, and not directly claimed.] The PTO did retain its authority to require working models thereof, a former requirement for most patents that was ended many years ago.
    I once told the PTO that they had inadvertently issued a patent on one. The unusually candid response essentially amounted to admitting that the PTO can initiate statutory Director-ordered reexaminations [35 USC 304] on inoperative or otherwise defective patents but does not normally do so absent media attention. [I assume that meant bad press for the PTO.]
    The public also mistakenly assumes the PTO carefully examines patent applications to prevent patenting of “quack medicine” devices or substances, despite numerous such issued patents over the years.

    1. 2.1

      To be sure, however; “quack medicine” patents are indeed . . . readily available . . . for the birds. :-)

  9. 1

    Can these inoperative/non-enabling applications be cited as prior art in the future?

    (side note: “violates the classical laws of physics” is a troubling turn of phrase in a quantum mechanics case)

    1. 1.1

      OC,

      To add a further point: can this serve as prior art (as of its date) under 35 USC 103?

    2. 1.2

      “Can these inoperative/non-enabling applications be cited as prior art in the future?”

      Yes. All printed publications are good for what they “fairly disclose or suggest” to one of ordinary skill in the art.

      1. 1.2.1

        AAA, your 1.2 intrigues me, on the difference between 102 and 103 and a prior publication. Let’s call it D1.

        You use the expression “fairly disclose or suggest”. I take “disclose” to link to 102 while “suggest maps to 103.

        But now let’s think about the relevant PHOSITA and the date on which that notional addressee is deemed to be studying D1, especially when D1 is visionary, not understandable on its date of publication but, ten years later, with the benefit of intervening progress in the art, is is not just understandable but suggests, or even discloses, perhaps even by now enables, subject matter in a claim under examination at the USPTO, in a patent application just now filed at the USPTO.

        I can see that D1 can blow away the claim under 103. But what about 102. Could it deprive the claim of novelty as well?

        In other words, what date “counts” for assessing any “disclosure” of D1 that is asserted as novelty-destroying?

        I ask despite previously asking anon, because I didn’t understand his answer.

        1. 1.2.1.1

          Fiction can not be enabled at a later date and still carry its earlier date.

          1. 1.2.1.1.1

            I guess that you have decided that the Hu and Wu document is pure “fiction”, nothing more, and that it is self-evident to all readers that it is nothing more than pure “fiction”? For otherwise, your comment about “fiction” is irrelevant to this thread, isn’t it?

            1. 1.2.1.1.1.1

              I have made no such guess – but would draw your attention to the pronouncements made in this immediate decision.

              As well as the actual points I have made about the fiction portions of science fiction.

        2. 1.2.1.2

          Whether it’s “novelty-destroying” is a function of the breadth of the claim. The classic example is a claim to a wrist watch with a tv in it being anticipated by a comic of Dick Tracy in which he had such a watch.

          What a non-enabling or inoperative or “science fiction” reference anticipates depends. If I claim, “A shoe comprising a telephone in the heel” and that’s all I claim, well then that shoe from the “Get Smart” show anticipates it. If I have a claim with more details, then maybe not.

          As for what such a reference “suggests” to one or ordinary skill, then the answer is: a lot. maybe. George Jetson had a flying car that folded up into a briefcase. Should somebody actually invent such a flying car, they couldn’t credibly argue that the Jetsons didn’t “suggest” it. They are free to argue whether the Jetsons “anticipated” or “enabled” such a claim, or whether there was a reasonable expectation of success in combining the Jetsons with some other reference(s), but the Jetsons “suggests” a flying car that is foldable into a briefcase.

          I’ve seen your back and forth with whatshisname, but mostly passed it by. As for what “date” such a reference is “good for” the answer is: the date of the filing of the application/claim being examined. What did one of ordinary skill in the art know on the date applicant filed his application? What could one of ordinary skill in the art do with that knowledge. What would one of ordinary skill in the art do with that knowledge.

          The level of ordinary skill is an overlooked requirement of 112(a) and (b) and 103 rejections. It shouldn’t be.

      2. 1.2.2

        The better question would be: what exactly does “for what they fairly disclose or suggest” — as of their non-enabled date — entail?

        Does the fiction portion of science fiction get any weight?

    3. 1.3

      This has been discussed on prior blogs re Jules Verne stories, movies, and other such conceptual, non-enabled, publications. It is important to note the difference between 103 and 102 prior art. 103 prior art does not require its enablement, but is only good for what it actually teaches, and of course its effectiveness also depends on how broadly conceptual the subject claim is.

      1. 1.3.1

        … what does fiction teach as of the date of the fiction?

    4. 1.4

      Yes, but there is a defense/rebuttal that art can’t be cited properly if it is “non-enabling.” It is rarely effective, but maybe it will work in the odd case where the prior art itself was expressly rejected/invalidated as being non-enabling or inoperative.

      1. 1.4.1

        As Paul alludes to, there have been past conversations on the matter, and one aspect HERE that could be stressed is that this application now is putatively NOT going to be labeled as science fiction.

        As I have noted in the past, there is a reason why granted patents carry a presumption of enablement (even for material beyond the claims — which is a point that most likely should NOT carry that same presumption as that which can be reflected by the granted claims); and that presumption is entirely because examiners are tasked with and are presumed to have done their job with verifying enablement.

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