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A CASE STUDY OF INOPERABLE INVENTIONS: WHY IS THE USPTO PATENTING PSEUDOSCIENCE? - page 13 / 39

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2006:1275

Inoperable Inventions

1287

a table-top, free-energy machine be legally “useful” as a doorstop? Clearly, there is a limit to this line of reasoning. As the USPTO sagely notes, the requirement of specific and substantial utility “excludes ‘throw-away,’ ‘insubstantial,’ or ‘nonspecific’ utilities, such as the use of a complex invention as landfill.”90

Finally, note that courts often discuss utility rejections in the context of the enablement requirement of section 112 of the Patent Act.91 The first paragraph of the statute requires that the patent application “shall contain a written description of 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 . . . to make and use the same.”92 This enablement requirement is closely related to the utility requirement of 35 U.S.C. section 101.93 The logic follows that if an invention is useless, it would be impossible for the patent to teach a person skilled in the art how to use it.94 The U.S Patent and Trademark Office Manual of Patent Examining Procedure (MPEP), the voluminous “bible” of patent prosecution,95 advises examiners that any utility rejection should always be accompanied by an enablement rejection on the same grounds.96 Although some cases of pure utility rejection do exist,97 current MPEP guidelines should make them exceedingly rare. 98

B. Procedural Law Regarding Rejection of Inoperable Inventions

In evaluating the credibility of a patent for utility purposes, the USPTO and the courts99 apply the Langer test.100 The Langer test

90. U.S. PATENT & TRADEMARK OFFICE, U.S. DEPT OF COMMERCE, MANUAL OF PATENT EXAMINING PROCEDURE § 2107(II)(B)(1)(i) (8th ed. 2001)

91. 92. 93. 94.

See, e.g., In re Brana, 51 F.3d 1560, 1564 (Fed. Cir. 1995). 35 U.S.C. § 112 (2000). U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.01(IV). See In re Fouche, 439 F.2d 1237, 1243 (C.C.P.A. 1971) (“[I]f such

compositions are in fact useless, appellant’s specification cannot have taught how to use them.”); In re Brana, 51 F.3d at 1564 (“Obviously, if a claimed invention does not have utility, the specification cannot enable one to use it.”).

95.

See In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and

Guidelines ‘are not binding on this court, but may be given judicial notice to the extent

they do not conflict with the statute.’”) (citation omitted).

  • 96.

    U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.01(IV).

  • 97.

    See, e.g., In re Houghton, 433 F.2d 820, 820 (C.C.P.A. 1970).

  • 98.

    U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.02(II)(B).

  • 99.

    Normally, an applicant appeals a patent rejection from an examiner to the

Board of Patent Appeals and then to the Court of Appeals for the Federal Circuit (formerly the Court of Customs and Patent Appeals). Patent cases may be brought in other federal circuit courts, but will ultimately end up in the Court of Appeals for the Federal Circuit if appealed. 69 C.J.S. Patents § 184 (2006).

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