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A CASE STUDY OF INOPERABLE INVENTIONS: WHY IS THE USPTO PATENTING PSEUDOSCIENCE? - page 14 / 39

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WISCONSIN LAW REVIEW

presumes that an asserted utility is valid “unless there is reason for one skilled in the art to question the objective truth of the statement of utility or its scope.”101 Thus, unless there is a very good reason to doubt the claimed assertion of operability, the mere statement of the applicant that the invention works is sufficient. 102

In every case, it is incumbent upon the USPTO to make a prima facie case for rejecting a patent for lack of utility.103 Speculation or assertion by the examiner that the invention is inoperable is insufficient—the examiner must also provide evidentiary support for any assertions.104 The nature and quantity of evidence required to make a prima facie case will depend both on the nature of the claim and on whether the claim conforms to known scientific principles. 105

A particularly interesting case illustrating the relationship between presumption of utility and scientific principles is In re Chilowsky.106 In the early 1950s, Chilowsky attempted to patent a design for a nuclear reactor, which, from a modern perspective, consisted of a suicidally dangerous molten mixture of fissionable material, moderator material,

107 108 and cadmium (for “control”). reactors had yet been built At the time of filing, no commercial The examiner argued a lack of .

enablement on the grounds that the exact mixture of materials was not made known in the application.109 The examiner also opined that the reactor could never be built.110 The Board of Appeals added the further criticism that the invention was “speculative.”111 The Court of Customs and Patent Appeals, however, noting that the laws governing the process of fission were well-established by scientists,112 took the

100.

U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.02(III)(A); In

re Langer, 503 F.2d 1380, 1391 (C.C.P.A. 1974); In re Brana, 51 F.3d at 1566 (“A

101. 102.

In re Langer, 503 F.2d at 1391. In re Gazave, 379 F.2d 973, 977 (C.C.P.A. 1967) (citing In re

Chilowsky, 229 F.2d 457 (C.C.P.A. 1956)).

103. 104. 105. 106. 107. 108. 109. 110. 111. 112

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In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Id.; In re Gaubert, 524 F.2d 1222, 1224-25 (C.C.P.A. 1975). In re Gazave, 379 F.2d at 978. 229 F.2d 457. Id. at 459-60. Id. at 461. Id. Id. Id. Id at 462

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specification disclosure . . . requirement . . . unless there contained therein . . . .”).

must be is reason

taken as in compliance with the enabling to doubt the objective truth of the statements

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