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A CASE STUDY OF INOPERABLE INVENTIONS: WHY IS THE USPTO PATENTING PSEUDOSCIENCE? - page 16 / 39

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WISCONSIN LAW REVIEW

instances where the inventions can be shown to contradict known scientific principles.125 It may also be that the dicta of Chilowsky are still good representations of the law, and that In re Langer never contemplated overruling a presumption of inoperativeness in the rare cases of pseudoscientific inventions. A unique example of just such an exception to the In re Langer rule is Process Control Corp. v. HydReclaim Corp., where the Federal Circuit Court determined that a mixer was inoperable for violating the law of conservation of mass after strictly construing the meaning of the term “discharge rate.”126 The court reduced the operation of the mixer to the mathematical equation A = A + B where B is not equal to zero.127 This mathematical relationship is clearly a logical impossibility.128 Expressed in such stark, mathematical terms, no prima facie case for inoperability was

necessary.129

Unfortunately, the vast majority of inoperability decisions

do not reduce so neatly to a simple mathematical equation.

In light of the presumption of utility130 and the above discussion, an inoperability rejection based upon mere assertions that the invention violates scientific principles would not likely succeed on appeal. Moreover, courts are not eager to incorporate scientific principles into case law.131 Perhaps for these reasons the Newman v. Quigg court was reluctant to rule that a prima facie case for inoperability automatically resulted from a violation of the laws of thermodynamics.132 The USPTO takes the view that since “incredible utility” rejections are rarely upheld by federal courts,133 all prima facie cases for rejection on utility grounds must be supported by factual evidence. 134

125.

In

a

footnote

to

its

restatement

of

the

Langer

test,

the

Federal

Circuit

Court appeared to incorporate the narrow exception of In re Marzocchi. See In re Brana, 51 F.3d 1560, 1566 n.17 (Fed. Cir. 1995) (“In the field of chemistry generally, there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement put forward as enabling support for a claim. This will especially be the case

where the statement is, principles.") (quoting In re

on its face, contrary to generally Marzocchi, 439 F.2d at 223).

accepted

scientific

126.

190 F.3d 1350, 1359 (Fed. Cir. 1999).

127.

Id.

128.

Id.

129.

See id.

130.

See Structural Rubber Prod. Co. v. Park Rubber Co., 749 F.2d 707, 714

(Fed. Cir. 1984).

131. (Fed. Cir.

Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1573 1992) (“The issues of utility and enablement involved consideration of

complex scientific principles . . . . Scientific issues are not treated as legal abstractions

. . . .”). 132. 133. 134.

877 F.2d 1575, 1580 (Fed. Cir. 1989). U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.02(III)(B). Id. § 2107.02(IV).

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