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A CASE STUDY OF INOPERABLE INVENTIONS: WHY IS THE USPTO PATENTING PSEUDOSCIENCE? - page 24 / 39

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WISCONSIN LAW REVIEW

establish that the invention was “incredible in the light of the knowledge of the art.”192 In addition, the examiner could have argued that the relationship between the construction of the device and the accepted theory of dielectrophoresis was speculative at best. According to standard procedure, the examiner would have had to assemble “factual findings” to support these conclusions.194 From any perspective, the idea of documenting these objections with objective “proof” seems daunting at best. 193

Fortunately, there is a record of what actually occurred during the examination process for this patent.195 The assistant examiner, who conducted the majority of the examination, had a few years of experience at the USPTO and a bachelor’s degree in electrical engineering.196 The primary examiner claimed that he typically gave applications a “quick look” to make sure that the form of the application was acceptable.197 In the secondary examiner’s own words: “I tried to look up ‘dielectrokinesis,’ but I couldn’t find it. I trusted them that it works as they claimed, and I assumed that people skilled in the art would use this word all the time.” 198

From the above discussion, it is apparent that the ‘088 Patent is incomprehensible, not because of the complexity of its subject matter, but because it describes a nonsensical invention. Had the secondary examiner recognized this distinction, she could have asserted that the patent application was deficient regarding utility and enablement. However, as discussed before, the mere assertion that the application is incomprehensible is not enough—the examiner must also make a prima facie case to prove that assertion.200 Moreover, a patent examiner who lacks the expertise to be considered a “person skilled in the art”201 199

  • 192.

    In re Citron, 325 F.2d 248, 253 (C.C.P.A. 1963).

  • 193.

    See MURRAY, supra note 165, at 22-24.

  • 194.

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

  • 195.

    Voss, supra note 18, at 1254.

  • 196.

    Id.

  • 197.

    Id.

  • 198.

    Id.

  • 199.

    For a discussion of the relationship between utility and enablement, see

supra Part II.B.

  • 200.

    Voss, supra note 18, at 1254.

  • 201.

    To be fair, the In re Langer court gave no guidance in determining who is

a “person skilled in the art” for purposes of utility rejections. 503 F.2d 1380, 1392 (C.C.P.A. 1974). However, “person skilled in the art” is a term of art that has received some clarification in the context of the novelty requirement. See 35 U.S.C. § 103(a) (2000) (indicating that an invention is not patentable if it is perceived to be an obvious improvement by a “person having ordinary skill in the art”); Std. Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985) (stating that the person of ordinary skill in the art is a hypothetical person who is “presumed to have knowledge”

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