WISCONSIN LAW REVIEW
inoperability.244 The court took issue with the presented evidence of the generation of excess heat and the melting of the electrode, using scientific rather than legal arguments.245 In response to other evidence presented by Dash, the court sided with the examiner, asserting that in every case “the examiner found at least one sound reason to disbelieve [Dash’s] evidence.”246 Thus there was “substantial evidence” to support
the finding that Dash’s invention was inoperable.247 Dash simply failed to substantiate his claim.
In other words,
These cases imply that, given a sufficiently large body of scientific evidence allowing the examiner to make a prima facie case for inoperability, the rejection may survive on appeal. Like perpetual motion, cold fusion appears to have joined the ranks of technologies subject to institutional skepticism at the USPTO. In other cases, the scientific principles involved may be too obscure, or the public record too thin, to convince a court that the examiner has made a case for inoperability.
D. The Puthoff Patent
After years of legal wrangling, the USPTO awarded Harold E. Puthoff a patent entitled “Communication Method and Apparatus with Signals Comprising Scalar and Vector Potentials Without Electromagnetic Fields” in 1998.248 The Board of Patent Appeals and Interferences heard the appeal of his final rejection in 1997 and ultimately reversed all rejections.249 The brief, unpublished opinion illustrates many of the difficulties examiners often encounter when confronted with extremely complex scientific concepts.
At first glance, the claims of the invention appear too fantastic to be believed. The inventor claims that the device is an “electric communication method and apparatus that does not rely on magnetic, electric, or electromagnetic fields but employs structures resembling those capable of generating magnetic and electric fields.”250 The patent application also claims “to provide a receiver that is shielded from electromagnetic, electric and magnetic signals, but which is capable of receiving signals.”251 In short, the inventor claims that the device is
118 F. App’x 488, 492 (Fed. Cir. 2004).
U.S. Patent No. 5,845,220 (filed Aug. 23, 1993).
Ex parte Puthoff, No. 95-375, 1997 WL 1883784 (Bd. Pat. App. &
’220 Patent col.4.