Eighth in a series of articles aimed at scientists, engineers, business managers, non-patent lawyers, and other professionals that desire or need to understand basic principles of patent law and practice. Check out previous editions of this series HERE.
Eugene Hoffmann and David Lund had a cool idea, I mean wicked cool: they filed a patent application claiming a process for weakening a tropical storm by using a team of airplanes to inject liquid nitrogen, which boils at -196oC, into the storm’s eye wall. “Holy frozen bananas, Batman, imagine the royalties when this patent issues!”
“Not so fast, Boy Wonder—we have an enablement problem!”
In a non-precedential decision (In re Hoffmann, decided February 25, 2014), a Federal Circuit panel upheld the Patent Trial and Appeal Board, which had affirmed the patent examiner’s rejection of the claims for failing to comply with 35 U.S.C. § 112(a). The statute requires a patent application to describe “the manner and process of making and using” an invention “in such clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.” A patent specification is not “enabling” if a person of ordinary skill in the art would have to use “undue experimentation” to arrive at the claimed subject matter.
The decision is a helpful reminder of the factors to consider (from In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)) in deciding whether an invention would have required undue experimentation:
- the quantity of experimentation necessary
- the amount of direction or guidance presented
- the presence or absence of working examples
- the nature of the invention
- the state of the prior art
- the relative skill of those in the art
- the predictability or unpredictability of the art
- the breadth of the claims
The patent examiner criticized Hoffmann and Lund’s preliminary calculations, noted that the specification acknowledged the need for experiments to test the idea to determine the proper timing and amount of coolant, and cited publications in which weather experts doubted the viability of storm modification. On balance, the examiner concluded that the patent application was not enabling because a skilled person would require undue experimentation to reproduce the claimed process. The Board agreed; so did the Federal Circuit. The court noted that although the PTO had the initial burden to set forth a “reasonable explanation” of why it believed the specification was not enabling, the examiner met this burden. The burden then shifted to the inventors to provide “suitable proofs” of enablement.
As evidence of enablement, Hoffmann and Lund argued that the government had secretly used their method to abate or redirect hurricanes in recent years, but the court dismissed this as mere speculation. Moreover, although the inventors included a table in the patent application estimating the number of airplanes needed to treat storms of a particular size, the court agreed that the claims had been properly rejected.
Moral of the story for inventors? Keep a cool head, eat bananas (don’t immerse them in liquid nitrogen and smash them to smithereens), and pay attention to the “how to make and use” factor when you write an invention disclosure. Your friendly neighborhood patent attorney will appreciate it.