A case study of inoperable inventions: Why is the USPTO patenting pseudoscience?

Wisconsin Law Review

Volumn 2006, Issue 4, 2006, Pages 1275-1313

  Rislove, Daniel C ^a  

^a NONE

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EID: 33846490289     PISSN: 0043650X     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Note

References (305)

1. U.S. v. Quadro Corp., 928 F. Supp. 688, 699 (E.D. Tex. 1996), aff'd, 127 F.3d 34 (5th Cir. 1997).
2. Id. at 691-92. "Dowsing" is an ancient practice whereby a person holding an L-shaped rod or stick attempts to locate a hidden target, usually water. Wikipedia, Dowsing, http://en.wikipedia.org/wiki/Dowsing (last visited Nov. 1, 2006). Practitioners of dowsing consistently fail to locate hidden objects with greater accuracy than expected by chance when tested under controlled conditions. Id.
3. Quadro Corp., 928 F. Supp. at 690.
4. Id. at 692.
5. See id.
6. Id. at 690.
7. DKL International, Inc., Welcome to DKL, http://www.dklabs.com (last visited Nov. 1, 2006).
8. DKL International, Inc., Products, http://www.dklabs.com/products.html (last visited Nov. 1, 2006). Models range in price from $6,000 to "15,000. Kendrick Frazier, 'Human Presence Detector' Device Fails Controlled Tests at National Laboratory, THE SKEPTICAL INQUIRER, July-Aug. 1998, at 8.
9. See DKL International, Inc., Customers, http://www.dklabs.com/customers. html (last visited Nov. 1, 2006).
10. See infra Part IV. A.
11. U.S. Patent No. 5,748,088 (filed Nov. 27, 1996); U.S. Patent No. 5,907,280 (filed Apr. 28, 1997); U.S. Patent No. 6,011,476 (filed Aug. 25, 1997); U.S. Patent No. 6,078,179 (filed Apr. 24, 1997); U.S. Patent No. 6,411,099 (filed Mar. 29, 2000); U.S. Patent No. 6,496,114 (filed Jan. 21, 1999); U.S. Patent No. 6,674,366 (filed May 4, 1998); U.S. Patent No. 6,686,842 (filed May 4, 1998).
12. See, e.g., Symposium, Ideas into Action: Implementing Reform of the Patent System, 19 BERKELEY TECH. L.J. 857 (2004).
13. See, e.g., U.S. Patent No. 5,960,411 (filed Sept. 12, 1997) (Amazon.com's patent for "one-click" shopping); Elizabeth Jackson, Amazon.com, Inc. v. barnesandnoble.com, Inc.: The Custody Battle Over "1-Click" Shopping: Web Customers Win Control, 10 U. BALT. INTELL. PROP. L.J. 55, 58-59 (2001).
14. See, e.g., U.S. Patent No. 6,080,436 (filed June 14, 1999) (patenting a method of "refreshing a bread product by heating"-that is, making toast).
15. Most famously, inventor Jerome Lemelson extracted about $1.5 billion in licensing fees using submarine patents for such everyday items as bar-code readers. See Susan Hansen, Breaking the (Bar) Code, IP L. & Bus., Mar. 2004, at 41, 42.
16. See, e.g., U.S. Patent No. 6,213,778 (filed Dec. 14, 1999) (describing a method of creating art prints by dipping a baby's posterior in paint and transferring the image to paper).
17. See, e.g., Eric P. Mirabel, "Practical Utility" Is a Useless Concept, 36 AM. U. L. REV. 811, 812-14 (1987); Phanesh Koneru, To Promote the Progress of Useful Art[icle]s?: An Analysis of the Current Utility Standards of Pharmaceutical Products and Biotechnological Research Tools, 38 IDEA 625, 648 (1998).
18. See, e.g., John H. Barton, Reforming the Patent System, 287 SCI. 1933, 1934 (2000);
19. David Voss, 'New Physics' Finds a Haven at the Patent Office, 284 SCI. 1252, 1252-54 (1999).
20. Although the legal and colloquial definitions of "inoperable" are similar, the legal definition implies a heightened standard of proof in demonstrating that the invention completely fails to operate as claimed. See infra Part II. B.
21. U.S. Patent No. 5,830,064 (filed July 19, 1996).
22. U.S. Patent No. 5,989,178 (filed Apr. 2, 1997).
23. U.S. Patent No. 5,247,179 (filed Oct. 17, 1991).
24. U.S. Patent No. 6,960,975 (filed Mar. 14, 2005).
25. U.S. Patent No. 4,151,431 (filed Dec. 6, 1973).
26. See discussions infra Part IV.
27. See, e.g., ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 216 (3d ed. 2002) (posing this argument and positing the possibility of fraud as a possible counterargument).
28. Although beyond the scope of this Comment, this argument presupposes the much criticized theory that scientific advances occur through revolutionary innovations toward which the conservative scientific establishment is usually hostile. See THOMAS S. KUHN, THE STRUCTURE OF SCIENTIFIC REVOLUTIONS 159-72 (1962).
29. Inequitable conduct is a broader form of common-law fraud committed against the USPTO. See J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 1559 (Fed. Cir. 1984) ("[Inequitable conduct includes] failure to disclose material information, or submission of false material information, with an intent to mislead.").
30. See 37 C.F.R. § 1.56(a) (2006) ("Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the [USPTO], which includes a duty to disclose to the [USPTO] all information known to that individual to be material to patentability....").
31. See infra Part III. A for a discussion of the educational background of patent examiners.
32. U.S. Patent No. 5,626,617 (filed Dec. 20, 1995); U.S. Patent No. 5,629,286 (filed Sept. 10, 1996); U.S. Patent No. 6,024,734 (filed May 13, 1997); U.S. Patent No. 6,239,105 (filed Feb. 17, 1999); U.S. Patent No. 6,485,480 (filed Feb. 7, 2000). See infra note 33 and accompanying text for an explanation of homeopathy.
33. See Press Release, Biomed Comm, Inc., U.S. Patent Allowance Awarded, 1997 (Summer 1997), http://www.biomedcomm.com/store/media_summer97. html.
34. See Patrick L. Sheldon, The Truth About Homeopathy: A Discussion of the Practice and the Dangers that Inhere, 8 QUINNIPIAC HEALTH L.J. 289, 316-17 (2005) for a summary of scientific trials of homeopathic remedies. Homeopathy is scientifically implausible in that it adheres to the Law of Infinitesimals, the theory that solutions become more potent the more they are diluted. Id. at 314-15. Simple application of the laws of chemistry reveals that homeopathic remedies are routinely diluted to the point that they do not contain even a single molecule of the active ingredient. Id. For a defense of homeopathy, see National Center for Homeopathy, What Are the Medicines?, http://www.homeopathic.org/meds.htm (last visited Nov. 1, 2006).
35. State v. New Womyn, Inc., 679 N.W.2d 593, 594 (Iowa 2004).
36. Id.; U.S. Patent No. 6,042,537 (filed Aug. 13, 1997).
37. See discussion supra Part I.A.
38. See infra Part IV. A.
39. MERGES & DUFFY, supra note 26, at 216.
40. Id.
41. 325 F.2d 248, 253 (C.C.P.A. 1963).
42. DAVID PRESSMAN, PATENT IT YOURSELF 10 (11th ed. 2005) (stating that people think "[i]f a product has been patented, it's bound to be superior").
43. See MERGES & DUFFY, supra note 26, at 216.
44. See infra Part II.
45. Bonnie Grant, Note, Deficiencies and Proposed Recommendations to the False Marketing Statute: Controlling Use of the Term 'Patent Pending,' 12 J. INTELL. PROP. L. 283, 295 (2004) (noting that although there are no scientific studies on the effects of patenting on consumers, they may see the patent as an endorsement by the USPTO that the product is useful).
46. U.S. Patent No. 6,960,975 (filed Mar. 14, 2005). See Philip Ball, Antigravity Craft Slips Past Patent Officers, 438 NATURE 139, 139 (2005) (noting that the invention is based on discredited research purporting to show that superconductors can shield the effects of gravity).
47. U.S. Patent No. 4,151,431 (filed Dec. 6, 1973). This is a classic example of a perpetual motion machine discussed infra Part IV. B.
48. See, e.g., In re Milligan, 41 U.S.P.Q.2d (BNA) 1703, 1703-04 (Fed. Cir. 1996).
49. See Official Organization for Therapeutic Touch, The Therapeutic Touch Process, http://www.therapeutic-touch.org/newsarticle.php?newsID=19 (last visited Nov. 1, 2006);
50. Linda Rosa et al., A Close Look at Therapeutic Touch, 279 JAMA 1005 (1998).
51. See supra note 33 and accompanying text.
52. See, e.g., The International Center for Reiki Training, What Is Reiki?, http://www.reiki.org/FAQ/WhatIsReiki.html (last visited Nov. 1, 2006).
53. See, e.g., Rosa et al., supra note 48, at 1007-09 (recounting a study conducted by a nine-year-old girl concluding that therapeutic touch practitioners were unable to sense the presence of a human "energy field" under controlled conditions).
54. See discussion of Newman v. Quiggs, infra Part II.B, for an example of a court applying objective scientific principles.
55. See, e.g., In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999).
56. In re Ferens, 417 F.2d 1072, 1074 (C.C.P.A. 1969); In re Oberweger, 115 F.2d 826, 829 (C.C.P.A. 1940).
57. In re Cortright, 165 F.3d at 1357.
58. Curiously, the court mentioned that "approximately one hundred patents" for curing baldness had already been issued at the time In re Cortright first came before the court. Id. The USPTO issued these patents despite the fact that this was the first case to overrule the institutional skepticism towards baldness cures, suggesting that even institutional skepticism is not an effective deterrent against issuing patents to inoperable inventions.
59. In fact, the term "patent medicine" is synonymous with the ineffective or dangerous medications marketed before the Pure Food and Drug Act of 1906. See Wikipedia, Patent Medicine, http://en.wikipedia.org/wiki/ Patent_medicine (last visited Nov. 1, 2006). For a detailed history of the patent medicine era in America, see JAMES HARVEY YOUNG, THE TOADSTOOL MILLIONAIRES: A SOCIAL HISTORY OF PATENT MEDICINES IN AMERICA BEFORE FEDERAL REGULATION (1961); JAMES HARVEY YOUNG, THE MEDICAL MESSIAHS: A SOCIAL HISTORY OF HEALTH QUACKERY IN TWENTIETH-CENTURY AMERICA (1992).
60. See Voss, supra note 18, at 1252-53 (noting that, after nuclear science examiners initially rejected a "cold fusion" patent, the patent attorney directed it toward the electrochemistry examiners, who accepted it); infra Part IV.B (giving an example of how an applicant drafted a patent to avoid the taint of "perpetual motion").
61. For example, dowsing, the apparent theory of operation behind the DKL LifeGuard device, appears to work precisely because the operator believes in its efficacy. James Randi, The Matter of Dowsing, 2 SWIFT 4, 4-5 (1998), available at http://www.randi.org/pdf/swift2-34.pdf.
62. U.S. CONST, art. I, § 8, cl. 8.
63. 35 U.S.C. § 101 (2000).
64. Lowell v. Lewis, 15 F. Cas. 1018, 1019 (1817) ("All that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society.").
65. For a lament on how far courts have strayed from the dictionary definition of "useful," see Mirabel, supra note 17, at 814. For a defense of the courts, see Brenner v. Manson, 383 U.S. 519, 529 (1966). In referring to the word "useful," the court notes that "a simple, everyday word can be pregnant with ambiguity when applied to the facts of life." Id.
66. See Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1366-67 (Fed. Cir. 1999) (containing a discussion of the history of moral interpretations of "useful").
67. See Mirabel, supra note 17, at 813-14.
68. In re Harwood, 390 F.2d 985, 989 (C.C.P.A. 1968) ("An inoperative invention, of course, does not satisfy the requirement of 35 U.S.C. section 101 that an invention be useful.").
69. For a recent summary of the modern law of utility, see In re Fisher, 421 F.3d 1365, 1370-71 (Fed. Cir. 2005).
70. In re Kirk, 376 F.2d 936, 942-46 (C.C.P.A 1967); see also In re Fisher, 421 F. 3d at 1379 (upholding a rejection for specific utility for genetic markers called express sequence tags).
71. In re Kirk, 376 F.2d at 939.
72. See infra Part IV.B-C.
73. 325 F.2d 248, 253 (C.C.P.A. 1963).
74. 41 U.S.P.Q.2d (BNA) 1703, 1703 (Fed. Cir. 1996).
75. In re Ferens, 417 F.2d 1072, 1074 (C.C.P.A. 1969).
76. In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000).
77. In re Eltgroth, 419 F.2d 918, 918-20 (C.C.P.A. 1970).
78. Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1573 (Fed. Cir. 1992).
79. Id.
80. Newman v. Quigg, 877 F.2d 1575, 1578 (Fed. Cir. 1989).
81. See id.
82. Id. at 1577. The Newman case became a cause célèbre among conspiracy theorists after Newman appeared on the CBS Evening News on January 11, 1984. ROBERT L. PARK, VOODOO SCIENCE: THE ROAD FROM FOOLISHNESS TO FRAUD 5 (2000). His patent rejection eventually attracted the attention of several members of Congress, who held hearings to determine whether or not to force the USPTO to grant Newman a patent. Id. at 102-05. Unfortunately, Newman withered under the questioning of Senator John Glenn of Ohio, thus preventing further congressional attention to his case. Id. at 105-06.
83. Newman, 877 F.2d at 1577. A perpetual motion machine is a device that outputs more energy than it receives as input, thus violating the law of conservation of energy. Wikipedia, Perpetual Motion, http://en.wikipedia.org/ wiki/Perpetual_motion (last visited Oct. 5, 2006).
84. Newman, 877 F.2d at 1578.
85. In its decision, the district court appointed a special master, who determined that the invention generated more energy than it consumed. Id. at 1577. Although the district court judge ruled the master's report to be "clearly erroneous in that it apparently contradicts the first law of thermodynamics," the Federal Circuit found that the failure of the device to pass the National Bureau of Standards tests rendered the question of violating physical laws moot. Id. at 1580.
86. Id. at 1580.
87. Newman postulated that his machine was somehow converting mass into energy. Id. at 1577; see also infra Part IV.B (discussing how the inventor of the Motionless Electromagnetic Generator device claims to harness the power of "zero point" energy, a type of free energy gleaned from the vacuum of space).
88. See, e.g., E.I. du Pont de Nemours & Co. v. Berkley & Co., 620 F.2d 1247, 1260 (8th Cir. 1980).
89. Id.
90. Id. at 1260 n. 17.
91. U.S. Patent No. 6,960,975 (filed Mar. 14, 2005).
92. U.S. PATENT & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, MANUAL OF PATENT EXAMINING PROCEDURE § 2107(II)(B)(1)(i) (8th ed. 2001)
93. See, e.g., In re Brana, 51 F.3d 1560, 1564 (Fed. Cir. 1995).
94. 35 U.S.C. § 112 (2000).
95. U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.01(IV).
96. See In re Fouche, 439 F.2d 1237, 1243 (C.C.P.A. 1971) ("[I]f such compositions are in fact useless, appellant's specification cannot have taught how to use them."); In re Brana, 51 F.3d at 1564 ("Obviously, if a claimed invention does not have utility, the specification cannot enable one to use it.").
97. See In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) ("The MPEP and Guidelines 'are not binding on this court, but may be given judicial notice to the extent they do not conflict with the statute.'") (citation omitted).
98. U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.01(IV).
99. See, e.g., In re Houghton, 433 F.2d 820, 820 (C.C.P.A. 1970).
100. U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.02(II)(B).
101. Normally, an applicant appeals a patent rejection from an examiner to the Board of Patent Appeals and then to the Court of Appeals for the Federal Circuit (formerly the Court of Customs and Patent Appeals). Patent cases may be brought in other federal circuit courts, but will ultimately end up in the Court of Appeals for the Federal Circuit if appealed. 69 C.J.S. Patents § 184 (2006).
102. 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 specification disclosure...must be taken as in compliance with the enabling requirement...unless there is reason to doubt the objective truth of the statements contained therein....").
103. In re Langer, 503 F.2d at 1391.
104. 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)).
105. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
106. Id.; In re Gaubert, 524 F.2d 1222, 1224-25 (C.C.P.A. 1975).
107. In re Gazave, 379 F.2d at 978.
108. 229 F.2d 457.
109. Id. at 459-60.
110. Id. at 461.
111. Id.
112. Id.
113. Id.
114. Id. at 462.
115. Id.
116. See id.
117. Id.
118. Id.
119. Id.
120. Id.
121. Id.
122. Id.
123. Proof that lack of patent protection is not a bar to marketing can be found at The Wine Clip, http://www.thewineclip.com (last visited Nov. 1, 2006) (marketing an unpatented version of the invention litigated in Fregeau).
124. 776 F.2d 1034, 1038 (Fed. Cir. 1985).
125. 325 F.2d 248, 253 (C.C.P.A. 1963).
126. 439 F.2d 220, 223 (C.C.P.A. 1971).
127. 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, on its face, contrary to generally accepted scientific principles.") (quoting In re Marzocchi, 439 F.2d at 223).
128. 190 F.3d 1350, 1359 (Fed. Cir. 1999).
129. Id.
130. Id.
131. See id.
132. See Structural Rubber Prod. Co. v. Park Rubber Co., 749 F.2d 707, 714 (Fed. Cir. 1984).
133. Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1573 (Fed. Cir. 1992) ("The issues of utility and enablement involved consideration of complex scientific principles....Scientific issues are not treated as legal abstractions ....").
134. 877 F.2d 1575, 1580 (Fed. Cir. 1989).
135. U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.02(III)(B).
136. Id. § 2107.02(IV).
137. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
138. Id.; In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995).
139. In re Brana, 51 F.3d at 1566 (citing In re Bundy, 642 F.2d 430, 433 (C.C.P.A. 1981)).
140. U.S. Patent & Trademark Office, Deputy Commissioner for Patent Operations, http://www.uspto.gov/web/offices/pac/dacp/peg (last visited Nov. 1, 2006).
141. Id.
142. U.S. Patent & Trademark Office, Patent Examiner Qualifications, http://www.uspto.gov/web/offices/ac/ahrpa/ohr/jobs/qualifications.htm (last visited Nov. 1, 2006).
143. Id. The USPTO website uses archaic language to describe these fields of study-that is, electricity and magnetism, heat, light mechanics, modern physics, and sound. Id.
144. See, e.g., infra Part IV.D.
145. U.S. Patent & Trademark Office, Patent Examiner Training, http://www.uspto.gov/web/offices/com/annual/2005/0602_patexamtrain.html (last visited Nov. 1, 2006).
146. The premier academic journal in physics is The Physical Review, which is divided into ten separate publications: Physical Review Letters (selected articles from every subfield), Physical Review A (atomic, molecular and optical, physics), Physical Review B (condensed matter and materials physics), Physical Review C (nuclear physics), Physical Review D (particles, fields, gravitation, and cosmology), Physical Review E (statistical, nonlinear, and soft matter physics). Physical Review Special Topics: Accelerators and Beams, Physical Review Special Topics: Physics Education Research, Physical Review Focus (selected articles explained at a more elementary level), and Review of Modern Physics (survey articles about a particular topic). Am. Physical Soc'y, Physical Review Online Archive, http://prola.aps.org (last visited Nov. 1, 2006). As evidence of the mutual incomprehensibility of these journals, "researchers" are indicated as an intended audience of Physical Review Focus. Am. Physical Soc'y, About Focus, http://focus.aps.org/about.html (last visited Nov. 1, 2006).
147. See discussion infra Part V.B.
148. Russell E. Levine et al., Ex Parte Patent Practice and the Rights of Third Parties, 45 AM. U. L. REV. 1987, 1989 (1996).
149. The Domestic Publication of Foreign Filed Patent Applications Act of 1999 requires patent applications to be published eighteen months after the date of filing, even if the application process is not yet completed. Pub. L. No. 106-113, § 4502, 113 Stat. 1501A-561 (codified at 35 U.S.C. § 122(b)(I)(A) (2000)). The law was a response to the problem of submarine patents. See Mark A. Lemley & Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 BUFF. L. REV. 63, 80 (2004). Even so, there is no legal mechanism for a third party to challenge a patent during the application stage. Levine et al., supra note 147, at 1989.
150. See infra Part V.C for a discussion of possible postissuance solutions to the problem of inoperable patents.
151. 35 U.S.C. § 302. Section 301 of Title 35 refers to "writing prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent." 35 U.S.C. § 301.
152. BLACK'S LAW DICTIONARY 119 (8th ed. 2004).
153. 35 U.S.C. § 301.
154. This position was previously known as the Commissioner of Patents. See Intellectual Property and Communications Omnibus Reform Act of 1999, Pub. L. No. 106-113, § 4732(a), 113 Stat. 1501A-582 (1999).
155. 35 U.S.C. § 303(a) ("Within three months following the filing of a request for reexamination under the provisions of [35 U.S.C. section 302], the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request....").
156. U.S. Patent & Trademark Office, FY 2006 Fee Schedule, http://www.uspto.gov/web/offices/ac/qs/ope/fee2006may15.htm (last visited Nov. 1, 2006).
157. See, e.g., Process Control v. HydReclaim Corp., 190 F.3d 1350 (Fed. Cir. 1999) (involving a utility challenge brought before a federal court).
158. Due to the complexities involved, patent litigation can cost millions of dollars. Matthew B. Lowrie, Critical Issues in Managing Patent Litigation, 44 IDEA 267, 270 (2004).
159. Standing to have a patent declared invalid requires "a reasonable apprehension on the part of the declaratory judgment plaintiff that it will face an infringement suit." Medimmune, Inc. v. Genentech, Inc., 427 F.3d 958, 964 (Fed. Cir. 2005), cert. granted 74 U.S.L.W. 3471 (Feb. 21, 2006) (No. 05-608).
160. See U.S. Patent No. 5,748,088 fig.1 (filed Nov. 27, 1996).
161. Id. col.4.
162. See patents cited supra note 11.
163. '088 Patent. The word "dielectrokinesis," which appears only in the title of the patent, may be a portmanteau of the phrase "an electrokinetic effect due to dielectrophoresis." Id. cols.1-2.
164. Herbert Pohl coined the term in the 1960s. See HERBERT A. POHL, DIELECTROPHORESIS: THE BEHAVIOR OF NEUTRAL MATTER IN NONUNIFORM ELECTRIC FIELDS 5 (1978).
165. See '088 Patent.
166. DALE W. MURRAY, SANDIA NAT'L LABS., PHYSICAL EXAMINATION OF THE DKL LIFEGUARD MODEL 3, at 4 (1998), available at http://www.nlectc.org/pdffiles/dklanalysis.pdf (last visited Oct. 6, 2006).
167. Id.
168. Id.
169. Id. at 22-23.
170. See supra notes 163-64 and accompanying text for an explanation of the difference between dielectrophoresis and "dielectrokinesis."
171. MURRAY, supra note 165, at 24.
172. Id. at 22-23.
173. See, e.g., Fregeau v. Mossinghoff, 776 F.2d 1034, 1038-39 (Fed. Cir. 1985).
174. DALE W. MURRAY ET AL., SANDIA NAT'L LABS., DOUBLE-BLIND EVALUATION OF THE DKL LIFEGUARD MODEL 2 (1998), available at http://www.prod.sandia.gov/cgi-bin/techlib/access-control.pl/1998/980977.pdf.
175. A double-blind study is one in which neither the tester nor the person being tested knows the conditions of the test while it is being conducted. Id. at 5. This prevents the person being tested from gaining information about the test conditions from the tester. Id.
176. Id.
177. Id. at 6.
178. Id. at 7, 9.
179. Id. at 7.
180. Id. at 7-13.
181. Id. at 13.
182. See patents cited supra note 11.
183. U.S. Patent No. 5,748,088 (filed Nov. 27, 1996).
184. Id. figs.2-4, 6.
185. Id. fig.5.
186. The equations are not referred to again in the rest of the patent. See id.
187. Id. cols.1-2.
188. Id. fig.1.
189. Id. col.3.
190. For example, of the list of fifteen dielectrics in claim 22 of the patent, only air, water, and barium titanate appear in the table. See id. cols.3, 10.
191. Id. abstract.
192. See, e.g., Ray Hyman, The Mischief-Making of Ideomotor Action, in SCIENCE MEETS ALTERNATIVE MEDICINE: WHAT THE EVIDENCE SAYS ABOUT UNCONVENTIONAL TREATMENTS 95, 99, 113 (Wallace Sampson & Lewis Vaughn eds., 2000). The ideomotor effect is the psychological theory that the operator of a device, such as a Ouija Board or a dowsing rod, will subconsciously direct the device towards an intended goal. Id. at 113. This would also explain the perfect accuracy of the unblinded test in the Sandia Report. MURRAY, supra note 173, at 7, 9.
193. See Newman v. Quigg, 877 F.2d 1575, 1577 (Fed. Cir. 1989).
194. In re Citron, 325 F.2d 248, 253 (C.C.P.A. 1963).
195. See MURRAY, supra note 165, at 22-24.
196. U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.02(IV).
197. Voss, supra note 18, at 1254.
198. Id.
199. Id.
200. Id.
201. For a discussion of the relationship between utility and enablement, see supra Part II.B.
202. Voss, supra note 18, at 1254.
203. 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" of the prior art in the field of the invention); Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983) (holding that six factors were relevant to determining the level of ordinary skill in the art, including "sophistication of the technology" and the "educational level of active workers in the field"). See generally Joseph P. Meara, Just Who Is the Person Having Ordinary Skill in the Art? Patent Law's Mysterious Personage, 77 WASH. L. REV. 267, 276 (2002). Thus, the "person skilled in the art" is a hypothetical person whose level of skill may not match the skill of the individual examiner. Id.
204. U.S. Patent No. 6,362,718 (filed Sept. 6, 2000).
205. Id. fig.2.
206. Id. figs. 1,2.
207. Id. col.4.
208. Id.
209. Wikipedia, supra note 81.
210. The first law of thermodynamics states that energy is conserved in a closed system, while the second law states that the entropy, or amount of disorder, in a closed system always increases with time. WALTER GREINER ET AL., THERMODYNAMICS AND STATISTICAL MECHANICS 33, 41 (Dirk Rischke trans., 1995) (1987).
211. 35 U.S.C. § 101 (2000); In re Harwood, 390 F.2d 985, 989 (C.C.P.A. 1968).
212. See, e.g., 877 F.2d 1575, 1580 (Fed. Cir. 1989); see also supra Part II.A
213. '718 Patent cols.10-11.
214. Id. col.11.
215. Id.
216. Id.
217. The second objective in the summary is "to provide a magnetic generator in which a magnetic flux path is changed without a need to overpower a magnetic field to change its direction." '718 Patent col.4. Because the device simply diverts the direction of the magnetic flux from the permanent magnet, only a negligible amount of energy, if any, will be extracted from it. Further, if the device is a method of generating power from a permanent magnet, it seems counterintuitive to bury the description of this essential function in a single paragraph at column 11. Perhaps a better place to describe this function is in the title of the patent itself.
218. '718 Patent col.1.
219. The Tom Bearden Website, http://www.cheniere.org (last visited Nov. 1. 2006). Most scientists believe that extraction of energy from the vacuum violates the laws of thermodynamics for reasons that are beyond the scope of this commentary. See Wikipedia, Zero-Point Energy, http://en.wikipedia. org/wiki/Zero-point_energy (last visited Nov. 1, 2006).
220. The Tom Bearden Website, Links to Related Information, http://www.cheniere.org/links.htm (last visited Nov. 1, 2006).
221. The Tom Bearden Website, MEG Funding, http://www.cheniere.org/ correspondence/011905.htm (last visited Nov. 1, 2006).
222. These books include THOMAS E. BEARDEN, ENERGY FROM THE VACUUM: CONCEPTS AND PRINCIPLES (2002) and THOMAS BEARDEN, OBLIVION: AMERICA AT THE BRINK (2005).
223. See '718 Patent.
224. In addition to the arguments against operability given above, any device that claims to be capable of generating vast amounts of energy at little or no cost should be met with a degree of skepticism for the following reasons: First, any such working device would attract a large amount of investment in an efficient marketplace and would rapidly result in a commercial product. Second, lack of peer-reviewed publication suggests a lack of peer-reviewable results (although many fringe scientific groups are known to publish among themselves in overly credulous journals).
225. See supra notes 165-70 and accompanying text.
226. See supra Part II.B.
227. 35 U.S.C. § 114 (2000) ("The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention."); see also 37 C.F.R. § 1.91(b) (2006).
228. See Newman v. Quigg, 877 F.2d 1575, 1580-81 (Fed. Cir. 1989).
229. Lee Dye & Thomas H. Maugh II, Excitement and Skepticism: Fusion Claim Sparks Rush to Duplicate Experiment, L.A. TIMES, Mar. 25, 1989, at A1.
230. See, e.g., Toni Feder, Cold Fusion Gets Chilly Encore, PHYSICS TODAY, Jan. 2005, at 31, 31 ("Claims of cold fusion are no more convincing today than they were fifteen years ago.").
231. Dye & Maugh, supra note 228.
232. See Feder, supra note 229, at 31.
233. See, e.g., In re Swartz, 232 F.3d 862 (Fed. Cir. 2000); In re Dash, 118 F. App'x 488 (Fed. Cir. 2004).
234. See Feder, supra note 229, at 31.
235. 232 F.3d 862.
236. 118 F. App'x 488.
237. In re Swartz, 232 F.3d at 864; In re Dash, 118 F. App'x at 492.
238. Feder, supra note 229, at 31.
239. See GARRY MCCRACKEN & PETER STOTT, FUSION: THE ENERGY OF THE UNIVERSE 90-91 (2005).
240. See GARY TAUBES, BAD SCIENCE: THE SHORT LIFE AND WEIRD TIMES OF COLD FUSION (1993). For a less critical account, see EUGENE F. MALLOVE, FIRE FROM ICE: SEARCHING FOR THE TRUTH BEHIND THE COLD FUSION FUROR (1991).
241. 232 F.3d at 864.
242. Id.
243. Id.
244. Briefings, Cold Fusion Gets Warm Reception in Japan, ASEE PRISM, Mar. 2002, available at http://prism-magazine.org/mar02/ briefings.cfm.
245. 232 F.3d at 864.
246. 118 F. App'x 488, 492 (Fed. Cir. 2004).
247. Id.
248. Id.
249. Id.
250. U.S. Patent No. 5,845,220 (filed Aug. 23, 1993).
251. Ex parte Puthoff, No, 95-375, 1997 WL 1883784 (Bd. Pat. App. & Interf. Dec. 8, 1997).
252. '220 Patent col.4.
253. Id. col.5.
254. Ex parte Puthoff, 1997 WL 1883784, at *2.
255. See U.S. Patent & Trademark Office, supra note 142.
256. See '220 Patent cols.1-2.
257. See, e.g., DAVID J. GRIFFITHS, INTRODUCTION TO ELECTRODYNAMICS, at ix (3d ed. 1999).
258. RUBIN H. LANDAU, QUANTUM MECHANICS II: A SECOND COURSE IN QUANTUM THEORY 179-80 (2d ed. 1996).
259. ANTONIO BARONE & GIANFRANCO PATERNO, PHYSICS AND APPLICATIONS OF THE JOSEPHSON EFFECT, at viii (1982).
260. Ex parte Puthoff, 1997 WL 1883784, at *2.
261. Id. at *1.
262. Id. at *2. The patent also suggested that an actual working device was built and tested. U.S. Patent No. 5,845,220 col.8 (filed Aug. 23, 1993) ("In an actual experiment, it was found that the quasi-static conditions can be met easily for frequencies equal at least to 1.5 MHz.").
263. Landau, supra note 257, at 180.
264. J.B. KETTERSON & S.N. SONG, SUPERCONDUCTIVITY 61 (1999).
265. Ex parte Puthoff. 1997 WL 1883784, at *3. An extensive search of the relevant literature reveals that Puthoff is alone in studying the remarkable effect described in his patent. This suggests, perhaps, that the experts in the field may find it implausible. Unfortunately, a detailed theoretical deconstniction of Puthoff's experiments is well beyond the scope of this Comment.
266. Although an expert physicist and engineer, Puthoff is recognized in many circles because of his penchant for dabbling in unorthodox scientific endeavors. In addition to being a believer in harnessing zero-point energy for space travel, see Harold E. Puthoff et al., Engineering the Zero-Point Field and Polarizable Vacuum for Interstellar Flight, 55 J. BRITISH INTERPLANETARY SOC'Y 137 (2002), he also coauthored a positive article about controversial, self-proclaimed psychic Uri Geller in the prestigious journal Nature. Russell Targ & Harold Puthoff, Information Transmission Under Conditions of Sensory Shielding, 251 NATURE 602 (1974). It is possible that the examiner was aware of Puthoffs reputation and became more willing to treat the patent application as nonsensical rather than overly complex, but there is no evidence that this actually happened.
267. See MERGES & DUFFY, supra note 26, at 216.
268. Id.
269. See supra Parts IV.C-D.
270. See supra notes 20-24 and accompanying text.
271. See Voss, supra note 18, at 1252-53 (noting that a company managed to get a once-rejected cold fusion patent issued by carefully redrafting the patent to bypass nuclear science examiners in favor of electrochemical examiners).
272. Carl Shapiro, Patent System Reform: Economic Analysis and Critique, 19 BERKELEY TECH. L.J. 1017 (2004).
273. See Mandy Barbara Seuffert, Comment, Soft-Science Examiners at the USPTO: A Non-Obvious Solution to Reduce Erroneous Patent Grants, 10 MARQ. INTELL. PROP. L. REV. 111, 111 (2006)
274. In re Harwood, 390 F.2d 985, 989 (C.C.P.A. 1968).
275. See In re Gaubert, 524 F.2d 973, 977 (C.C.P. A. 1967).
276. Shapiro, supra note 271, at 1027.
277. See In re Chilowsky, 229 F.2d 457, 462 (C.C.P.A. 1956).
278. U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.2(III)(B).
279. Applicants may also be less likely to appeal after a rejection if the burden of proving operability is shifted to them.
280. This is not the case, of course, when patent examiners mistakenly classify operable patents as inoperable. See supra Part IV.D.
281. For example, in 1835, Auguste Comte echoed the scientific principles of the day by famously stating that the composition and temperature of stars are inherently unknowable facts. Neil deGrasse Tyson, Over the Rainbow, NAT. HIST., Sept. 2001, at 30, 32-33. Comte said this prior to the discovery of spectroscopy, a method for studying the composition of stars, among other things. Id. at 33.
282. 35 U.S.C. § 112 (2000); see also supra notes 199, 202.
283. See, e.g., In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999). There was a remarkable boom in the biotechnology industry as a result of Diamond v. Chakrabarty, 447 U.S. 303 (1980).
284. See Robin Feldman, Rethinking Rights in Biospace, 79 S. CAL. L. REV. 1, 2 (2005) ("Chakrabarty helped pave the way for the explosion in the biotechnology industry."). This lends some credence to the argument that denying patentability limits innovation insofar as lack of investment in biotechnology pre-Chakrabarty was related to the unavailability of patent protection. However, biotechnology is based on sound scientific principles, unlike the patents that are the subject of this Comment. To put it more bluntly, pseudoscientific innovation is an oxymoron.
285. See, e.g., supra Part IV.B.
286. See, e.g., Edwin S. Flores Troy, Publish and Perish: Patentability Aspects of Peer Review Misconduct, 5 TEX. INTELL. PROP. L.J. 47, 50-55 (1996). Even Albert Einstein had to suffer the occasional criticism of his peers. See Daniel Kennefick. Einstein Versus the Physical Review, PHYSICS TODAY, Sept. 2005, at 43, 43.
287. See, e.g., Physical Review Letters, Editorial Policies and Practices. http://prl.aps.org/info/polprocl.html (last visited Nov. 1, 2006).
288. Charles Jennings, The True Purpose of Peer Review: What You Can't Measure, You Can't Manage: The Need for Quantitative Indicators in Peer Review, NATURE, http://www.nature.com/nature/peerreview/debate/ nature05032.html.
289. Id.
290. See supra Part III. A.
291. The pros and cons of using a peer-review system to address other needed reforms in the patent system are beyond the scope of this Comment.
292. For a discussion of the perceived incompatibility of the academic peer-review system and the patent system, see Troy, supra note 284, at 63-64.
293. See id. at 56-59 (describing a misappropriation that allegedly occurred as a result of the peer-review process).
294. The ABA MODEL RULES OF PROF'L CONDUCT (2003) already provide significant protection to clients of patent attorneys. There is, for example, a conflict of interest rule for current clients, id. R. 1.8(b), a conflict of interest rule for former clients, id. R. 1.9(c)(1), and a rule of confidentiality for both present, id. R. 1.6(a), and former, id. R. 1.9(c)(2), clients that would directly apply to the above scenario.
295. 35 U.S.C. § 4 (2000).
296. See The Peer to Patent Project, Community Patent Review, http://dotank.nyls.edu/communitypatent (last visited Nov. 1, 2006); Beth Simone Noveck, "Peer to Patent": Collective Intelligence and Intellectual Property Reform, Mar. 2006, http://dotank.nyls.edu/communitypatent/ P2Patent_Apr_2006.pdf;
297. Eli Kintisch, PTO Wants to Tap Experts to Help Patent Examiners, 312 SCI. 982, 982 (2006).
298. Noveck, supra note 294, at 23-31.
299. Id. at 31-34.
300. Press Release, The Peer to Patent Project, Microsoft Signs On as a Lead Sponsor and Participant in the Community Patent Review Initiative (July 14, 2006), http://cairns.typepad.com/peertopatent/2006/07/microsoft_signs.html.
301. 35 U.S.C. § 122(b)(1)(A).
302. See supra Part III.B.
303. Id.
304. See discussion supra Parts V.A-B.
305. U.S. Patent & Trademark Office, supra note 155.