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Volumn 64, Issue 5, 2011, Pages 1491-1544

Patently impossible

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EID: 81855193756     PISSN: 00422533     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article
Times cited : (10)

References (475)
  • 2
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    • Rational ignorance at the patent office
    • 1500, hereinafter Lemley, Rational Ignorance arguing that inadequate examination leads the PTO to issue a large percentage of invalid patents
    • See, e.g., Mark A. Lemley, Rational Ignorance at the Patent Office, 95 NW. U. L. REV. 1495, 1500 (2001) [hereinafter Lemley, Rational Ignorance] (arguing that inadequate examination leads the PTO to issue a large percentage of invalid patents);
    • (2001) Nw. U. L. Rev. , vol.95 , pp. 1495
    • Lemley, M.A.1
  • 3
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    • Rethinking patent law's presumption of validity
    • 53-56, exploring limitations on the extent and quality of PTO review. One cause for the backlog is an increase in the number of patent application filings over time while the time available for examiners to review applications has remained constant
    • see also Doug Lichtman & Mark A. Lemley, Rethinking Patent Law's Presumption of Validity, 60 STAN. L. REV. 45, 53-56 (2007) (exploring limitations on the extent and quality of PTO review). One cause for the backlog is an increase in the number of patent application filings over time while the time available for examiners to review applications has remained constant.
    • (2007) Stan. L. Rev. , vol.60 , pp. 45
    • Lichtman, D.1    Lemley, M.A.2
  • 4
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    • Patent examination procedures and patent quality
    • 63 Wesley M. Cohen & Stephen A. Merrill eds., presenting an empirical study. Reform efforts began when reports surfaced in the early 2000s "that documented important failings in the patent system, including laxity in the PTO examination process that let a number of bad patents issue...."
    • See John L. King, Patent Examination Procedures and Patent Quality, in PATENTS IN THE KNOWLEDGE-BASED ECONOMY 54, 63 (Wesley M. Cohen & Stephen A. Merrill eds., 2003) (presenting an empirical study). Reform efforts began when reports surfaced in the early 2000s "that documented important failings in the patent system, including laxity in the PTO examination process that let a number of bad patents issue...."
    • (2003) Patents in the Knowledge-based Economy , pp. 54
    • King, J.L.1
  • 6
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    • supra note 2, finding that few patents are litigated or licensed and ninety-five percent of patents are never used
    • See, e.g., Lemley, Rational Ignorance, supra note 2, at 1511 (finding that few patents are litigated or licensed and ninety-five percent of patents are never used);
    • Rational Ignorance , pp. 1511
    • Lemley1
  • 7
    • 14544289220 scopus 로고    scopus 로고
    • contending that most patents are worthless. Wacky and absurd patents have received considerable attention in the popular media
    • see also ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS 173 (2004) (contending that most patents are worthless). Wacky and absurd patents have received considerable attention in the popular media.
    • (2004) Innovation and Its Discontents , pp. 173
    • Jaffe, A.B.1    Lerner, J.2
  • 9
    • 0013285506 scopus 로고    scopus 로고
    • Patently absurd
    • Mar. 12
    • James Gleick, Patently Absurd, N. Y. TIMES MAG., Mar. 12, 2000, at 44.
    • (2000) N. Y. Times Mag. , pp. 44
    • Gleick, J.1
  • 10
    • 81855205373 scopus 로고    scopus 로고
    • Perpetual motion machine
    • A perpetual motion machine can run forever without any input of external power, meaning that it can do work without consuming energy. The oft-cited technical objection is that perpetual motion violates the Second Law of Thermodynamics, which holds that a machine cannot be 100 percent efficient because it can only use a fraction of the energy it receives for work and must lose a significant portion to the environment as heat, usually through friction. See discussion infra note 265; see also, 53-57
    • A perpetual motion machine can run forever without any input of external power, meaning that it can do work without consuming energy. The oft-cited technical objection is that perpetual motion violates the Second Law of Thermodynamics, which holds that a machine cannot be 100 percent efficient because it can only use a fraction of the energy it receives for work and must lose a significant portion to the environment as heat, usually through friction. See discussion infra note 265; see also Dimitris Tsaousis, Perpetual Motion Machine, 1 J. ENGINEERING SCI. & TECH. REV. 53, 53-57 (2008).
    • (2008) J. Engineering Sci. & Tech. Rev. , vol.1 , pp. 53
    • Tsaousis, D.1
  • 11
    • 81855193201 scopus 로고    scopus 로고
    • See In re Swartz, 864 Fed. Cir, per curiam affirming the PTO's rejection of a cold fusion device. Cold fusion describes a nuclear fusion reaction with hydrogen that occurs at room temperature. Given that the fuel comes from water, a cold fusion apparatus could provide a limitless and nonpolluting source of energy
    • See In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) (per curiam) (affirming the PTO's rejection of a cold fusion device). Cold fusion describes a nuclear fusion reaction with hydrogen that occurs at room temperature. Given that the fuel comes from water, a cold fusion apparatus could provide a limitless and nonpolluting source of energy.
    • (2000) F.3d , vol.232 , pp. 862
  • 12
    • 81855189802 scopus 로고    scopus 로고
    • Critics contend that cold fusion is incompatible with nuclear physics, which holds that hydrogen fusion requires temperatures of millions of degrees Fahrenheit-as at the Sun's core. Id
    • See ERIC G. SWEDIN, SCIENCE IN THE CONTEMPORARY WORLD 57-58 (2005). Critics contend that cold fusion is incompatible with nuclear physics, which holds that hydrogen fusion requires temperatures of millions of degrees Fahrenheit-as at the Sun's core. Id.
    • (2005) Science in the Contemporary World , pp. 57-58
    • Swedin, E.G.1
  • 13
    • 80055026670 scopus 로고    scopus 로고
    • "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter... may obtain a patent....", §, emphasis added. Aside from utility, an invention must be novel, § 102, nonobvious, § 103, and directed to patentable subject matter, § 101. In addition, § 112 ¶ 1 requires that the application adequately disclose the invention and § 112 ¶ 2 requires that the application conclude with claims which delineate the invention with particularity
    • "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter... may obtain a patent...." 35 U. S. C. § 101 (2006) (emphasis added). Aside from utility, an invention must be novel, § 102, nonobvious, § 103, and directed to patentable subject matter, § 101. In addition, § 112 ¶ 1 requires that the application adequately disclose the invention and § 112 ¶ 2 requires that the application conclude with claims which delineate the invention with particularity.
    • (2006) U. S. C. , vol.35 , pp. 101
  • 14
    • 84886522533 scopus 로고    scopus 로고
    • See Process Control Corp. v. HydReclaim Corp., 1358, Fed. Cir
    • See Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 (Fed. Cir. 1999)
    • (1999) F.3d , vol.190 , pp. 1350
  • 15
    • 84886488093 scopus 로고    scopus 로고
    • "The utility requirement of, §, mandates that any patentable invention be useful and, accordingly, the subject matter of the claim must be operable."
    • ("The utility requirement of 35 U. S. C. § 101 mandates that any patentable invention be useful and, accordingly, the subject matter of the claim must be operable.");
    • U. S. C. , vol.35 , pp. 101
  • 16
    • 33845209047 scopus 로고
    • Newman v. Quigg, 1581 Fed. Cir, "A device lacks utility if it does not operate to produce what the inventor claims that it does." citation omitted
    • Newman v. Quigg, 877 F.2d 1575, 1581 (Fed. Cir. 1989) ("[A] device lacks utility [if] it does not operate to produce what the [inventor] claims [that] it does." (citation omitted));
    • (1989) F.2d , vol.877 , pp. 1575
  • 17
    • 81855205376 scopus 로고
    • cf. In re Perrigo, 966 C. C. P. A, "It is fundamental in patent law that an alleged invention... must appear capable of doing the things claimed....". The U. S. Court of Customs and Patent Appeals "C. C. P. A." was a predecessor to the U. S. Court of Appeals for the Federal Circuit "Federal Circuit". The Federal Courts Improvement Act of 1982 abolished the C. C. P. A
    • cf. In re Perrigo, 48 F.2d 965, 966 (C. C. P. A. 1931) ("It is fundamental in patent law that an alleged invention... must appear capable of doing the things claimed...."). The U. S. Court of Customs and Patent Appeals ("C. C. P. A.") was a predecessor to the U. S. Court of Appeals for the Federal Circuit ("Federal Circuit"). The Federal Courts Improvement Act of 1982 abolished the C. C. P. A.
    • (1931) F.2d , vol.48 , pp. 965
  • 18
    • 81855205379 scopus 로고    scopus 로고
    • See Pub. L. No. 97-164, codified as amended in scattered sections of 28 U. S. C.. Soon after its creation, the Federal Circuit adopted the C. C. P. A. decisional law as binding precedent
    • See Pub. L. No. 97-164, 96 Stat. 25 (codified as amended in scattered sections of 28 U. S. C.). Soon after its creation, the Federal Circuit adopted the C. C. P. A. decisional law as binding precedent.
    • Stat. , vol.96 , pp. 25
  • 19
    • 84879961453 scopus 로고
    • See South Corp. v. United States, 1370 Fed. Cir, en banc
    • See South Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc).
    • (1982) F.2d , vol.690 , pp. 1368
  • 20
    • 33845211352 scopus 로고
    • PHOSITA is a hypothetical construct of patent law. See Panduit Corp. v. Dennison Mfg. Co., 1566 Fed. Cir, explaining that a PHOSITA is "not unlike the 'reasonable man' and other ghosts in the law". Factors relevant to constructing the PHOSITA in a particular technical field include the sophistication of the technology, the inventor's educational level, the educational level of active workers in the field, the types of problems encountered in the art, prior art solutions to those problems, and the rapidity with which innovations are made
    • The PHOSITA is a hypothetical construct of patent law. See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566 (Fed. Cir. 1987) (explaining that a PHOSITA is "not unlike the 'reasonable man' and other ghosts in the law"). Factors relevant to constructing the PHOSITA in a particular technical field include the sophistication of the technology, the inventor's educational level, the educational level of active workers in the field, the types of problems encountered in the art, prior art solutions to those problems, and the rapidity with which innovations are made.
    • (1987) F.2d , vol.810 , pp. 1561
  • 21
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    • Envtl. Designs, Ltd. v. Union Oil Co., 697 Fed. Cir
    • Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir. 1983).
    • (1983) F.2d , vol.713 , pp. 693
  • 22
    • 33845190553 scopus 로고    scopus 로고
    • PTO can establish reasonable doubt if the applicant's disclosure "suggests an inherently unbelievable undertaking or involves implausible scientific principles." In re Cortright, 1357 Fed. Cir
    • The PTO can establish reasonable doubt if the applicant's disclosure "suggest[s] an inherently unbelievable undertaking or involve[s] implausible scientific principles." In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999)
    • (1999) F.3d , vol.165 , pp. 1353
  • 23
    • 0041446429 scopus 로고    scopus 로고
    • quoting In re Brana, 1566 Fed. Cir, A finding of inoperativeness means that the claimed invention is not supported by a credible utility. Id. at 1356
    • (quoting In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)). A finding of inoperativeness means that the claimed invention is not supported by a credible utility. Id. at 1356;
    • (1995) F.3d , vol.51 , pp. 1560
  • 24
    • 81855166195 scopus 로고    scopus 로고
    • available at, "A utility that is inoperative is not credible."; id. at 5 "A credible utility is assessed from the standpoint of whether a PHOSITA would accept that the recited or disclosed invention is currently available for such use.". For a discussion of the other facets of the § 101 utility requirement, see discussion infra note 43
    • see also U. S. PATENT & TRADEMARK OFFICE, REVISED INTERIM UTILITY GUIDELINES TRAINING MATERIALS 11(1999), available at http://www.uspto.gov/web/ offices/pac/utility/utilityguide.pdf ("[A] utility that is inoperative is not credible."); id. at 5 ("A credible utility is assessed from the standpoint of whether a [PHOSITA] would accept that the recited or disclosed invention is currently available for such use."). For a discussion of the other facets of the § 101 utility requirement, see discussion infra note 43.
    • (1999) U. S. Patent & Trademark Office, Revised Interim Utility Guidelines Training Materials , pp. 11
  • 25
    • 81855210276 scopus 로고
    • In re Ferens, 1074 C. C. P. A
    • In re Ferens, 417 F.2d 1072, 1074 (C. C. P. A. 1969).
    • (1969) F.2d , vol.417 , pp. 1072
  • 26
    • 81855166192 scopus 로고
    • On operability as an aspect of patent law
    • This is the first article to comprehensively explore incredible inventions and to seriously challenge operability as a patentability requirement. Only a few articles have previously explored operability. See generally
    • This is the first article to comprehensively explore incredible inventions and to seriously challenge operability as a patentability requirement. Only a few articles have previously explored operability. See generally Robert Ederer, On Operability as an Aspect of Patent Law, 42 J. PAT. OFF. SOC'Y 398 (1960);
    • (1960) J. Pat. Off. Soc'y , vol.42 , pp. 398
    • Ederer, R.1
  • 27
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    • Comment, a case study of inoperable inventions: Why is the USPTO patenting pseudoscience?
    • Daniel C. Rislove, Comment, A Case Study of Inoperable Inventions: Why is the USPTO Patenting Pseudoscience?, 2006 WIS. L. REV. 1275 (2006).
    • (2006) Wis. L. Rev. , vol.2006 , pp. 1275
    • Rislove, D.C.1
  • 28
    • 57149088894 scopus 로고    scopus 로고
    • Heightened enablement in the unpredictable arts
    • hereinafter Seymore, Heightened Enablement proposing a new approach for examining patent applications in unpredictable technologies which, by requiring applicants to disclose actual experimental results, resolves a striking incongruity between patent law and the experimental sciences
    • See generally Sean B. Seymore, Heightened Enablement in the Unpredictable Arts, 56 UCLA L. REV. 127 (2008) [hereinafter Seymore, Heightened Enablement] (proposing a new approach for examining patent applications in unpredictable technologies which, by requiring applicants to disclose actual experimental results, resolves a striking incongruity between patent law and the experimental sciences);
    • (2008) Ucla L. Rev. , vol.56 , pp. 127
    • Seymore, S.B.1
  • 29
    • 78851472042 scopus 로고    scopus 로고
    • Rethinking novelty in patent law
    • hereinafter Seymore, Rethinking Novelty arguing that current novelty doctrine can produce paradoxical outcomes for complex inventions and is seemingly incongruous with basic principles of patent law
    • Sean B. Seymore, Rethinking Novelty in Patent Law, 60 DUKE L. J. 919 (2011) [hereinafter Seymore, Rethinking Novelty] (arguing that current novelty doctrine can produce paradoxical outcomes for complex inventions and is seemingly incongruous with basic principles of patent law);
    • (2011) Duke L. J. , vol.60 , pp. 919
    • Seymore, S.B.1
  • 30
    • 78851471003 scopus 로고    scopus 로고
    • Serendipity
    • arguing that although accidental discoveries pervade science, inventors who invent by accident can be unjustly deprived of patents because such discoveries do not mesh with the substantive law of invention
    • Sean B. Seymore, Serendipity, 88 N. C. L. REV. 185 (2009) (arguing that although accidental discoveries pervade science, inventors who invent by accident can be unjustly deprived of patents because such discoveries do not mesh with the substantive law of invention);
    • (2009) N. C. L. Rev. , vol.88 , pp. 185
    • Seymore, S.B.1
  • 31
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    • The teaching function of patents
    • hereinafter Seymore, Teaching Function proposing a disclosure regime that would allow patents to compete with other forms of technical literature as a source of substantive technical information
    • Sean B. Seymore, The Teaching Function of Patents, 85 NOTRE DAME L. REV. 621 (2010) [hereinafter Seymore, Teaching Function] (proposing a disclosure regime that would allow patents to compete with other forms of technical literature as a source of substantive technical information).
    • (2010) Notre Dame L. Rev. , vol.85 , pp. 621
    • Seymore, S.B.1
  • 32
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    • "Scientists like to show that things widely held to be impossible are in fact entirely possible....", For instance, K. C. Nicolaou-a prolific organic chemist who is the author or coauthor of over 700 scientific publications and an inventor on more than 60 patents-admits that his favorite synthetic targets are ones that "look impossible at first glance" and "provide an opportunity to discover or invent new science." 2005 ACS National Award Winners
    • "Scientists like to show that things widely held to be impossible are in fact entirely possible...." JOHN D. BARROW, IMPOSSIBILITY, at vii (1998). For instance, K. C. Nicolaou-a prolific organic chemist who is the author or coauthor of over 700 scientific publications and an inventor on more than 60 patents-admits that his favorite synthetic targets are ones that "look impossible at first glance" and "provide an opportunity to discover or invent new science." 2005 ACS National Award Winners
    • (1998) Impossibility
    • Barrow, J.D.1
  • 34
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    • Presentation of the roebling medal of the mineralogical society of America for 1976 to Carl W. Correns
    • 603
    • Gustaf Arrhenius, Presentation of the Roebling Medal of the Mineralogical Society of America for 1976 to Carl W. Correns, 62 AM. MINERALOGIST 603, 603 (1977).
    • (1977) Am. Mineralogist , vol.62 , pp. 603
    • Arrhenius, G.1
  • 35
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    • Jumping genes
    • This has even been the case for many Nobel Prize-winning achievements. For instance, Barbara McClintock, recipient of the 1971 National Medal of Science and the 1983 Nobel Prize in Physiology or Medicine for her pioneering work in cytogenetics, recounted that "fellow scientists called me crazy, absolutely mad at times.", Nov. 30, Although McClintock published her findings in 1951, it took the scientific community over thirty years to overcome its skepticism because "the prevailing wisdom was that genetic structure was stable and immutable." Id
    • This has even been the case for many Nobel Prize-winning achievements. For instance, Barbara McClintock, recipient of the 1971 National Medal of Science and the 1983 Nobel Prize in Physiology or Medicine for her pioneering work in cytogenetics, recounted that "[fellow scientists] called me crazy, absolutely mad at times." Jumping Genes, TIME, Nov. 30, 1981, at 106. Although McClintock published her findings in 1951, it took the scientific community over thirty years to overcome its skepticism because "the prevailing wisdom was that genetic structure was stable and immutable." Id.
    • (1981) Time , pp. 106
  • 36
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    • Total synthesis of taxol
    • Perhaps the best evidence of vindication is the numerous reports in technical journals of results long considered unachievable. A good example is K. C. Nicolaou's total synthesis of the top-selling anticancer drug Taxol. See, 630-34, This achievement, "considered as the 'holy grail' of synthesis in the late 1980s and early 1990s... stands as the quintessential symbol of all natural products molecular complexity, and... is the single most important milestone of complex molecular construction in recent decades." Cover Legend K. C. Nicolaou
    • Perhaps the best evidence of vindication is the numerous reports in technical journals of results long considered unachievable. A good example is K. C. Nicolaou's total synthesis of the top-selling anticancer drug Taxol. See K. C. Nicolaou et al., Total Synthesis of Taxol, 367 NATURE 630, 630-34 (1994). This achievement, "considered as the 'holy grail' of synthesis in the late 1980s and early 1990s... stands as the quintessential symbol of all natural products molecular complexity, and... [is] the single most important milestone of complex molecular construction in recent decades." Cover Legend [K. C. Nicolaou]
    • (1994) Nature , vol.367 , pp. 630
    • Nicolaou, K.C.1
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    • 300
    • INT'L J. ONCOLOGY 299, 300 (2009).
    • (2009) Int'l J. Oncology , vol.34 , pp. 299
  • 38
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    • Ueber künstliche bildung des harnstoffs
    • most striking example is the field of organic chemistry, which became an area of systematic study in 1828 only after Friedrich Wöhler accidentally synthesized urea from mixing two inorganic salts. See, 253-56 1828
    • The most striking example is the field of organic chemistry, which became an area of systematic study in 1828 only after Friedrich Wöhler accidentally synthesized urea from mixing two inorganic salts. See Friedrich Wöhler, Ueber künstliche Bildung des Harnstoffs [On the Artificial Formation of Urea], 88 ANNALEN der PHYSIK UND CHEMIE 253, 253-56 (1828);
    • Annalen Der Physik Und Chemie , vol.88 , pp. 253
    • Wöhler, F.1
  • 39
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    • presenting a historical account. This event, heralded as the first organic synthesis, shattered the prevailing belief that man could never make any substance extracted from living things. See id. at 163-64 discussing vitalism
    • see also AARON J. IHDE, THE DEVELOPMENT OF MODERN CHEMISTRY 163-65 (1964) (presenting a historical account). This event, heralded as the first organic synthesis, shattered the prevailing belief that man could never make any substance extracted from living things. See id. at 163-64 (discussing vitalism).
    • (1964) The Development of Modern Chemistry , pp. 163-165
    • Ihde, A.J.1
  • 40
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    • chemists long believed that it was impossible for carbon to form fewer than four bonds when it occurred in an organic compound. See, e.g., George M'Gowan trans., describing carbon's bonding tendencies. In 1900, a chemistry professor at the University of Michigan published a paper describing an organic molecule in which carbon only formed three bonds
    • For example, chemists long believed that it was impossible for carbon to form fewer than four bonds when it occurred in an organic compound. See, e.g., AUGUST BERNTHSEN, A TEXTBOOK OF ORGANIC CHEMISTRY 14-16 (George M'Gowan trans., 1891) (describing carbon's bonding tendencies). In 1900, a chemistry professor at the University of Michigan published a paper describing an organic molecule in which carbon only formed three bonds.
    • (1891) A Textbook of Organic Chemistry , pp. 14-16
    • Bernthsen, A.1
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    • An instance of trivalent carbon: Triphenylmethyl
    • The chemistry community did not accept Gomberg's explanation for his result until decades later
    • See generally Moses Gomberg, An Instance of Trivalent Carbon: Triphenylmethyl, 22 J. AM. CHEMICAL SOC'Y 757 (1900). The chemistry community did not accept Gomberg's explanation for his result until decades later.
    • (1900) J. Am. Chemical Soc'y , vol.22 , pp. 757
    • Gomberg, M.1
  • 42
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    • The history of free radicals and moses gomberg's contributions
    • 9-14, Gomberg's work shed new light on chemical bonding and led scientists to realize that free radicals play a large role in natural phenomena
    • See Aaron J. Ihde, The History of Free Radicals and Moses Gomberg's Contributions, 15 PURE & APPLIED CHEMISTRY 1, 9-14 (1967). Gomberg's work shed new light on chemical bonding and led scientists to realize that free radicals play a large role in natural phenomena.
    • (1967) Pure & Applied Chemistry , vol.15 , pp. 1
    • Ihde, A.J.1
  • 44
    • 81855166177 scopus 로고    scopus 로고
    • Scientific progress is "the cumulative growth of a system of knowledge over time, in which useful features are retained and nonuseful features are abandoned, based on the rejection or confirmation of testable knowledge."
    • Scientific progress is "the cumulative growth of a system of knowledge over time, in which useful features are retained and nonuseful features are abandoned, based on the rejection or confirmation of testable knowledge." MICHAEL SHERMER, WHY PEOPLE BELIEVE WEIRD THINGS 31 (2002).
    • (2002) Michael Shermer, Why People Believe Weird Things , pp. 31
  • 45
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    • These categories are somewhat similar to those used by others. See, e.g., In re Chilowsky, 462 C. C. P. A, articulating three categories of inoperable inventions
    • These categories are somewhat similar to those used by others. See, e.g., In re Chilowsky, 229 F.2d 457, 462 (C. C. P. A. 1956) (articulating three categories of inoperable inventions);
    • (1956) F.2d , vol.229 , pp. 457
  • 46
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    • First Anchor Books, dividing impossibilities into three broad categories
    • MICHIO KAKU, PHYSICS OF THE IMPOSSIBLE, at xvii (First Anchor Books 2009) (dividing impossibilities into three broad categories).
    • (2009) Physics of the Impossible
    • Kaku, M.1
  • 47
    • 0004242658 scopus 로고
    • See 1, §, exploring the history of alchemy. Alchemists believed that "just as the hardness, colour, fusibility, and other properties of certain metals can be altered, so must it be possible to change all the properties of one metal into those of another, and thus produce a veritable transmutation. " Id. As scientists began to understand nuclear physics, they learned how to transform one element into another with radioactivity. For a description of the first artificial atomic transmutation
    • See 1 J. W. MELLOR, A COMPREHENSIVE TREATISE ON INORGANIC AND THEORETICAL CHEMISTRY § 12 (1922) (exploring the history of alchemy). Alchemists believed that "just as the hardness, colour, fusibility, and other properties of certain metals can be altered, so must it be possible to change all the properties of one metal into those of another, and thus produce a veritable transmutation. " Id. As scientists began to understand nuclear physics, they learned how to transform one element into another with radioactivity. For a description of the first artificial atomic transmutation
    • (1922) A Comprehensive Treatise on Inorganic and Theoretical Chemistry , pp. 12
    • Mellor, J.W.1
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    • 77949349121 scopus 로고    scopus 로고
    • Alternative coinages include "junk science" and "pathological science."
    • Alternative coinages include "junk science" and "pathological science." BRIAN STABLEFORD, SCIENCE FACT AND SCIENCE FICTION 410 (2006).
    • (2006) Science Fact and Science Fiction , pp. 410
    • Stableford, B.1
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    • 81855186114 scopus 로고    scopus 로고
    • see also Shermer, supra note 22, at 33 defining pseudoscience as "claims presented so that they appear scientific even though they lack supporting evidence and plausibility". Commentators differ in their views on the impact of pseudoscience on scientific progress
    • GILA GAT-TILMAN, SCIENCE, PSEUDOSCIENCE, AND MORAL VALUES 20 (2007); see also Shermer, supra note 22, at 33 (defining pseudoscience as "claims presented so that they appear scientific even though they lack supporting evidence and plausibility"). Commentators differ in their views on the impact of pseudoscience on scientific progress.
    • (2007) Science, Pseudoscience, and Moral Values , pp. 20
    • Gat-Tilman, G.1
  • 51
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    • Compare, arguing that pseudoscience does not help and often impedes the advance of human knowledge
    • Compare JOHN GRANT, DISCARDED SCIENCE 9 (2006) (arguing that pseudoscience does not help and often impedes the advance of human knowledge)
    • (2006) Discarded Science , pp. 9
    • Grant, J.1
  • 52
    • 0347555834 scopus 로고    scopus 로고
    • with, noting that chemistry and astronomy have pseudoscientific origins, and that Darwin's theory of evolution morphed from pseudoscience to orthodoxy
    • with RIKI G. A. DOLBY, UNCERTAIN KNOWLEDGE 207 (2002) (noting that chemistry and astronomy have pseudoscientific origins, and that Darwin's theory of evolution morphed from pseudoscience to orthodoxy).
    • (2002) Uncertain Knowledge , pp. 207
    • Dolby, R.G.A.1
  • 53
    • 81855166191 scopus 로고    scopus 로고
    • Extrasensory perception, the "sixth sense", is an awareness beyond the ordinary senses of hearing, sight, smell, taste, and touch, Thunder's Mouth Press
    • Extrasensory perception, the "sixth sense", is an awareness beyond the ordinary senses of hearing, sight, smell, taste, and touch. LYNNE KELLY, THE SKEPTIC'S GUIDE TO THE PARANORMAL 125 (Thunder's Mouth Press 2004).
    • (2004) The Skeptic's Guide to the Paranormal , pp. 125
    • Kelly, L.1
  • 54
    • 30344481426 scopus 로고
    • describing the construction and operation of the cage and its effect on ESP
    • See ANDRIJA PUHARICH, BEYOND TELEPATHY 211-25 (1973) (describing the construction and operation of the cage and its effect on ESP);
    • (1973) Beyond Telepathy , pp. 211-225
    • Puharich, A.1
  • 55
    • 81855205357 scopus 로고
    • Electrical field reinforcement of ESP
    • 175-83, discussing general principles. Puharich tried to patent his device
    • Andrija Puharich, Electrical Field Reinforcement of ESP, 9 INT'L J. PARAPSYCHOL. 175, 175-83 (1967) (discussing general principles). Puharich tried to patent his device.
    • (1967) Int'l J. Parapsychol , vol.9 , pp. 175
    • Puharich, A.1
  • 56
    • 81855205374 scopus 로고
    • See Puharich v. Brenner, 981-83 D. C. Cir, affirming the PTO's rejection. Aside from doubting the results of the electrified cage experiments, most scientists remain skeptical about ESP. See infra note 32
    • See Puharich v. Brenner, 415 F.2d 979, 981-83 (D. C. Cir. 1969) (affirming the PTO's rejection). Aside from doubting the results of the electrified cage experiments, most scientists remain skeptical about ESP. See infra note 32.
    • (1969) F.2d , vol.415 , pp. 979
  • 57
    • 0347559231 scopus 로고    scopus 로고
    • 9th ed, "ESP cannot be evaluated because only believers can be present when it is demonstrated. The scientist takes a dim view of this logic and most scientists, especially psychologists, are skeptical about ESP."
    • See, e.g., BARRY H. KANTOWITZ ET AL., EXPERIMENTAL PSYCHOLOGY 15 (9th ed. 2008) ("ESP cannot be evaluated[] because only believers can be present when it is demonstrated. The scientist takes a dim view of this logic and most scientists, especially psychologists, are skeptical about ESP.").
    • (2008) Experimental Psychology , pp. 15
    • Kantowitz, B.H.1
  • 58
    • 0012170628 scopus 로고    scopus 로고
    • contending that pseudoscientists over-rely on anecdotal evidence, which is insufficient to justify a claim and is rarely dispositive
    • See SCOTT O. LILIENFELD ET AL., SCIENCE AND PSEUDOSCIENCE IN CLINICAL PSYCHOLOGY 8 (2004) (contending that pseudoscientists over-rely on anecdotal evidence, which is insufficient to justify a claim and is rarely dispositive);
    • (2004) Science and Pseudoscience in Clinical Psychology , pp. 8
    • Lilienfeld, S.O.1
  • 59
    • 84919875837 scopus 로고    scopus 로고
    • 2d ed, "The ability of other investigators to replicate the experiments by following the method in the published report is crucial to the advancement of science."
    • ADIL E. SHAMOO & DAVID B. RESNIK, RESPONSIBLE CONDUCT OF RESEARCH 51 (2d ed. 2009) ("The ability of other investigators to replicate the experiments by following the method in the published report is crucial to the advancement of science.").
    • (2009) Responsible Conduct of Research , pp. 51
    • Shamoo, A.E.1    Resnik, D.B.2
  • 60
    • 0007107236 scopus 로고    scopus 로고
    • Unlike real science, where old ideas and knowledge evolve in light of new discoveries or growth in understanding, in pseudoscience ideas do not progress because there is no anchor in an established, foundational body of knowledge, Thus, ideas remain static because there is no reason to accept one idea over another. Id
    • Unlike real science, where old ideas and knowledge evolve in light of new discoveries or growth in understanding, in pseudoscience ideas do not progress because there is no anchor in an established, foundational body of knowledge. GREGORY N. DERRY, WHAT SCIENCE IS AND HOW IT WORKS 159 (1999). Thus, ideas remain static because there is no reason to accept one idea over another. Id.
    • (1999) What Science is and How it Works , pp. 159
    • Derry, G.N.1
  • 61
    • 33644829385 scopus 로고    scopus 로고
    • Peer review revisited
    • Peer review refers to the screening of research results by colleagues in a particular discipline, 1, Pseudoscientists may evade peer review because they fear that the process is inherently biased against their claims particularly if it conflicts with well-established paradigms or if their research methodologies do not conform to the scientific method. LILIENFELD ET AL., supra note 33, at 6
    • Peer review refers to the screening of research results by colleagues in a particular discipline. Peter Hernon & Candy Schwartz, Peer Review Revisited, 28 LIBR. & INFO. SCI. RES. 1, 1 (2006). Pseudoscientists may evade peer review because they fear that the process is inherently biased against their claims (particularly if it conflicts with well-established paradigms) or if their research methodologies do not conform to the scientific method. LILIENFELD ET AL., supra note 33, at 6.
    • (2006) Libr. & Info. Sci. Res. , vol.28 , pp. 1
    • Hernon, P.1    Schwartz, C.2
  • 62
    • 33847281755 scopus 로고    scopus 로고
    • The development of a bioengineered organ germ methods
    • 227-30, describing a technique where researchers grew a budding tooth in a Petri dish and then transplanted it into the an empty cavity in a mouse's mouth, where it grew to full size
    • See, e.g., Kazuhisa Nakao et al., The Development of a Bioengineered Organ Germ Methods, 4 NATURE METHODS 227, 227-30 (2007) (describing a technique where researchers grew a budding tooth in a Petri dish and then transplanted it into the an empty cavity in a mouse's mouth, where it grew to full size);
    • (2007) Nature Methods , vol.4 , pp. 227
    • Nakao, K.1
  • 63
    • 61349144922 scopus 로고    scopus 로고
    • Antagonistic actions of Msx1 and Osr2 pattern mammalian teeth into a single row
    • 1232-34, reporting that deleting a specific gene in mice led them to grow extra teeth. Both groups believe that their findings will help elucidate how nature makes teeth and, eventually, lead to tooth regeneration in humans
    • Zunyi Zhang et al., Antagonistic Actions of Msx1 and Osr2 Pattern Mammalian Teeth into a Single Row, 323 SCIENCE 1232, 1232-34 (2009) (reporting that deleting a specific gene in mice led them to grow extra teeth). Both groups believe that their findings will help elucidate how nature makes teeth and, eventually, lead to tooth regeneration in humans.
    • (2009) Science , vol.323 , pp. 1232
    • Zhang, Z.1
  • 64
    • 3142766997 scopus 로고    scopus 로고
    • Nanotechnology is an excellent example. It is a field of applied science based on the fabrication, control, and manipulation of materials on the atomic or molecular scale one billionth of a meter, In a famous speech that he delivered to the American Physical Society over five decades ago, Nobel Laureate Richard Feynman predicted that one day scientists would be able to manipulate matter on the atomic or molecular scale
    • Nanotechnology is an excellent example. It is a field of applied science based on the fabrication, control, and manipulation of materials on the atomic or molecular scale (one billionth of a meter). CHARLES P. POOLE, JR. & FRANK J. OWENS, INTRODUCTION TO NANOTECHNOLOGY 1 (2003). In a famous speech that he delivered to the American Physical Society over five decades ago, Nobel Laureate Richard Feynman predicted that one day scientists would be able to manipulate matter on the atomic or molecular scale.
    • (2003) Introduction to Nanotechnology , pp. 1
    • Poole Jr., C.P.1    Owens, F.J.2
  • 65
    • 0742317633 scopus 로고    scopus 로고
    • There's plenty of room at the bottom (Dec. 29, 1959)
    • Jeffrey Robbins ed., It now appears that nanotechnology has endless possibilities, including nanoscale drug delivery systems, nanosurgery, nanorobots, nanomachines, and nanoelectronics
    • See generally Richard Feynman, There's Plenty of Room at the Bottom (Dec. 29, 1959), in THE PLEASURE OF FINDING THINGS OUT 117 (Jeffrey Robbins ed., 2000). It now appears that nanotechnology has endless possibilities, including nanoscale drug delivery systems, nanosurgery, nanorobots, nanomachines, and nanoelectronics.
    • (2000) The Pleasure of Finding Things Out , pp. 117
    • Feynman, R.1
  • 66
    • 68249090930 scopus 로고    scopus 로고
    • The federal government spent nearly $1.5 billion on nanotechnology research in 2009, which is up from $464 million in 2001
    • See generally FRITZ ALLHOFF ET AL., WHAT IS NANOTECHNOLOGY AND WHY DOES IT MATTER? (2010). The federal government spent nearly $1.5 billion on nanotechnology research in 2009, which is up from $464 million in 2001.
    • (2010) What is Nanotechnology and Why Does it Matter?
    • Allhoff, F.1
  • 67
    • 81855205366 scopus 로고    scopus 로고
    • See NNI Budget, last visited Oct. 11
    • See NNI Budget, NAT'L NANOTECHNOLOGY INITIATIVE, http://nano. gov/about-nni/what/funding (last visited Oct. 11, 2011).
    • (2011) Nat'l Nanotechnology Initiative
  • 68
    • 33845217884 scopus 로고
    • See Kewanee Oil Co. v. Bicron Corp., 481, explaining that the information disclosed in the patent adds to the public storehouse of knowledge
    • See Kewanee Oil Co. v. Bicron Corp., 416 U. S. 470, 481 (1974) (explaining that the information disclosed in the patent adds to the public storehouse of knowledge);
    • (1974) U. S. , vol.416 , pp. 470
  • 69
    • 33845218638 scopus 로고
    • Brenner v. Manson, 533, "It is true, of course, that one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions."
    • Brenner v. Manson, 383 U. S. 519, 533 (1966) ("It is true, of course, that one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions.");
    • (1966) U. S. , vol.383 , pp. 519
  • 70
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    • Graham v. John Deere Co., 9, describing a patent as "an inducement, to bring forth new knowledge"
    • Graham v. John Deere Co., 383 U. S. 1, 9 (1966) (describing a patent as "an inducement, to bring forth new knowledge").
    • (1966) U. S. , vol.383 , pp. 1
  • 71
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    • In re Gazave, 978 C. C. P. A
    • In re Gazave, 379 F.2d 973, 978 (C. C. P. A. 1967).
    • (1967) F.2d , vol.379 , pp. 973
  • 72
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    • See supra note 8 and accompanying text. In addition to operability or "credible" utility, the utility requirement of § 101 has two other parts. See generally U. S. Patent and Trademark Office Utility Examination Guidelines, Jan. 5, discussing substantial, specific, and credible utility
    • See supra note 8 and accompanying text. In addition to operability (or "credible" utility), the utility requirement of § 101 has two other parts. See generally U. S. Patent and Trademark Office Utility Examination Guidelines, 66 Fed. Reg. 1092 (Jan. 5, 2001) (discussing substantial, specific, and credible utility)
    • (2001) Fed. Reg , vol.66 , pp. 1092
  • 73
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    • cited with approval in In re Fisher, 1372 Fed. Cir, Substantial utility requires that the invention "provide a significant and presently available benefit to the public." Id. at 1371. Specific utility requires that the invention provide "a well-defined and particular benefit to the public." Id. Together, these requirements preclude from patentability "mere ideas,... 'hypothetical possibilities, and objectives which the claimed inventions... could possibly achieve." In re 318 Patent Infringement Litig
    • cited with approval in In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005). Substantial utility requires that the invention "provide a significant and presently available benefit to the public." Id. at 1371. Specific utility requires that the invention provide "a well-defined and particular benefit to the public." Id. Together, these requirements preclude from patentability "mere ideas[,]... 'hypothetical possibilities, [and] objectives which the claimed [inventions]... could possibly achieve." In re 318 Patent Infringement Litig.
    • (2005) F.3d , vol.421 , pp. 1365
  • 74
    • 77958506877 scopus 로고    scopus 로고
    • 1324 Fed. Cir
    • F.3d 1317, 1324 (Fed. Cir. 2009)
    • (2009) F.3d , vol.583 , pp. 1317
  • 75
    • 81855186112 scopus 로고    scopus 로고
    • quoting Fisher
    • (quoting Fisher, 421 F.2d at 1373)).
    • F.2d , vol.421 , pp. 1373
  • 76
    • 84886522533 scopus 로고    scopus 로고
    • Process Control Corp. v. HydReclaim Corp., 1358 Fed. Cir, The operability requirement can be traced back to the nineteenth century
    • Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 (Fed. Cir. 1999). The operability requirement can be traced back to the nineteenth century.
    • (1999) F.3d , vol.190 , pp. 1350
  • 77
    • 81855186104 scopus 로고
    • See Mitchell v. Tilghman, 19 Wall. 287, holding that a patentable invention must be "capable of being used to effect the object proposed". The utility requirement itself "has its origin in the Intellectual Property Clause of the Constitution, which indicates that the purpose of empowering Congress to authorize the granting of patents is "to promote the progress of... useful arts."
    • See Mitchell v. Tilghman, 86 U. S. (19 Wall.) 287, 396 (1873) (holding that a patentable invention must be "capable of being used to effect the object proposed"). The utility requirement itself "has its origin in [the Intellectual Property Clause of] the Constitution, which indicates that the purpose of empowering Congress to authorize the granting of patents is "to promote the progress of... useful arts."
    • (1873) U. S. , vol.86 , pp. 396
  • 78
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    • Stiftung v. Reinshaw PLC, 1180 Fed. Cir
    • Stiftung v. Reinshaw PLC, 945 F.2d 1173, 1180 (Fed. Cir. 1991)
    • (1991) F.2d , vol.945 , pp. 1173
  • 79
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    • quoting, art. I, § 8, cl
    • (quoting U. S. CONST. art. I, § 8, cl. 8).
    • U. S. Const. , pp. 8
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    • Raytheon Co. v. Roper Corp., 956 Fed. Cir, During examination the examiner must give claim terms their broadest reasonable interpretation as they would be understood by a PHOSITA yet consistent with the applicant's disclosure
    • Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983). During examination the examiner must give claim terms their broadest reasonable interpretation as they would be understood by a PHOSITA yet consistent with the applicant's disclosure.
    • (1983) F.2d , vol.724 , pp. 951
  • 81
    • 85017658837 scopus 로고    scopus 로고
    • In re Morris, 1054 Fed. Cir
    • In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
    • (1997) F.3d , vol.127 , pp. 1048
  • 82
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    • In re Brana, 1566 Fed. Cir
    • In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995).
    • (1995) F.3d , vol.51 , pp. 1560
  • 83
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    • written description is the part of the patent or patent application that completely describes the invention, §
    • The written description is the part of the patent (or patent application) that completely describes the invention. 35 U. S. C. § 112 (2006).
    • (2006) U. S. C. , vol.35 , pp. 112
  • 85
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    • Enablement is one of the three disclosure requirements appearing in, §, ¶ 1:, The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention
    • Enablement is one of the three disclosure requirements appearing in 35 U. S. C. § 112 ¶ 1: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
    • U. S. C. , vol.35 , pp. 112
  • 86
    • 69849110566 scopus 로고    scopus 로고
    • §, ¶ 1 emphasis added. Enablement is discussed infra Part III. A
    • U. S. C. § 112 (2006) ¶ 1 (emphasis added). Enablement is discussed infra Part III. A.
    • (2006) U. S. C. , vol.35 , pp. 112
  • 87
    • 81855201137 scopus 로고    scopus 로고
    • courts often use the term "practice" when referring to the how-to-make and how-touse prongs of the enablement requirement of § 112 ¶ 1. Compare Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 1234 Fed. Cir, "The legal question of enablement involves an assessment of whether a patent disclosure would have enabled a PHOSITA at the time the application was filed to make and use the claimed invention without undue experimentation. "
    • The courts often use the term "practice" when referring to the how-to-make and how-touse prongs of the enablement requirement of § 112 ¶ 1. Compare Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1234 (Fed. Cir. 2003) ("The legal question of enablement involves an assessment of whether a patent disclosure would have enabled [a PHOSITA] at the time the application was filed to make and use the claimed invention without undue experimentation. ")
    • (2003) F.3d , vol.326 , pp. 1226
  • 88
    • 81855193201 scopus 로고    scopus 로고
    • with In re Swartz, 863 Fed. Cir, per curiam "To satisfy the enablement requirement of § 112 ¶ 1, a patent application must adequately disclose the claimed invention so as to enable a PHOSITA to practice the invention at the time the application was filed without undue experimentation. "
    • with In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000) (per curiam) ("To satisfy the enablement requirement of § 112 ¶ 1, a patent application must adequately disclose the claimed invention so as to enable a [PHOSITA] to practice the invention at the time the application was filed without undue experimentation. ").
    • (2000) F.3d , vol.232 , pp. 862
  • 89
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    • See Process Control, "If a patent claim fails to meet the utility requirement because it is inoperative, then it also fails to meet the how-to-use aspect of the enablement requirement."
    • See Process Control, 190 F.3d at 1358 ("If a patent claim fails to meet the utility requirement because it is [inoperative], then it also fails to meet the how-to-use aspect of the enablement requirement.");
    • F.3d , vol.190 , pp. 1358
  • 90
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    • In re Ziegler, 1200-01 Fed. Cir
    • In re Ziegler, 992 F.2d 1197, 1200-01 (Fed. Cir. 1993)
    • (1993) F.2d , vol.992 , pp. 1197
  • 91
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    • "The how-touse prong of § 112 incorporates as a matter of law the requirement of, § 101. If the application fails as a matter of fact to satisfy
    • ("The how-touse prong of § 112 incorporates as a matter of law the requirement of 35 U. S. C. § 101.... If the application fails as a matter of fact to satisfy
    • U. S. C. , vol.35
  • 92
    • 84886488093 scopus 로고    scopus 로고
    • §, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under
    • U. S. C. § 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under
    • U. S. C. , vol.35 , pp. 101
  • 93
    • 84964427849 scopus 로고    scopus 로고
    • §, internal citations omitted
    • U. S. C. § 112." (internal citations omitted)).
    • U. S. C. , vol.35 , pp. 112
  • 94
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    • In re Cortright, 1357 Fed. Cir, see also MPEP, supra note 47, § 2107.02 instructing examiners not to begin the analysis by assuming that the asserted utility is false. The underpinnings of the presumption trace back to a C. C. P. A. case:, As a matter of Patent Office practice, a written description which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of § 101 for the entire claimed subject matter unless there is a reason for a PHOSITA to question the objective truth of the statement of utility or its scope
    • In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999); see also MPEP, supra note 47, § 2107.02 (instructing examiners not to begin the analysis by assuming that the asserted utility is false). The underpinnings of the presumption trace back to a C. C. P. A. case: As a matter of Patent Office practice, a [written description] which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of § 101 for the entire claimed subject matter unless there is a reason for [a PHOSITA] to question the objective truth of the statement of utility or its scope.
    • (1999) F.3d , vol.165 , pp. 1353
  • 95
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    • In re Langer, 1391 C. C. P. A, emphasis added
    • In re Langer, 503 F.2d 1380, 1391 (C. C. P. A. 1974) (emphasis added).
    • (1974) F.2d , vol.503 , pp. 1380
  • 96
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    • In re Gaubert, 1224-25 C. C. P. A
    • In re Gaubert, 524 F.2d 1222, 1224-25 (C. C. P. A. 1975);
    • (1975) F.2d , vol.524 , pp. 1222
  • 97
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    • see also In re Oetiker, 1445 Fed. Cir, explaining that the examiner bears the initial burden of presenting a prima facie case of unpatentability
    • see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (explaining that the examiner bears the initial burden of presenting a prima facie case of unpatentability);
    • (1992) F.2d , vol.977 , pp. 1443
  • 98
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    • Fregeau v. Mossinghoff, 1038 Fed. Cir, applying the prima facie case to § 101
    • Fregeau v. Mossinghoff, 776 F.2d 1034, 1038 (Fed. Cir. 1985) (applying the prima facie case to § 101).
    • (1985) F.2d , vol.776 , pp. 1034
  • 99
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    • In re Dash, 491 Fed. Cir, The nature of the source "merely goes to the weight of the evidence, not whether it can be relied upon at all." Id
    • In re Dash, 118 F. App'x 488, 491 (Fed. Cir. 2004). The nature of the source "merely go[es] to the weight of the evidence, not whether it can be relied upon at all." Id.
    • (2004) F. App'x , vol.118 , pp. 488
  • 100
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    • other patentability requirements appear supra note 7
    • Oetiker, 977 F.2d at 1445. The other patentability requirements appear supra note 7.
    • F.2d , vol.977 , pp. 1445
    • Oetiker1
  • 101
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    • general rule is that the PTO "may take notice of facts beyond the record which... are capable of such instant and unquestionable demonstration as to defy dispute." In re Ahlert, 1091 C. C. P. A, But there are limits. First, as to core factual findings, the PTO "cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense."
    • The general rule is that the PTO "may take notice of facts beyond the record which... are capable of such instant and unquestionable demonstration as to defy dispute." In re Ahlert, 424 F.2d 1088, 1091 (C. C. P. A. 1970). But there are limits. First, as to core factual findings, the PTO "cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense."
    • (1970) F.2d , vol.424 , pp. 1088
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    • In re Zurko, 1386 Fed. Cir, For such facts, the PTO should point to concrete evidence in the record to support the rejection. Id. Second, if the examiner relies on common knowledge without documentary support, the rejection can survive only if it is based on sound technical reasoning and the applicant does not demand that the examiner provide authority for the statement
    • In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). For such facts, the PTO should point to concrete evidence in the record to support the rejection. Id. Second, if the examiner relies on common knowledge without documentary support, the rejection can survive only if it is based on sound technical reasoning and the applicant does not demand that the examiner provide authority for the statement.
    • (2001) F.3d , vol.258 , pp. 1379
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    • In re Chevenard, 713 C. C. P. A, Third, the PTO must give the applicant an opportunity to challenge a fact asserted to be common knowledge. Id. But
    • In re Chevenard, 139 F.2d 711, 713 (C. C. P. A. 1943). Third, the PTO must give the applicant an opportunity to challenge a fact asserted to be common knowledge. Id. But
    • (1943) F.2d , vol.139 , pp. 711
  • 104
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    • see KSR Int'l Co. v. Teleflex Inc., 418, explaining that in the nonobviousness context, reliance on common sense, viewed through PHOSITA's perspective, is appropriate
    • see KSR Int'l Co. v. Teleflex Inc., 550 U. S. 398, 418 (2007) (explaining that in the nonobviousness context, reliance on common sense, viewed through PHOSITA's perspective, is appropriate).
    • (2007) U. S. , vol.550 , pp. 398
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    • 84855463165 scopus 로고
    • See Diamond Rubber Co. v. Consol. Rubber Tire Co., 435-36, explaining that an inventor need not understand the scientific principles underlying the invention
    • See Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 U. S. 428, 435-36 (1911) (explaining that an inventor need not understand the scientific principles underlying the invention);
    • (1911) U. S. , vol.220 , pp. 428
  • 106
    • 33845209047 scopus 로고
    • Newman v. Quigg, 1581 Fed. Cir, "It is not a requirement of patentability that an inventor correctly set forth, or even know, how or why the invention works...."
    • Newman v. Quigg, 877 F.2d 1575, 1581 (Fed. Cir. 1989) ("[I]t is not a requirement of patentability that an inventor correctly set forth, or even know, how or why the invention works....");
    • (1989) F.2d , vol.877 , pp. 1575
  • 107
    • 81855205361 scopus 로고
    • In re Newman, 974 Fed. Cir, explaining that the PTO should not ask applicants for scientific explanations because the agency "is not a guarantor of scientific theory"
    • In re Newman, 782 F.2d 971, 974 (Fed. Cir. 1986) (explaining that the PTO should not ask applicants for scientific explanations because the agency "is not a guarantor of scientific theory");
    • (1986) F.2d , vol.782 , pp. 971
  • 108
    • 81855166185 scopus 로고
    • In re Libby, 415 C. C. P. A, explaining that enablement does not require an understanding of the underlying science
    • In re Libby, 255 F.2d 412, 415 (C. C. P. A. 1958) (explaining that enablement does not require an understanding of the underlying science).
    • (1958) F.2d , vol.255 , pp. 412
  • 109
    • 33845228258 scopus 로고    scopus 로고
    • "The threshold for utility is not high." Juicy Whip, Inc. v. Orange Bang, Inc., 1366 Fed. Cir, see also Testimony of Scott A. Chambers, former Assoc. Solicitor of the PTO, Federal Trade Commission Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy 95-96 Feb. 8, 2002, available at, noting that the credibility standard of § 101 only requires that the invention be "plausible" to a PHOSITA. An invention is inoperable only if it is "totally incapable of achieving a useful result."
    • "The threshold [for] utility is not high." Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1366 (Fed. Cir. 1999); see also Testimony of Scott A. Chambers, former Assoc. Solicitor of the PTO, Federal Trade Commission Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy 95-96 (Feb. 8, 2002), available at http://www.ftc.gov/ opp/intellect/020208intelpropertytrans.pdf (noting that the credibility standard of § 101 only requires that the invention be "plausible" to a PHOSITA). An invention is inoperable only if it is "totally incapable of achieving a useful result."
    • (1999) F.3d , vol.185 , pp. 1364
  • 110
    • 81855186106 scopus 로고
    • Brooktree Corp. v. Advanced Micro Devices, Inc., 1571 Fed. Cir, Thus, an applicant satisfies § 101 as long as the invention accomplishes at least one stated objective
    • Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571 (Fed. Cir. 1992). Thus, an applicant satisfies § 101 as long as the invention accomplishes at least one stated objective.
    • (1992) F.2d , vol.977 , pp. 1555
  • 111
    • 81855186109 scopus 로고
    • Raytheon Co. v. Roper Corp., 958 Fed. Cir
    • Raytheon Co. v. Roper Corp., 724 F.2d 951, 958 (Fed. Cir. 1983).
    • (1983) F.2d , vol.724 , pp. 951
  • 112
    • 81855186096 scopus 로고
    • Hildreth v. Mastoras, 34, "The machine patented may be imperfect in its operation; but if it embodies the generic principle and works... though only in a crude way... it is enough."
    • Hildreth v. Mastoras, 257 U. S. 27, 34 (1921) ("The machine patented may be imperfect in its operation; but if it embodies the generic principle[] and works... though only in a crude way... it is enough.");
    • (1921) U. S. , vol.257 , pp. 27
  • 113
    • 85017659184 scopus 로고    scopus 로고
    • see also Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 1196 Fed. Cir, explaining that operability still exists even if the invention does not work perfectly under all conditions
    • see also Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999) (explaining that operability still exists even if the invention does not work perfectly under all conditions).
    • (1999) F.3d , vol.166 , pp. 1190
  • 114
    • 33845195264 scopus 로고
    • See Stiftung v. Reinshaw PLC, 1180 Fed. Cir, "An invention need not be the best or the only way to accomplish a certain result, and it need only be useful to some extent and in certain applications...."
    • See Stiftung v. Reinshaw PLC, 945 F.2d 1173, 1180 (Fed. Cir. 1991) ("An invention need not be the best or the only way to accomplish a certain result, and it need only be useful to some extent and in certain applications....");
    • (1991) F.2d , vol.945 , pp. 1173
  • 115
    • 84897597756 scopus 로고
    • Custom Accessories, Inc. v. Jeffrey-Allan Indus., 960, Fed. Cir, "It is possible for an invention to be less effective than existing devices but nevertheless meet the statutory requirements for patentability."
    • Custom Accessories, Inc. v. Jeffrey-Allan Indus., 807 F.2d 955, 960 n. 12 (Fed. Cir. 1986) ("It is possible for an invention to be less effective than existing devices but nevertheless meet the statutory requirements for patentability.");
    • (1986) F.2d , vol.807 , Issue.12 , pp. 955
  • 116
    • 81855193218 scopus 로고
    • In re Ratti, 814 C. C. P. A, rejecting the PTO's contention that an invention "must possess some definite advantage over the prior art" in order to be patentable
    • In re Ratti, 270 F.2d 810, 814 (C. C. P. A. 1959) (rejecting the PTO's contention that an invention "[must] possess some definite advantage over the prior art" in order to be patentable).
    • (1959) F.2d , vol.270 , pp. 810
  • 117
    • 0041446429 scopus 로고    scopus 로고
    • If the examiner does not meet this initial burden, the applicant does not need to provide any additional evidence to substantiate its assertions, which are presumptively correct. In re Brana, 1566 Fed. Cir
    • If the examiner does not meet this initial burden, the applicant does not need to provide any additional evidence to substantiate its assertions, which are presumptively correct. In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995).
    • (1995) F.3d , vol.51 , pp. 1560
  • 118
    • 81855193201 scopus 로고    scopus 로고
    • In re Swartz, 864 Fed. Cir
    • In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000)
    • (2000) F.3d , vol.232 , pp. 862
  • 119
    • 81855186103 scopus 로고    scopus 로고
    • citing Brana
    • (citing Brana, 51 F.3d at 1566);
    • F.3d , vol.51 , pp. 1566
  • 120
    • 81855210276 scopus 로고
    • see also In re Ferens, 1074 C. C. P. A, explaining that an examiner may request evidence to substantiate the applicant's assertions when they appear to be incredible in light of contemporary knowledge
    • see also In re Ferens, 417 F.2d 1072, 1074 (C. C. P. A. 1969) (explaining that an examiner may request evidence to substantiate the applicant's assertions when they appear to be incredible in light of contemporary knowledge).
    • (1969) F.2d , vol.417 , pp. 1072
  • 121
    • 81855166181 scopus 로고
    • But see In re Novak, 928 C. C. P. A, noting that rebuttal evidence is unnecessary if a PHOSITA would obviously accept the applicant's allegations as true
    • But see In re Novak, 306 F.2d 924, 928 (C. C. P. A. 1962) (noting that rebuttal evidence is unnecessary if a PHOSITA would obviously accept the applicant's allegations as true).
    • (1962) F.2d , vol.306 , pp. 924
  • 122
    • 81855186105 scopus 로고
    • See In re Payne, 315 C. C. P. A, noting that facts set forth in an affidavit from an expert in the field are highly probative
    • See In re Payne, 606 F.2d 303, 315 (C. C. P. A. 1979) (noting that facts set forth in an affidavit from an expert in the field are highly probative);
    • (1979) F.2d , vol.606 , pp. 303
  • 123
    • 81855205376 scopus 로고
    • see also In re Perrigo, 966 C. C. P. A, determining that affidavits which were brief and general in character were insufficient to prove operability. Regarding the nexus, the affiant must be able to show that the intended result stems from the invention and not from some other source
    • see also In re Perrigo, 48 F.2d 965, 966 (C. C. P. A. 1931) (determining that affidavits which were brief and general in character were insufficient to prove operability). Regarding the nexus, the affiant must be able to show that the intended result stems from the invention and not from some other source.
    • (1931) F.2d , vol.48 , pp. 965
  • 124
    • 81855205354 scopus 로고    scopus 로고
    • finding that affidavits from lay persons attesting to a cure for hair loss were unpersuasive because they evinced no understanding of the written description of the invention and could not show a nexus; id. rejecting an affidavit from a doctor who, though highly skilled, was not an expert in the field and thus could not adequately set forth experimental observations about the alleged cure for hair loss
    • See Ferens, 417 F.2d at 1075 (finding that affidavits from lay persons attesting to a cure for hair loss were unpersuasive because they evinced no understanding of the written description of the invention and could not show a nexus); id. (rejecting an affidavit from a doctor who, though highly skilled, was not an expert in the field and thus could not adequately set forth experimental observations about the alleged cure for hair loss).
    • F.2d , vol.417 , pp. 1075
    • Ferens1
  • 125
    • 85017600666 scopus 로고
    • In re Piasecki, 1472 Fed. Cir, internal citation omitted
    • In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (internal citation omitted).
    • (1984) F.2d , vol.745 , pp. 1468
  • 126
    • 84938394461 scopus 로고    scopus 로고
    • In re Oetiker, 1445 Fed. Cir
    • In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
    • (1992) F.2d , vol.977 , pp. 1443
  • 127
    • 81855186109 scopus 로고
    • Raytheon Co. v. Roper Corp., 956 Fed. Cir
    • Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983).
    • (1983) F.2d , vol.724 , pp. 951
  • 128
    • 81855210276 scopus 로고
    • In re Ferens, 1075 C. C. P. A
    • In re Ferens, 417 F.2d 1072, 1075 (C. C. P. A. 1969);
    • (1969) F.2d , vol.417 , pp. 1072
  • 129
    • 85017661197 scopus 로고
    • In re Chilowsky, 462, C. C. P. A, explaining that the patent statutes and case law lead to this rule. Regardless, one commentator suggests that the applicant may face an insurmountable burden
    • In re Chilowsky, 229 F.2d 457, 462 (C. C. P. A. 1956) (explaining that the patent statutes and case law lead to this rule). Regardless, one commentator suggests that the applicant may face an insurmountable burden.
    • (1956) F.2d , vol.229 , pp. 457
  • 130
    • 81855193202 scopus 로고
    • Insufficient disclosure rejections (part II)
    • 240-41, "An examiner has not only established a prima facie case of inoperability if he can show that the alleged utility is at best highly speculative and at worst incredible, but has also created an exceedingly difficult burden of proof for an applicant to overcome such a rejection. "
    • See Edward C. Walterscheid, Insufficient Disclosure Rejections (Part II), 62 J. Pat. Off. Soc'y 229, 240-41 (1980) ("[A]n examiner has not only established a prima facie case of [inoperability] if he can show that the alleged utility is at best highly speculative and at worst incredible, but has also created an exceedingly difficult burden of proof for an applicant to overcome such a rejection. ").
    • (1980) J. Pat. Off. Soc'y , vol.62 , pp. 229
    • Walterscheid, E.C.1
  • 131
    • 84870611617 scopus 로고    scopus 로고
    • See cases cited supra notes 48-49 and accompanying text; see also In re Fisher, 1378-79 Fed. Cir, holding that since the Board's § 101 rejection was supported by substantial evidence, the court would also leave the § 112 ¶ 1 rejection undisturbed because the applicant failed to satisfy the enablement requirement as a matter of law. It is worth noting that an applicant can disclose an invention which satisfies the operability requirement of § 101 but fails to satisfy the enablement requirement of § 112
    • See cases cited supra notes 48-49 and accompanying text; see also In re Fisher, 421 F.3d 1365, 1378-79 (Fed. Cir. 2005) (holding that since the Board's § 101 rejection was supported by substantial evidence, the court would also leave the § 112 ¶ 1 rejection undisturbed because the applicant failed to satisfy the enablement requirement as a matter of law). It is worth noting that an applicant can disclose an invention which satisfies the operability requirement of § 101 but fails to satisfy the enablement requirement of § 112.
    • (2005) F.3d , vol.421 , pp. 1365
  • 132
    • 81855186100 scopus 로고
    • See Mowry v. Whitney, 14 Wall., 644, "The claimed process may have been a highly useful invention... and yet he may have failed so to describe it as to teach the PHOSITA how to practice it."
    • See Mowry v. Whitney, 81 U. S. (14 Wall.) 620, 644 (1871) ("[The claimed] process may have been a highly useful invention... and yet he may have failed so to describe it as to teach the [PHOSITA] how to practice it.").
    • (1871) U. S. , vol.81 , pp. 620
  • 133
    • 81855193201 scopus 로고    scopus 로고
    • In re Swartz, 863 Fed. Cir
    • In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000).
    • (2000) F.3d , vol.232 , pp. 862
  • 134
    • 81855186085 scopus 로고    scopus 로고
    • An applicant whose claims have been twice rejected by the examiner can appeal to an intraoffice tribunal known as the Board of Patent Appeals and Interferences which, among other things, reviews adverse decisions of examiners, §§, b, 134 a
    • An applicant whose claims have been twice rejected by the examiner can appeal to an intraoffice tribunal known as the Board of Patent Appeals and Interferences which, among other things, reviews adverse decisions of examiners. 35 U. S. C. §§ 6 (b), 134 (a) (2006).
    • (2006) U. S. C. , vol.35 , pp. 6
  • 135
    • 81855193208 scopus 로고    scopus 로고
    • Board can affirm a rejection or reverse and remand to the examining corps, §, 197
    • The Board can affirm a rejection or reverse and remand to the examining corps. 37 C. F. R. § 1. 197 (2011).
    • (2011) C. F. R. , vol.37 , pp. 1
  • 136
    • 81855205348 scopus 로고    scopus 로고
    • An applicant dissatisfied with a Board decision can appeal to the Federal Circuit or file a civil action against the Director in the U. S. District Court for the District of Columbia, §§, 145, In the latter, the parties may submit additional evidence or argue the previous evidence afresh
    • An applicant dissatisfied with a Board decision can appeal to the Federal Circuit or file a civil action against the Director in the U. S. District Court for the District of Columbia. 35 U. S. C. §§ 141, 145. In the latter, the parties may submit additional evidence or argue the previous evidence afresh.
    • U. S. C. , vol.35 , pp. 141
  • 137
    • 81855166155 scopus 로고
    • Gould v. Quigg, 1076 Fed. Cir
    • Gould v. Quigg, 822 F.2d 1074, 1076 (Fed. Cir. 1987).
    • (1987) F.2d , vol.822 , pp. 1074
  • 138
    • 33845221904 scopus 로고    scopus 로고
    • As an initial matter, if the Board's or trial court's decision requires claim interpretation, it is reviewed de novo. Cybor Corp. v. FAS Techs., Inc., 1456 Fed. Cir, en banc
    • As an initial matter, if the Board's (or trial court's) decision requires claim interpretation, it is reviewed de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc);
    • (1998) F.3d , vol.138 , pp. 1448
  • 139
    • 81855197722 scopus 로고    scopus 로고
    • see also Raytheon Co., "In determining utility... the claims must first be interpreted to define the invention to be tested for utility.". For appeals from the PTO, the Federal Circuit reviews legal conclusions de novo and factual findings for substantial evidence
    • see also Raytheon Co., 724 F.2d at 956 ("In determining utility... the claims must first be interpreted to define the invention to be tested for utility."). For appeals from the PTO, the Federal Circuit reviews legal
    • F.2d , vol.724 , pp. 956
  • 140
    • 81855186095 scopus 로고    scopus 로고
    • In re Gartside, 1315 Fed. Cir, Thus, the Board's finding of inoperability as well as the facts underlying the enablement determination are reviewed for substantial evidence, while the legal conclusion of enablement is reviewed de novo
    • In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000). Thus, the Board's finding of inoperability as well as the facts underlying the enablement determination are reviewed for substantial evidence, while the legal conclusion of enablement is reviewed de novo.
    • (2000) F.3d , vol.203 , pp. 1305
  • 141
    • 81855205353 scopus 로고    scopus 로고
    • In re Swartz, Fed. Cir, Where operability is at issue in a jury trial, the Federal Circuit determines if substantial evidence exists to support the verdict
    • In re Swartz, 232 F.3d at 863 (Fed. Cir. 2000). Where operability is at issue in a jury trial, the Federal Circuit determines if substantial evidence exists to support the verdict.
    • (2000) F.3d , vol.232 , pp. 863
  • 142
    • 81855186106 scopus 로고
    • Brooktree Corp. v. Advanced Micro Devices, Inc., 1571 Fed. Cir
    • Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571 (Fed. Cir. 1992).
    • (1992) F.2d , vol.977 , pp. 1555
  • 143
    • 81855193207 scopus 로고    scopus 로고
    • As for enablement, the Federal Circuit reviews the trial court's legal conclusion de novo but reviews the underlying factual findings for substantial evidence in jury trials, Moba, B. V. v. Diamond Automation, Inc., 1321 Fed. Cir, or clear error in bench trials
    • As for enablement, the Federal Circuit reviews the trial court's legal conclusion de novo but reviews the underlying factual findings for substantial evidence in jury trials, Moba, B. V. v. Diamond Automation, Inc., 325 F.3d 1306, 1321 (Fed. Cir. 2003), or clear error in bench trials.
    • (2003) F.3d , vol.325 , pp. 1306
  • 144
    • 33845207878 scopus 로고    scopus 로고
    • Amgen Inc. v. Hoechst Marion Roussel, Inc., 1334 Fed. Cir, While utility and enablement often involve complex scientific principles, the Federal Circuit views them not as "legal abstractions", but as issues "which properly devolve on the trier of fact" who, as for other kinds of evidence, "must make determinations of credibility, reliability, and weight."
    • Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003). While utility and enablement often involve complex scientific principles, the Federal Circuit views them not as "legal abstractions", but as issues "[which] properly devolve on the trier of fact" who, as for other kinds of evidence, "must make determinations of credibility, reliability, and weight."
    • (2003) F.3d , vol.314 , pp. 1313
  • 145
    • 81855193206 scopus 로고    scopus 로고
    • Brooktree, 977 F.2d at 1573.
    • F.2d , vol.977 , pp. 1573
    • Brooktree1
  • 146
    • 79959270914 scopus 로고    scopus 로고
    • Cf, supra note 15, advocating a working example requirement for complex technologies which would, among other things, simplify the enablement analysis
    • Cf. Seymore, Teaching Function, supra note 15, at 652-53 (advocating a working example requirement for complex technologies which would, among other things, simplify the enablement analysis).
    • Teaching Function , pp. 652-653
    • Seymore1
  • 147
    • 84886555177 scopus 로고    scopus 로고
    • Hoffmann-La Roche, Inc. v. Promega Corp., 1377 Fed. Cir, Newman, J., dissenting
    • Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1377 (Fed. Cir. 2003) (Newman, J., dissenting).
    • (2003) F.3d , vol.323 , pp. 1354
  • 148
    • 81855186099 scopus 로고    scopus 로고
    • An embodiment is a concrete form of an invention like a chemical compound or a widget described in a patent application or patent, 4th ed
    • An embodiment is a concrete form of an invention (like a chemical compound or a widget) described in a patent application or patent. ROBERT P. MERGES & JOHN F. DUFFY, PATENT LAW AND POLICY 27 (4th ed. 2007).
    • (2007) Patent Law and Policy , pp. 27
    • Merges, R.P.1    Duffy, J.F.2
  • 149
    • 33751562286 scopus 로고    scopus 로고
    • See Pfaff v. Wells Elecs., Inc., 60, explaining that "the word 'invention' in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea". Thus, in patent law, an invention can be actually reduced to practice by building a working model or constructively reduced to practice by filing a patent application which describes how to make and use it
    • See Pfaff v. Wells Elecs., Inc., 525 U. S. 55, 60 (1998) (explaining that "the word 'invention' in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea"). Thus, in patent law, an invention can be actually reduced to practice by building a working model or constructively reduced to practice by filing a patent application which describes how to make and use it.
    • (1998) U. S. , vol.525 , pp. 55
  • 150
    • 33845208585 scopus 로고    scopus 로고
    • Univ. of Rochester v. G. D. Searle & Co., 926 Fed. Cir, A constructive reduction to practice presumptively satisfies the disclosure requirements of § 112 ¶ 1
    • Univ. of Rochester v. G. D. Searle & Co., 358 F.3d 916, 926 (Fed. Cir. 2004). A constructive reduction to practice presumptively satisfies the disclosure requirements of § 112 ¶ 1.
    • (2004) F.3d , vol.358 , pp. 916
  • 151
    • 84886568442 scopus 로고
    • Hybritech Inc. v. Monoclonal Antibodies, Inc., 1376 Fed. Cir
    • Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986).
    • (1986) F.2d , vol.802 , pp. 1367
  • 152
    • 0014200801 scopus 로고
    • Proposal for an institution for scientific judgment
    • 764, "It is actually very difficult to offer rigorous proof that something cannot be done...."
    • See Arthur Kantrowitz, Proposal for an Institution for Scientific Judgment, 156 SCIENCE 763, 764 (1967) ("It is actually very difficult to offer rigorous proof that something cannot be done....");
    • (1967) Science , vol.156 , pp. 763
    • Kantrowitz, A.1
  • 153
    • 81855205346 scopus 로고
    • Insufficient disclosure rejections (part I)
    • 220, explaining that obtaining proof can be a major problem for examiners, particularly since they must provide reasons and/or evidence to establish a prima facie case of unpatentability
    • Edward C. Walterscheid, Insufficient Disclosure Rejections (Part I), 62 J. PAT. OFF. SOC'Y 217, 220 (1980) (explaining that obtaining proof can be a major problem for examiners, particularly since they must provide reasons and/or evidence to establish a prima facie case of unpatentability).
    • (1980) J. Pat. Off. Soc'y , vol.62 , pp. 217
    • Walterscheid, E.C.1
  • 154
    • 81855205349 scopus 로고
    • Beckman Instruments, Inc. v. Chemtronics, Inc., 1379 5th Cir, noting that in the absence of its own testing facilities, the PTO must rely on information presented to it
    • See, e.g., Beckman Instruments, Inc. v. Chemtronics, Inc., 439 F.2d 1369, 1379 (5th Cir. 1970) (noting that in the absence of its own testing facilities, the PTO must rely on information presented to it);
    • (1970) F.2d , vol.439 , pp. 1369
  • 155
    • 3242801596 scopus 로고    scopus 로고
    • ch. 5, hereinafter FTC Report "Yet the PTO lacks testing facilities, and assertions that cannot be overcome by documentary evidence promptly identifiable by the examiner often must be accepted."
    • FED. TRADE COMM'N, TO PROMOTE INNOVATION: THE PROPER BALANCE OF COMPETITION AND PATENT LAW AND POLICY ch. 5, at 9 (2003) [hereinafter FTC Report] ("Yet the PTO lacks testing facilities, and assertions that cannot be overcome by documentary evidence promptly identifiable by the examiner often must be accepted.").
    • (2003) Fed. Trade Comm'n, to Promote Innovation: The Proper Balance of Competition and Patent Law and Policy , pp. 9
  • 156
    • 81855205347 scopus 로고
    • Curiously, the Patent Act of 1836, ch. 356, § 6, amended, required applicants to submit models at the time of filing
    • Curiously, the Patent Act of 1836, ch. 356, § 6, 5 Stat. 117 (amended 1839), required applicants to submit models at the time of filing.
    • (1839) Stat. , vol.5 , pp. 117
  • 157
    • 81855186097 scopus 로고
    • See In re Breslow, 522 C. C. P. A, recounting the history of the requirement
    • See In re Breslow, 616 F.2d 516, 522 (C. C. P. A. 1980) (recounting the history of the requirement);
    • (1980) F.2d , vol.616 , pp. 516
  • 158
    • 2342615700 scopus 로고
    • Patent models and the patent law: 1790-1880 (part 1)
    • same. The Patent Act of 1870 made the submission of models discretionary
    • Kendall J. Dood, Patent Models and the Patent Law: 1790-1880 (Part 1), 65 J. PAT. OFF. SOC'Y 187 (1983) (same). The Patent Act of 1870 made the submission of models discretionary.
    • (1983) J. Pat. Off. Soc'y , vol.65 , pp. 187
    • Dood, K.J.1
  • 159
    • 0040617610 scopus 로고    scopus 로고
    • See Patent Act of 1870, ch. 230, §§ 28-29
    • See Patent Act of 1870, ch. 230, §§ 28-29, 16 Stat. 198;
    • Stat. , vol.16 , pp. 198
  • 160
    • 81855166172 scopus 로고    scopus 로고
    • Patent Act of 1952 preserved the ancient authority in its then-existing form
    • Breslow, 616 F.2d at 522. The Patent Act of 1952 preserved the ancient authority in its then-existing form.
    • F.2d , vol.616 , pp. 522
    • Breslow1
  • 161
    • 81855193204 scopus 로고    scopus 로고
    • §, discussed infra note 82
    • See 35 U. S. C. § 114 (discussed infra note 82);
    • U. S. C. , vol.35 , pp. 114
  • 162
    • 81855166172 scopus 로고    scopus 로고
    • explaining that Congress had little interest in the statute
    • Breslow, 616 F.2d at 522 (explaining that Congress had little interest in the statute).
    • F.2d , vol.616 , pp. 522
    • Breslow1
  • 163
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    • patent statute permits the examiner to request a working model of an invention. See, §, "The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention. ". However, the PTO rarely invokes the requirement unless the invention involves perpetual motion. See MPEP, supra note 47, § 608.03 noting the exception. The exception likely stems from Joseph Newman's fight in the PTO and the courts over the application he filed in 1979 for an "Energy Generation System Having Higher Energy Output than Input."
    • The patent statute permits the examiner to request a working model of an invention. See 35 U. S. C. § 114 ("The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention. "). However, the PTO rarely invokes the requirement unless the invention involves perpetual motion. See MPEP, supra note 47, § 608.03 (noting the exception). The exception likely stems from Joseph Newman's fight in the PTO and the courts over the application he filed in 1979 for an "Energy Generation System Having Higher Energy Output than Input."
    • U. S. C. , vol.35 , pp. 114
  • 164
    • 81855186092 scopus 로고
    • See Newman v. Quigg, 16-17, D. D. C, presenting a chronology. After the PTO rejected the perpetual motion machine as inoperable under § 101, Newman sued the Director in district court, which ultimately remanded the application for a new examination
    • See Newman v. Quigg, 681 F. Supp. 16, 16-17 (D. D. C. 1988) (presenting a chronology). After the PTO rejected the perpetual motion machine as inoperable under § 101, Newman sued the Director in district court, which ultimately remanded the application for a new examination.
    • (1988) F. Supp. , vol.681 , pp. 16
  • 165
    • 81855205361 scopus 로고
    • See In re Newman, 972, Fed. Cir, summarizing the procedural history. This time the examiner ordered Newman to deliver a working model of his 9, 000-pound machine to the National Bureau of Standards NBS for testing. Id. at 973-74
    • See In re Newman, 782 F.2d 971, 972 (Fed. Cir. 1986) (summarizing the procedural history). This time the examiner ordered Newman to deliver a working model of his 9, 000-pound machine to the National Bureau of Standards (NBS) for testing. Id. at 973-74;
    • (1986) F.2d , vol.782 , pp. 971
  • 166
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    • A patent pursuit: Joe Newman's "energy machine, "
    • 342
    • I. Peterson, A Patent Pursuit: Joe Newman's "Energy Machine", 22 SCI. NEWS 342, 342 (1985).
    • (1985) Sci. News , vol.22 , pp. 342
    • Peterson, I.1
  • 167
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    • On appeal, the Federal Circuit held that while the NBS could not dismantle the device to elucidate how it works, the agency could test it to see if it works
    • On appeal, the Federal Circuit held that while the NBS could not dismantle the device to elucidate how it works, the agency could test it to see if it works. Newman, 782 F.2d at 974;
    • F.2d , vol.782 , pp. 974
    • Newman1
  • 168
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    • accord In re Aufhauser, 283 C. C. P. A, The NBS determined that the device could not produce the intended result, which led the PTO to again reject the application
    • accord In re Aufhauser, 399 F.2d 275, 283 (C. C. P. A. 1968). The NBS determined that the device could not produce the intended result, which led the PTO to again reject the application.
    • (1968) F.2d , vol.399 , pp. 275
  • 169
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    • NBSIR 86-3405, "In no case did the device's efficiency approach 100 percent."
    • See ROBERT E. HEBNER ET AL., REPORT OF TESTS ON JOSEPH NEWMAN'S DEVICE, NBSIR 86-3405, at 24 (1986) ("[I]n no case did the device's efficiency approach 100 percent.");
    • (1986) Report of Tests on Joseph Newman's Device , pp. 24
    • Hebner, R.E.1
  • 170
    • 81855201150 scopus 로고    scopus 로고
    • describing the tests
    • see also Newman, 681 F. Supp. at 19-23 (describing the tests).
    • F. Supp. , vol.681 , pp. 19-23
    • Newman1
  • 171
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    • district court agreed with the PTO, id. at 23-24, as did the Federal Circuit. Newman v. Quigg, 1582 Fed. Cir, Interestingly, some scientists argue that perpetual motion is not necessarily impossible; rather, it just does not fit within the present framework of thermodynamics. See, e.g., DOLBY, supra note 29, at 75 exploring plausible scientific theories which are consistent with perpetual motion
    • The district court agreed with the PTO, id. at 23-24, as did the Federal Circuit. Newman v. Quigg, 877 F.2d 1575, 1582 (Fed. Cir. 1989). Interestingly, some scientists argue that perpetual motion is not necessarily impossible; rather, it just does not fit within the present framework of thermodynamics. See, e.g., DOLBY, supra note 29, at 75 (exploring plausible scientific theories which are consistent with perpetual motion).
    • (1989) F.2d , vol.877 , pp. 1575
  • 172
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    • In re, 1566 Fed. Cir
    • In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)
    • (1995) F.3d , vol.51 , pp. 1560
    • Brana1
  • 173
    • 81855205312 scopus 로고
    • citing In re Jolles, 1327, C. C. P. A, reversing the PTO's denial of a patent for chemotherapy drugs because the applicant's assertions that they effectively put a particular type of leukemia in remission were no longer incredible
    • (citing In re Jolles, 628 F.2d 1322, 1327 (C. C. P. A. 1980) (reversing the PTO's denial of a patent for chemotherapy drugs because the applicant's assertions that they effectively put a particular type of leukemia in remission were no longer incredible)).
    • (1980) F.2d , vol.628 , pp. 1322
  • 174
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    • In re, 330 C. C. P. A
    • In re Pottier, 376 F.2d 328, 330 (C. C. P. A. 1967).
    • (1967) F.2d , vol.376 , pp. 328
    • Pottier1
  • 175
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    • In re, 978 C. C. P. A
    • In re Gazave, 379 F.2d 973, 978 (C. C. P. A. 1967)
    • (1967) F.2d , vol.379 , pp. 973
    • Gazave1
  • 176
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    • quoting In re Oberweger, 827 C. C. P. A, concluding that treating baldness is impossible
    • (quoting In re Oberweger, 115 F.2d 826, 827 (C. C. P. A. 1940) (concluding that treating baldness is impossible)).
    • (1940) F.2d , vol.115 , pp. 826
  • 177
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    • "In order... to retain its reliability and credibility, each scientist... must exercise critical vigilance over his own work and the claims of his contemporaries.". This is not always an easy task. For example, consider cold fusion discussed supra note 5. While some scientists believe that it is impossible first category or pseudoscientific second category, a growing number are optimistic and believe that it might be possible in a few decades third category
    • See JOHN ZIMAN, RELIABLE KNOWLEDGE 132 (1991) ("In order... [to] retain its reliability and credibility, each scientist... [must] exercise critical vigilance over his own work and the claims of his contemporaries. "). This is not always an easy task. For example, consider cold fusion discussed supra note 5. While some scientists believe that it is impossible (first category) or pseudoscientific (second category), a growing number are optimistic and believe that it might be possible in a few decades (third category).
    • (1991) Reliable Knowledge , pp. 132
    • Ziman, J.1
  • 179
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    • DERRY, supra note 34, at 161; see also, explaining that publishing in journals replaced haphazard modes of circulating science and "facilitates communication, allocation of credit, and authentication of research results"
    • DERRY, supra note 34, at 161; see also DARYL E. CHUBIN & EDWARD J. HACKETT, PEERLESS SCIENCE: PEER REVIEW AND U. S. SCIENCE POLICY 85 (1990) (explaining that publishing in journals replaced haphazard modes of circulating science and "facilitate[s] communication, allocation of credit, and authentication of research results").
    • (1990) Hackett, Peerless Science: Peer Review and U. S. Science Policy , pp. 85
    • Chubin, D.E.1    Edward, J.2
  • 180
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    • HENRY H. BAUER, The mechanics of peer review typically works as follows. First, the researcher submits the work to a journal. Second, the editor sends it to one or more reviewers knowledgeable about the problem to judge its merit uniqueness, methodology, adequacy of research design, and potential contribution to the field. Third, the editor makes a final publication decision. Hernon & Schwartz, supra note 36, at 1
    • HENRY H. BAUER, SCIENTIFIC LITERACY AND THE MYTH OF THE SCIENTIFIC METHOD 44-48 (1992). The mechanics of peer review typically works as follows. First, the researcher submits the work to a journal. Second, the editor sends it to one or more reviewers knowledgeable about the problem to judge its merit (uniqueness, methodology, adequacy of research design, and potential contribution to the field). Third, the editor makes a final publication decision. Hernon & Schwartz, supra note 36, at 1.
    • (1992) Scientific Literacy and the Myth of the Scientific Method , pp. 44-48
  • 181
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    • explaining how a scientist with a new research claim must "get by the gatekeepers"
    • FREDERICK GRINNELL, EVERYDAY PRACTICE OF SCIENCE 75 (2009) (explaining how a scientist with a new research claim must "get by the gatekeepers").
    • (2009) Everyday Practice of Science , pp. 75
    • Grinnell, F.1
  • 182
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    • Have referees rejected some of the most-cited articles of all times?
    • 302
    • Juan Miguel Campanario, Have Referees Rejected Some of the Most-Cited Articles of All Times?, 47 J. AM. SOC'Y INFO. SCI. 302, 302 (1996).
    • (1996) J. Am. Soc'y Info. Sci. , vol.47 , pp. 302
    • Campanario, J.M.1
  • 183
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    • ZIMAN, supra note 92, at 246; see also, explaining that a journal's imprimatur validates the research claim and ascribes status to it. Although personal trust is very important in science, scientific communities "do not accept research claims on the mere say-so of their authors." ZIMAN, supra note 92, at 246
    • ZIMAN, supra note 92, at 246; see also MARK ERICKSON, SCIENCE, CULTURE AND SOCIETY 44 (2005) (explaining that a journal's imprimatur validates the research claim and ascribes status to it). Although personal trust is very important in science, scientific communities "do not accept research claims on the mere say-so of their authors." ZIMAN, supra note 92, at 246.
    • (2005) Science, Culture and Society , pp. 44
    • Erickson, M.1
  • 185
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    • Peer review and the relevance of science
    • 828, citation omitted
    • Alister Scott, Peer Review and the Relevance of Science, 39 FUTURES 827, 828 (2007) (citation omitted).
    • (2007) Futures , vol.39 , pp. 827
    • Scott, A.1
  • 186
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    • The perils of peer review
    • Peer review has also been the subject of considerable criticism from those within and outside of mainstream science. See, e.g., Campanario, supra note 96, at 302 collecting criticisms; Geisler, supra note 99, at 234 same;, 393-94, arguing that peer review hinders good science
    • Peer review has also been the subject of considerable criticism from those within and outside of mainstream science. See, e.g., Campanario, supra note 96, at 302 (collecting criticisms); Geisler, supra note 99, at 234 (same); Rustum Roy & James R. Ashburn, The Perils of Peer Review, 414 NATURE 393, 393-94 (2001) (arguing that peer review hinders good science).
    • (2001) Nature , vol.414 , pp. 393
    • Roy, R.1    Ashburn, J.R.2
  • 187
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    • Peer review and innovation
    • 102
    • Raymond E. Spier, Peer Review and Innovation, 8 SCI. & ENGINEERING ETHICS 99, 102 (2002).
    • (2002) Sci. & Engineering Ethics , vol.8 , pp. 99
    • Spier, R.E.1
  • 188
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    • Resistance by scientists to scientific discovery
    • 597-602, providing examples dating back to the 19th century
    • For stories and examples of delayed recognition, see Bernard Barber, Resistance by Scientists to Scientific Discovery, 134 SCIENCE 596, 597-602 (1961) (providing examples dating back to the 19th century);
    • (1961) Science , vol.134 , pp. 596
    • Barber, B.1
  • 189
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    • The philosophical basis of peer review and the suppression of innovation
    • 1440-1441, eighteen examples
    • David F. Horrobin, The Philosophical Basis of Peer Review and the Suppression of Innovation, 263 J. AM. MED. ASS'N 1438, 1440-1441 (1990) (eighteen examples);
    • (1990) J. Am. Med. Ass'n , vol.263 , pp. 1438
    • Horrobin, D.F.1
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    • The plight of the obscure innovator in science: A few reflections on campanario's note
    • 171-76, forty-seven examples
    • Moti Nissani, The Plight of the Obscure Innovator in Science: A Few Reflections on Campanario's Note, 25 SOC. STUD. SCI. 165, 171-76 (1995) (forty-seven examples).
    • (1995) Soc. Stud. Sci. , vol.25 , pp. 165
    • Nissani, M.1
  • 191
    • 81855166157 scopus 로고    scopus 로고
    • As one scientist argues, "It is not permissible is to write or say something which contradicts the shared paradigm, and expect it to be tolerated.... because the shared paradigm, a necessary frame of reference in normal scientific communication, would be undermined.", available at, Often it is better for a scientist to "stop producing new, and perhaps unsettling, ideas" because "rewriting or extending the best work of others, or one's best pieces... could be easier, more rewarding, and more acceptable."
    • As one scientist argues, "[It] is not permissible is to write or say something which contradicts the shared paradigm, and expect it to be tolerated.... because the shared paradigm, a necessary frame of reference in normal scientific communication, would be undermined." IVOR CATT, THE CATT ANOMALY 31(2001), available at http://www.ivorcatt.com/28anom.htm. Often it is better for a scientist to "stop[] producing new, and perhaps unsettling, ideas" because "[r]ewriting or extending the best work of others, or one's best pieces... could be easier, more rewarding, and more acceptable."
    • (2001) Ivor Catt, the Catt Anomaly , pp. 31
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    • Response
    • George B. Shepherd ed., Peer reviewers have rejected many research claims that ultimately transformed science; including those by future Nobel laureates Enrico Fermi theory of radioactive decay, Paul Lauterbur magnetic resonance imaging, and Hans Krebs citric acid cycle
    • Graciela Chichilnisky, Response, in REJECTED: LEADING ECONOMISTS PONDER THE PUBLICATION PROCESS 67 (George B. Shepherd ed., 1995). Peer reviewers have rejected many research claims that ultimately transformed science; including those by future Nobel laureates Enrico Fermi (theory of radioactive decay), Paul Lauterbur (magnetic resonance imaging), and Hans Krebs (citric acid cycle).
    • (1995) Rejected: Leading Economists Ponder the Publication Process , pp. 67
    • Chichilnisky, G.1
  • 193
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    • Rejecting and resisting nobel class discoveries: Accounts by nobel laureates
    • 551-58, presenting stories from Nobel laureates rejected by scientific journals
    • See Juan Miguel Campanario, Rejecting and Resisting Nobel Class Discoveries: Accounts by Nobel Laureates, 81 SCIENTOMETRICS 549, 551-58 (2009) (presenting stories from Nobel laureates rejected by scientific journals).
    • (2009) Scientometrics , vol.81 , pp. 549
    • Campanario, J.M.1
  • 194
    • 81855205342 scopus 로고    scopus 로고
    • see also Chichilnisky, supra note 104, at 57 "In my experience, the more innovative and interesting the paper, the more likely it is to be rejected."
    • DAVID SHATZ, PEER REVIEW 10 (2004); see also Chichilnisky, supra note 104, at 57 ("In my experience, the more innovative and interesting the paper, the more likely it is to be rejected.");
    • (2004) Peer Review , pp. 10
    • Shatz, D.1
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    • Peer review at work
    • 1560, disclosing an editor's admission that peer review "favors unadventurous nibblings at the margin of truth rather than quantum leaps.". A recent study reveals that publishing results that do not positively align with then-existing mainstream ideas can have devastating reputational and pecuniary consequences
    • Stephen Lock, Peer Review at Work, 290 BRIT. MED. J. 1555, 1560 (1985) (disclosing an editor's admission that peer review "favor[s] unadventurous nibblings at the margin of truth rather than quantum leaps...."). A recent study reveals that publishing results that do not positively align with then-existing (mainstream) ideas can have devastating reputational and pecuniary consequences.
    • (1985) Brit. Med. J. , vol.290 , pp. 1555
    • Lock, S.1
  • 196
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    • The career consequences of a mistaken research project: The case of polywater
    • 407, concluding that researchers who wrote about polywater, either pro or con, suffered a negative impact on their future citations and a concomitant loss of financial income
    • See Arthur M. Diamond, Jr., The Career Consequences of a Mistaken Research Project: The Case of Polywater, 68 AM. J. ECON. SOC. 387, 407 (2009) (concluding that researchers who wrote about polywater, either pro or con, suffered a negative impact on their future citations and a concomitant loss of financial income);
    • (2009) Am. J. Econ. Soc , vol.68 , pp. 387
    • Diamond Jr., A.M.1
  • 197
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    • Apr. 30, 10:00 AM, opining in response to Diamond's study that "if this is a typical outcome, we can conclude that academic incentives are to just ignore contrarian claims that you do not believe will become mainstream"
    • Robin Hanson, OVERCOMING BIAS: POX ON BOTH HOUSES (Apr. 30, 2009, 10:00 AM), http://www.overcomingbias.com/2009/04 (opining in response to Diamond's study that "[i]f this is a typical outcome, we can conclude that academic incentives are to just ignore contrarian claims that you do not believe will become mainstream").
    • (2009) Overcoming Bias: Pox on Both Houses
    • Hanson, R.1
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    • See CHUBIN & HACKETT, supra note 93, at 90 arguing that journal peer review works against innovation and reinforces scientific dogma; DERRY, supra note 34, at 138 "Very innovative ideas and unexpected results tend to get selectively filtered out, making peer review a force for conservatism in science.";, explaining that resistance to change will be strong and long-lasting when a new claim challenges well-accepted paradigms
    • See CHUBIN & HACKETT, supra note 93, at 90 (arguing that journal peer review works against innovation and reinforces scientific dogma); DERRY, supra note 34, at 138 ("Very innovative ideas and unexpected results tend to get selectively filtered out, making peer review a force for conservatism in science."); THOMAS S. KUHN, THE STRUCTURE OF SCIENTIFIC REVOLUTIONS 64-65 (1962) (explaining that resistance to change will be strong and long-lasting when a new claim challenges well-accepted paradigms).
    • (1962) The Structure of Scientific Revolutions , pp. 64-65
    • Kuhn, T.S.1
  • 199
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    • See SHATZ, supra note 105, explaining bias in peer review. Potential types of bias include specialty bias, nationality bias, gender bias, age bias, and a bias toward positive results
    • See SHATZ, supra note 105, at 45-48 (explaining bias in peer review). Potential types of bias include specialty bias, nationality bias, gender bias, age bias, and a bias toward positive results.
  • 200
    • 81855205338 scopus 로고    scopus 로고
    • articulating the operation of the "principle of cumulative advantage" where elite scientists form and maintain closed networks, which means that "the rich get richer and the poor get poorer in the knowledge production business"
    • See STEVE FULLER, SCIENCE 73 (1997) (articulating the operation of the "principle of cumulative advantage" where elite scientists form and maintain closed networks, which means that "the rich get richer and the poor get poorer in the knowledge production business");
    • (1997) Science , pp. 73
    • Fuller, S.1
  • 201
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    • U. S. and non-U. S. submissions: An analysis of reviewer bias
    • 246-47, concluding that U. S. reviewers have a significant preference for U. S. papers
    • Ann M. Link, U. S. and Non-U. S. Submissions: An Analysis of Reviewer Bias, 280 J. AM. MED. ASS'N 246, 246-47 (1998) (concluding that U. S. reviewers have a significant preference for U. S. papers);
    • (1998) J. Am. Med. Ass'n , vol.280 , pp. 246
    • Link, A.M.1
  • 202
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    • Peer review: A flawed process at the heart of science journals
    • 180, describing the bias against work which discloses negative results
    • Richard Smith, Peer Review: A Flawed Process at the Heart of Science Journals, 99 J. ROYAL SOC'Y MED. 178, 180 (2006) (describing the bias against work which discloses negative results).
    • (2006) J. Royal Soc'y Med. , vol.99 , pp. 178
    • Smith, R.1
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    • Conflicts of interest in the publication of science
    • 266-67, noting that while no one expects editors to serve as "the science police", they must ensure that authors and reviewers disclose all potential conflicts
    • See Drummond Rennie et al., Conflicts of Interest in the Publication of Science, 266 J. AM. MED. ASS'N 266, 266-67 (1991) (noting that while no one expects editors to serve as "the science police", they must ensure that authors and reviewers disclose all potential conflicts).
    • (1991) J. Am. Med. Ass'n , vol.266 , pp. 266
    • Rennie, D.1
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    • Evidence on peer review-scientific quality control or smokescreen
    • 45, exploring difficulties with finding a bias-free metric to assess manuscript quality; Horrobin, supra note 103, at 1438 arguing that "quality control is one means of achieving an end, but it is not the end itself"; id. at 1439 arguing that any marginal improvement gained in research quality from rejecting a manuscript is no gain at all if it's done at the expense of innovation
    • See Sandra Goldbeck-Wood, Evidence on Peer Review-Scientific Quality Control or Smokescreen, 318 BRIT. MED. J. 44, 45 (1999) (exploring difficulties with finding a bias-free metric to assess manuscript quality); Horrobin, supra note 103, at 1438 (arguing that "[q]uality control is one means of achieving an end, but it is not the end itself"); id. at 1439 (arguing that any marginal improvement gained in research quality from rejecting a manuscript is no gain at all if it's done at the expense of innovation).
    • (1999) Brit. Med. J. , vol.318 , pp. 44
    • Goldbeck-Wood, S.1
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    • Peer review: A philosophically faulty concept which is proving disastrous for science
    • 34 Stevan R. Harnard ed., arguing that since brilliance is rare, a less-than-brilliant reviewer probably would not recognize it and reject the claim
    • See David F. Horrobin, Peer Review: A Philosophically Faulty Concept Which Is Proving Disastrous for Science, in PEER COMMENTARY ON PEER REVIEW 33, 34 (Stevan R. Harnard ed., 1982) (arguing that since brilliance is rare, a less-than-brilliant reviewer probably would not recognize it and reject the claim).
    • (1982) Peer Commentary on Peer Review , pp. 33
    • Horrobin, D.F.1
  • 206
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    • the Patent Act contains a loss-of-right provision, § 102 b, which precludes patentability for the inventor's own conduct. Particularly relevant here is that an inventor who discloses the invention in a printed publication including a published patent application more than one year before filing cannot obtain a patent, §, b
    • For example, the Patent Act contains a loss-of-right provision, § 102 (b), which precludes patentability for the inventor's own conduct. Particularly relevant here is that an inventor who discloses the invention in a printed publication (including a published patent application) more than one year before filing cannot obtain a patent. 35 U. S. C. § 102 (b) (2006).
    • (2006) U. S. C. , vol.35 , pp. 102
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    • In the context of the hypothetical, this means that the application filed at time X can defeat patentability at time Y. In re Katz, 454 C. C. P. A
    • In the context of the hypothetical, this means that the application filed at time X can defeat patentability at time Y. In re Katz, 687 F.2d 450, 454 (C. C. P. A. 1982).
    • (1982) F.2d , vol.687 , pp. 450
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    • See supra text accompanying note 17; see also, arguing that since "the future cannot be seen as the linear extension of the past, it is essential to believe that what was impossible yesterday is tomorrow's possibility!"
    • See supra text accompanying note 17; see also CEES J. HAMELINK, THE TECHNOLOGY GAMBLE, at x (1988) (arguing that since "the future cannot be seen as the linear extension of the past[,] it is essential to believe that what was impossible yesterday is tomorrow's possibility!");
    • (1988) The Technology Gamble
    • Hamelink, C.J.1
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    • "What was impossible yesterday. becomes possible today and commonplace tomorrow."
    • H. LEE MARTIN, TECHONOMICS 89 (2006) ("[W]hat was impossible yesterday... becomes possible today and commonplace tomorrow.").
    • (2006) Techonomics , pp. 89
    • Martin, H.L.1
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    • In re, Fed. Cir, generating energy with "cold fusion"
    • See, e.g., In re Swartz, 232 F.3d 862 (Fed. Cir. 2000) (generating energy with "cold fusion");
    • (2000) F.3d , vol.232 , pp. 862
    • Swartz1
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    • Newman v. Quigg, 1577 Fed. Cir, perpetual motion machine
    • Newman v. Quigg, 877 F.2d 1575, 1577 (Fed. Cir. 1989) (perpetual motion machine);
    • (1989) F.2d , vol.877 , pp. 1575
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    • Fregeau v. Mossinghoff, Fed. Cir, using a magnetic field to alter the taste of food
    • Fregeau v. Mossinghoff, 776 F.2d 1034 (Fed. Cir. 1985) (using a magnetic field to alter the taste of food);
    • (1985) F.2d , vol.776 , pp. 1034
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    • In re Eltgroth, C. C. P. A, claiming a method for controlling the aging process
    • In re Eltgroth, 419 F.2d 918 (C. C. P. A. 1970) (claiming a method for controlling the aging process);
    • (1970) F.2d , vol.419 , pp. 918
  • 215
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    • In re Ruskin, C. C. P. A, increasing the energy output of fossil fuels through exposure to a magnetic field
    • In re Ruskin, 354 F.2d 395 (C. C. P. A. 1966) (increasing the energy output of fossil fuels through exposure to a magnetic field).
    • (1966) F.2d , vol.354 , pp. 395
  • 216
    • 22144483296 scopus 로고    scopus 로고
    • Incentives to challenge and defend patents: Why litigation won't reliably fix patent office errors and why administrative patent review might help
    • 944-45, discussing biased procedures at the PTO which favor hasty examiner analysis and skewed incentives
    • See Joseph Farrell & Robert P. Merges, Incentives to Challenge and Defend Patents: Why Litigation Won't Reliably Fix Patent Office Errors and Why Administrative Patent Review Might Help, 19 BERKELEY TECH. L. J. 943, 944-45 (2004) (discussing biased procedures at the PTO which favor hasty examiner analysis and skewed incentives);
    • (2004) Berkeley Tech. L. J. , vol.19 , pp. 943
    • Farrell, J.1    Merges, R.P.2
  • 217
    • 69849092547 scopus 로고    scopus 로고
    • Growing pains in the administrative state: The patent office's troubled quest for managerial control
    • 2063-67, describing examiner compensation and incentives. The amount of time the PTO allots for an examiner to dispose of a case depends on factors like seniority and the technology involved
    • Arti K. Rai, Growing Pains in the Administrative State: The Patent Office's Troubled Quest for Managerial Control, 157 U. PA. L. REV. 2051, 2063-67 (2009) (describing examiner compensation and incentives). The amount of time the PTO allots for an examiner to dispose of a case depends on factors like seniority and the technology involved.
    • (2009) U. Pa. L. Rev. , vol.157 , pp. 2051
    • Rai, A.K.1
  • 219
    • 63049105807 scopus 로고    scopus 로고
    • suggesting that the examiners' unfamiliarity with new technologies and lack of knowledge may hurt patent examination quality
    • For thoughts on how this technology gap affects patent examination, see JAMES BESSEN & MICHAEL J. MEURER, PATENT FAILURE 161 (2008) (suggesting that the examiners' unfamiliarity with new technologies and lack of knowledge may hurt patent examination quality);
    • (2008) Patent Failure , pp. 161
    • Bessen, J.1    Meurer, M.J.2
  • 220
    • 77953596095 scopus 로고    scopus 로고
    • The disputed quality of software patents
    • 314, "Patent examiners unfamiliar with a cutting-edge technology like software may be less capable of assessing the quality of the disclosure or of the innovation than they are in technological areas with which they are more familiar."
    • John R. Allison & Ronald J. Mann, The Disputed Quality of Software Patents, 85 WASH. U. L. REV. 297, 314 (2007) ("[P]atent examiners unfamiliar with a cutting-edge technology like software may be less capable of assessing the quality of the disclosure or of the innovation than they are in technological areas with which they are more familiar.").
    • (2007) Wash. U. L. Rev. , vol.85 , pp. 297
    • Allison, J.R.1    Mann, R.J.2
  • 221
    • 0025630673 scopus 로고
    • Patenting medical technology
    • 264-69, tracing the history of the disconnect to technical and subjective factors
    • For thoughts on the disconnect between the judicial bench and the laboratory bench and the consequences for patent law, see William D. Noonan, Patenting Medical Technology, 11 J. LEGAL MED. 263, 264-69 (1990) (tracing the history of the disconnect to technical and subjective factors);
    • (1990) J. Legal Med. , vol.11 , pp. 263
    • Noonan, W.D.1
  • 222
    • 0038034789 scopus 로고    scopus 로고
    • Engaging facts and policy: A multi-institutional approach to patent system reform
    • 1068, highlighting the lack of technical expertise on the Federal Circuit
    • Arti K. Rai, Engaging Facts and Policy: A Multi-Institutional Approach to Patent System Reform, 103 COLUM. L. REV. 1035, 1068 (2003) (highlighting the lack of technical expertise on the Federal Circuit);
    • (2003) Colum. L. Rev. , vol.103 , pp. 1035
    • Rai, A.K.1
  • 223
    • 79959262821 scopus 로고    scopus 로고
    • supra note 15, arguing that the courts misunderstand what constitutes "undue experimentation"
    • Seymore, Heightened Enablement, supra note 15, at 148-50 (arguing that the courts misunderstand what constitutes "undue experimentation");
    • Heightened Enablement , pp. 148-150
    • Seymore1
  • 224
    • 81855201147 scopus 로고    scopus 로고
    • supra note 15, exploring how the judiciary's unfamiliarity and discomfort with complex technologies has impacted the law of novelty
    • Seymore, Rethinking Novelty, supra note 15, at 946-57 (exploring how the judiciary's unfamiliarity and discomfort with complex technologies has impacted the law of novelty).
    • Rethinking Novelty , pp. 946-957
    • Seymore1
  • 225
    • 81855166138 scopus 로고
    • It is axiomatic in patent law that many inventors must rely on investors to cover the hefty costs of patent procurement and commercialization. See, "To have the use of capital is nearly always indispensable for the development of an invention, and, unless the inventor is of that fortunate class who have the means to work their own patents, he must appeal for support to one or more people with money."
    • It is axiomatic in patent law that many inventors must rely on investors to cover the hefty costs of patent procurement and commercialization. See JOHN SAMSON, INVENTIONS AND THEIR COMMERCIAL DEVELOPMENT 51 (1896) ("To have the use of capital is nearly always indispensable for the development of an invention, and, unless the inventor is of that fortunate class who have the means to work their own patents, he must appeal for support to one or more people with money.");
    • (1896) Inventions and Their Commercial Development , pp. 51
    • Samson, J.1
  • 226
    • 0347669443 scopus 로고    scopus 로고
    • Certainty, fence building, and the useful arts
    • 759, "The prospect of certainty in the patentee's property interest has several benefits, one of which is to create a sense of security which permits the patentee to secure risk capital from investors, which in turn facilitates the commercialization of the claimed invention. "
    • Craig Allen Nard, Certainty, Fence Building, and the Useful Arts, 74 IND. L. J. 759, 759 (1999) ("The prospect of certainty in the patentee's property interest has several benefits, one of which is to create a sense of security which permits the patentee to secure risk capital from investors, which in turn facilitates the commercialization of the claimed invention. "
    • (1999) Ind. L. J. , vol.74 , pp. 759
    • Nard, C.A.1
  • 227
    • 84892709258 scopus 로고
    • citing Patlex Corp. v. Mossinghoff, 599 Fed. Cir, "Encouragement of investment-based risk is the fundamental purpose of the patent grant...."
    • (citing Patlex Corp. v. Mossinghoff, 758 F.2d 594, 599 (Fed. Cir. 1985) ("[E]ncouragement of investment-based risk is the fundamental purpose of the patent grant...."))).
    • (1985) F.2d , vol.758 , pp. 594
  • 228
    • 81855186057 scopus 로고
    • Id. For example, there was a time when the PTO and several judges believed that clinical evidence or FDA approval should be a prerequisite for patenting drugs which appear unsafe or risky. Compare In re Hartop, 260 C. C. P. A, Smith, J., concurring criticizing the PTO's position that it was "carrying out its statutory duty, when it required proof of safety and effectiveness in man", with id. at 263-66 Worley, C. J., dissenting agreeing with the PTO that Congress intended for it to work cooperatively with other agencies to ensure safety and effectiveness. Now it is clear that drug safety is not the PTO's responsibility
    • Id. For example, there was a time when the PTO and several judges believed that clinical evidence or FDA approval should be a prerequisite for patenting drugs which appear unsafe or risky. Compare In re Hartop, 311 F.2d 249, 260 (C. C. P. A. 1962) (Smith, J., concurring) (criticizing the PTO's position that it was "carrying out its statutory duty, when [it] required proof of safety and effectiveness in man"), with id. at 263-66 (Worley, C. J., dissenting) (agreeing with the PTO that Congress intended for it to work cooperatively with other agencies to ensure safety and effectiveness). Now it is clear that drug safety is not the PTO's responsibility.
    • (1962) F.2d , vol.311 , pp. 249
  • 229
    • 81855186071 scopus 로고
    • See Scott v. Finney, 1063-64 Fed. Cir, explaining that § 101 and other provisions of the patent statutes do not establish safety as a patentability criterion
    • See Scott v. Finney, 34 F.3d 1058, 1063-64 (Fed. Cir. 1994) (explaining that § 101 and other provisions of the patent statutes do not establish safety as a patentability criterion);
    • (1994) F.3d , vol.34 , pp. 1058
  • 230
    • 81855166139 scopus 로고
    • In re Anthony, 1455-56 C. C. P. A, same
    • In re Anthony, 414 F.2d 1383, 1455-56 (C. C. P. A. 1969) (same);
    • (1969) F.2d , vol.414 , pp. 1383
  • 231
    • 81855193157 scopus 로고
    • see also In re Sichert, 1160 C. C. P. A, noting that a minimal level of safety will satisfy § 101
    • see also In re Sichert, 566 F.2d 1154, 1160 (C. C. P. A. 1977) (noting that a minimal level of safety will satisfy § 101).
    • (1977) F.2d , vol.566 , pp. 1154
  • 232
    • 81855186051 scopus 로고
    • In re Citron, 253 C. C. P. A, discussed infra Part II. B.2 c
    • In re Citron, 325 F.2d 248, 253 (C. C. P. A. 1963) (discussed infra Part II. B.2 (c));
    • (1963) F.2d , vol.325 , pp. 248
  • 233
    • 81855193195 scopus 로고
    • see also Isenstead v. Watson, 9 D. D. C, contending that the patent grant "gives a kind of official imprimatur to the invention in question on which as a moral matter some members of the public are likely to rely.". The fear is that some might view the patent grant, albeit improperly, as the government's endorsement of the technology
    • see also Isenstead v. Watson, 157 F. Supp. 7, 9 (D. D. C. 1957) (contending that the patent grant "gives a kind of official imprimatur to the [invention] in question on which as a moral matter some members of the public are likely to rely."). The fear is that some might view the patent grant, albeit improperly, as the government's endorsement of the technology.
    • (1957) F. Supp. , vol.157 , pp. 7
  • 234
    • 81855186059 scopus 로고    scopus 로고
    • Splicing morality and patent law: Issues arising from mixing mice and men
    • 253, noting that issuing patents covering controversial technologies might be viewed as governmental endorsement
    • See Cynthia M. Ho, Splicing Morality and Patent Law: Issues Arising from Mixing Mice and Men, 2 WASH. U. J. L. & POL'Y 247, 253 n. 29 (2000) (noting that issuing patents covering controversial technologies might be viewed as governmental endorsement);
    • (2000) Wash. U. J. L. & Pol'y , vol.2 , Issue.29 , pp. 247
    • Ho, C.M.1
  • 235
    • 73649148026 scopus 로고    scopus 로고
    • The expressive impact of patents
    • 599-600, explaining that governments may choose to deny patents on certain inventions in order to eliminate the signal of perceived endorsement or encouragement. A patentee might also "advertise its patent to convince gullible consumers that a patent represents the government's endorsement or imprimatur that the advertised product is actually effective."
    • Timothy R. Holbrook, The Expressive Impact of Patents, 84 WASH. U. L. REV. 573, 599-600 (2006) (explaining that governments may choose to deny patents on certain inventions in order to eliminate the signal of perceived endorsement or encouragement). A patentee might also "advertise its patent to convince gullible consumers that a patent represents the government's endorsement or imprimatur that the advertised product is actually effective."
    • (2006) Wash. U. L. Rev. , vol.84 , pp. 573
    • Holbrook, T.R.1
  • 236
    • 44449120079 scopus 로고    scopus 로고
    • Patents of damocles
    • 144, citation omitted
    • Christopher R. Leslie, Patents of Damocles, 83 IND. L. J. 133, 144 (2008) (citation omitted).
    • (2008) Ind. L. J. , vol.83 , pp. 133
    • Leslie, C.R.1
  • 237
    • 84855461244 scopus 로고    scopus 로고
    • But see Hartop, "The issuance of a patent is not in fact an 'imprimatur' as to. safety and effectiveness.... A patent is no guarantee of anything.... The public, therefore, is in no way protected either by the granting or withholding of a patent."
    • But see Hartop, 311 F.2d at 263 ("[T]he issuance of a patent is not in fact an 'imprimatur' as to... safety and effectiveness.... [A patent] is no guarantee of anything.... The public, therefore, is in no way protected either by the granting or withholding of a patent.").
    • F.2d , vol.311 , pp. 263
  • 238
    • 85015780740 scopus 로고    scopus 로고
    • Hair transplantation
    • 175 Amy J. McMichael & Maria K. Hordinsky eds., noting that, in modern times, more than fifty percent of men and twenty-five percent of women suffer from some degree of hair loss
    • See Ron Shapiro & Valerie D. Callender, Hair Transplantation, in HAIR AND SCALP DISEASES 175, 175 (Amy J. McMichael & Maria K. Hordinsky eds., 2008) (noting that, in modern times, more than fifty percent of men and twenty-five percent of women suffer from some degree of hair loss).
    • (2008) Hair and Scalp Diseases , pp. 175
    • Shapiro, R.1    Callender, V.D.2
  • 239
    • 81855193168 scopus 로고    scopus 로고
    • Again, the Old Testament provides a famous example. One day the prophet Elisha, who lost most of his hair at a young age, faced mockery from a group of boys while on a journey. See, comparing the story to The Lord of the Flies. According to Craughwell, "This mockery of his hairless head made Elisha a mite peevish." Id. at 228. Indeed, it led to a gruesome result: Elisha went up to Bethel. As he was walking along the road, some boys came out of the town and jeered at him. "Get out of here, baldy!" they said. "Get out of here, baldy!" He turned around, looked at them and called down a curse on them in the name of the Lord. Then two bears came out of the woods and mauled forty-two of the boys. And he went on to Mount Carmel.... 2 Kings 2:23-25 New International
    • Again, the Old Testament provides a famous example. One day the prophet Elisha, who lost most of his hair at a young age, faced mockery from a group of boys while on a journey. See THOMAS J. CRAUGHWELL, BAD KIDS OF THE BIBLE 225-30 (2008) (comparing the story to The Lord of the Flies). According to Craughwell, "[T]his mockery of his hairless head made Elisha a mite peevish." Id. at 228. Indeed, it led to a gruesome result: Elisha went up to Bethel. As he was walking along the road, some boys came out of the town and jeered at him. "Get out of here, baldy!" they said. "Get out of here, baldy!" He turned around, looked at them and called down a curse on them in the name of the Lord. Then two bears came out of the woods and mauled forty-two of the boys. And he went on to Mount Carmel.... 2 Kings 2:23-25 (New International).
    • (2008) Bad Kids of the Bible , pp. 225-230
    • Craughwell, T.J.1
  • 240
    • 81855186074 scopus 로고    scopus 로고
    • exploring various quests and treatments throughout history; id. at 3 discussing the first written medical record from ancient Egypt of recipes for baldness treatment
    • See generally KERRY SEGRAVE, BALDNESS: A SOCIAL HISTORY 32-65 (1996) (exploring various quests and treatments throughout history); id. at 3 (discussing the first written medical record from ancient Egypt of recipes for baldness treatment).
    • (1996) Baldness: A Social History , pp. 32-65
    • Segrave, K.1
  • 241
    • 81855186077 scopus 로고    scopus 로고
    • Contemporary treatments include topical applications, drugs, herbal remedies, massage techniques, and lifestyle changes
    • For a brief historical account of the various quests, see CHRISTOPHER WANJEK, BAD MEDICINE 48-52 (2003). Contemporary treatments include topical applications, drugs, herbal remedies, massage techniques, and lifestyle changes.
    • (2003) Bad Medicine , pp. 48-52
    • Wanjek, C.1
  • 243
    • 81855166134 scopus 로고
    • C. C. P. A
    • 115 F.2d 826 (C. C. P. A. 1940).
    • (1940) F.2d , vol.115 , pp. 826
  • 244
    • 81855186070 scopus 로고    scopus 로고
    • Prior art "constitutes... documentary sources patents and publications from anywhere in the world and non-documentary sources things known, used or invented in the United States " that may be used to determine the novelty and nonobviousness of claimed subject matter in a patent application or patent. 1, hereinafter Chisum
    • Prior art "constitutes... documentary sources (patents and publications from anywhere in the world) and non-documentary sources (things known, used or invented in the United States) " that may be used to determine the novelty and nonobviousness of claimed subject matter in a patent application or patent. 1 DONALD S. CHISUM, CHISUM ON PATENTS, GLOSSARY, Gl-8 (2010) [hereinafter Chisum];
    • (2010) Chisum on Patents, Glossary
    • Chisum, D.S.1
  • 245
    • 84880255034 scopus 로고
    • see also Kimberly-Clark Corp. v. Johnson & Johnson, 1453 Fed. Cir, defining prior art as accessible technology in the public domain
    • see also Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984) (defining prior art as accessible technology in the public domain).
    • (1984) F.2d , vol.745 , pp. 1437
  • 246
    • 81855166164 scopus 로고    scopus 로고
    • Oberweger, 115 F.2d at 827.
    • F.2d , vol.115 , pp. 827
    • Oberweger1
  • 247
    • 81855166164 scopus 로고    scopus 로고
    • That the claimed composition comprised cheap and ordinary substances certainly raised suspicion. Indeed, the Oberweger court cited a case where the court invalidated a patent which claimed that a face cream made with whole milk could whiten skin. Id. at 828
    • Oberweger, 115 F.2d at 827. That the claimed composition comprised cheap and ordinary substances certainly raised suspicion. Indeed, the Oberweger court cited a case where the court invalidated a patent which claimed that a face cream made with whole milk could whiten skin. Id. at 828
    • F.2d , vol.115 , pp. 827
    • Oberweger1
  • 248
    • 81855205340 scopus 로고
    • citing Hall v. Duart Sales Co., 839 N. D. Ill.
    • (citing Hall v. Duart Sales Co., 28 F. Supp. 838, 839 (N. D. Ill. 1939)
    • (1939) F. Supp. , vol.28 , pp. 838
  • 249
    • 81855193173 scopus 로고
    • Invalidating massage and cleansing cream and method of preparing the same
    • issued May 1, for a lack of utility because the addition of milk to the cream "did nothing"
    • (invalidating Massage and Cleansing Cream and Method of Preparing the Same, U. S. Pat. No. 1, 668, 503 (issued May 1, 1928), for a lack of utility because the addition of milk to the cream "d[id] nothing").
    • (1928) U. S. Pat. , vol.668 , Issue.1 , pp. 503
  • 250
    • 81855186080 scopus 로고    scopus 로고
    • emphasis added
    • Oberweger, 115 F.2d at 829 (emphasis added).
    • F.2d , vol.115 , pp. 829
    • Oberweger1
  • 252
    • 81855210276 scopus 로고
    • C. C. P. A
    • 417 F.2d 1072 (C. C. P. A. 1969).
    • (1969) F.2d , vol.417 , pp. 1072
  • 253
    • 25844476888 scopus 로고    scopus 로고
    • Jaborandi is an herbal shrub with small reddish-purple flowers found mainly in Brazil
    • Jaborandi is an herbal shrub with small reddish-purple flowers found mainly in Brazil. Ben-Erik van Wyk & Michael Wink, Medicinal Plants of the World 239 (2004).
    • (2004) Medicinal Plants of the World , pp. 239
    • Van Wyk, B.-E.1    Wink, M.2
  • 254
    • 81855166158 scopus 로고    scopus 로고
    • Ferens, 417 F.2d at 1074.
    • F.2d , vol.417 , pp. 1074
    • Ferens1
  • 255
    • 81855186081 scopus 로고
    • providing a recipe for making a hair tonic for reversing partial baldness with jaborandi extract which contains an optimal level of pilocarpine
    • See, e.g., HOBART A. HARE, A TEXTBOOK OF PRACTICAL THERAPEUTICS 322 (1897) (providing a recipe for making a hair tonic for reversing partial baldness with jaborandi extract which contains an optimal level of pilocarpine);
    • (1897) A Textbook of Practical Therapeutics , pp. 322
    • Hare, H.A.1
  • 256
    • 81855205330 scopus 로고
    • reporting successful cases of hair regrowth in patients whose scalps were treated with a jaborandi paste over several weeks
    • GEORGE T. JACKSON, A PRACTICAL TREATISE ON THE DISEASES OF THE HAIR AND SCALP 135 (1898) (reporting successful cases of hair regrowth in patients whose scalps were treated with a jaborandi paste over several weeks);
    • (1898) A Practical Treatise on the Diseases of the Hair and Scalp , pp. 135
    • Jackson, G.T.1
  • 257
    • 81855205331 scopus 로고
    • Baldness and its treatment
    • 376, noting that the direct injection of either pilocarpine or an alcoholic extract of the jaborandi plant promotes hair growth but is too powerful a remedy for indiscriminate use. Pilocarpine works by increasing the blood circulation around hair follicles and opening skin pores which has the added benefit of promoting the uptake of other compounds into the scalp
    • Baldness and Its Treatment, 2 LANCET 376, 376 (1892) (noting that the direct injection of either pilocarpine or an alcoholic extract of the jaborandi plant promotes hair growth but is too powerful a remedy for indiscriminate use). Pilocarpine works by increasing the blood circulation around hair follicles and opening skin pores (which has the added benefit of promoting the uptake of other compounds into the scalp).
    • (1892) Lancet , vol.2 , pp. 376
  • 259
    • 81855166158 scopus 로고    scopus 로고
    • Ferens, 417 F.2d at 1074.
    • F.2d , vol.417 , pp. 1074
    • Ferens1
  • 260
    • 68549102939 scopus 로고    scopus 로고
    • See 6-Amino-4-Substituted Amino-1, 2-Dihydro-1-Hydroxy-2-Iminopyrimidine, Topical Compositions and Process for Hair Growth, U. S. Patent No. 4, 139, 619 filed Aug. 19, 1977 issued Feb. 13, 1979. Interestingly, Upjohn originally developed minoxidil in pill form to treat high blood pressure. See, However, the drug had an unexpected side effect: people who took it grew hair in an unexpected manner on their cheeks, foreheads, hands, and in other places
    • See 6-Amino-4-(Substituted Amino)-1, 2-Dihydro-1-Hydroxy-2- Iminopyrimidine, Topical Compositions and Process for Hair Growth, U. S. Patent No. 4, 139, 619 (filed Aug. 19, 1977) (issued Feb. 13, 1979). Interestingly, Upjohn originally developed minoxidil in pill form to treat high blood pressure. See JOHN TOEDT ET AL., CHEMICAL COMPOSITION OF EVERYDAY PRODUCTS 40 (2005). However, the drug had an unexpected side effect: people who took it grew hair in an unexpected manner on their cheeks, foreheads, hands, and in other places.
    • (2005) Chemical Composition of Everyday Products , pp. 40
    • Toedt, J.1
  • 261
    • 81855166162 scopus 로고    scopus 로고
    • telling the minoxidil story. Researchers soon figured out that applying minoxidil directly on a balding scalp might regrow hair on it. Id. Minoxidil is one of two FDA-approved treatments for treating male pattern baldness. See VERRET, supra note 131, at 49
    • See SPENCER D. KOBREN, THE BALD TRUTH 4 (2000) (telling the minoxidil story). Researchers soon figured out that applying minoxidil directly on a balding scalp might regrow hair on it. Id. Minoxidil is one of two FDA-approved treatments for treating male pattern baldness. See VERRET, supra note 131, at 49.
    • (2000) The Bald Truth , pp. 4
    • Kobren, S.D.1
  • 262
    • 33845190553 scopus 로고    scopus 로고
    • Fed. Cir
    • 165 F.3d 1353 (Fed. Cir. 1999).
    • (1999) F.3d , vol.165 , pp. 1353
  • 263
    • 81855205332 scopus 로고
    • Ex parte moore
    • 9-10 Bd. Pat. App, determining that any suggestion that the claimed compounds could treat cancer was incredible and misleading. One exception occurred in 1959 when the PTO allowed a single medical use claim for a drug useful in bringing about remission in myeloid leukemia
    • See, e.g., Ex parte Moore, 128 U. S. P. Q. 8, 9-10 (Bd. Pat. App. 1960) (determining that any suggestion that the claimed compounds could treat cancer was incredible and misleading). One exception occurred in 1959 when the PTO allowed a single medical use claim for a drug useful in bringing about remission in myeloid leukemia.
    • (1960) U. S. P. Q. , vol.128 , pp. 8
  • 264
    • 81855193181 scopus 로고
    • See Ex parte Timmis, 583 Bd. Pat. App, overturning the examiner's § 101 rejection. But this occurred only after two prior appeals to the Board and overwhelming evidence which included "voluminous" clinical evidence, prior FDA approval, endorsement by the American Medical Association, patient affidavits, peer reviewed publications, and testimony that "spontaneous remissions are rare in cases of leukemia." Id. at 581-82
    • See Ex parte Timmis, 123 U. S. P. Q. 581, 583 (Bd. Pat. App. 1959) (overturning the examiner's § 101 rejection). But this occurred only after two prior appeals to the Board and overwhelming evidence which included "voluminous" clinical evidence, prior FDA approval, endorsement by the American Medical Association, patient affidavits, peer reviewed publications, and testimony that "spontaneous remissions are rare in cases of leukemia." Id. at 581-82.
    • (1959) U. S. P. Q. , vol.123 , pp. 581
  • 265
    • 81855193190 scopus 로고    scopus 로고
    • discussed supra note 153. This lies in contrast to the status quo, which places the burden on the PTO to prove inoperability. See discussion supra Part II. A.1; infra notes 176-177 and accompanying text
    • See, e.g., Timmis, 123 U. S. P. Q. at 581 (discussed supra note 153). This lies in contrast to the status quo, which places the burden on the PTO to prove inoperability. See discussion supra Part II. A.1; infra notes 176-177 and accompanying text.
    • U. S. P. Q. , vol.123 , pp. 581
    • Timmis1
  • 266
    • 81855186051 scopus 로고
    • C. C. P. A
    • 325 F.2d 248 (C. C. P. A. 1963).
    • (1963) F.2d , vol.325 , pp. 248
  • 267
    • 81855193192 scopus 로고
    • See id. at 251-52. Although the disclosure did not identify the hormone-like compounds by name or structure, C. C. P. A. precedent permitted an applicant to claim a product by the process of making it if there was no other way to define it. In re McKee, 266 C. C. P. A, sanctioning product-by-process claims
    • See id. at 251-52. Although the disclosure did not identify the hormone-like compounds by name or structure, C. C. P. A. precedent permitted an applicant to claim a product by the process of making it if there was no other way to define it. In re McKee, 95 F.2d 264, 266 (C. C. P. A. 1938) (sanctioning product-by-process claims).
    • (1938) F.2d , vol.95 , pp. 264
  • 268
    • 81855166163 scopus 로고    scopus 로고
    • Citron, 325 F.2d at 252.
    • F.2d , vol.325 , pp. 252
    • Citron1
  • 269
    • 81855210276 scopus 로고
    • cf. In re Ferens, 1074 C. C. P. A, "Evidence submitted to establish usefulness must be such as would be clear and convincing to a PHOSITA."
    • cf. In re Ferens, 417 F.2d 1072, 1074 (C. C. P. A. 1969) ("Evidence submitted to establish usefulness must be such as would be clear and convincing to [a PHOSITA].").
    • (1969) F.2d , vol.417 , pp. 1072
  • 270
    • 85017661197 scopus 로고
    • In In re, C. C. P. A, the court identified three types of operability cases and the requisite proof for each:, In the usual case where the mode of operation alleged can be readily understood and conforms to the known laws of physics and chemistry, operativeness is not questioned, and no further evidence is required. On the other hand, if the alleged operation seems clearly to conflict with a recognized scientific principle as, for example, where an applicant purports to have discovered a machine producing perpetual motion, the presumption of inoperativeness is so strong that very clear evidence is required to overcome it
    • In In re Chilowsky, 229 F.2d 457 (C. C. P. A. 1956), the court identified three types of operability cases and the requisite proof for each: [I]n the usual case where the mode of operation alleged can be readily understood and conforms to the known laws of physics and chemistry, operativeness is not questioned, and no further evidence is required. On the other hand, if the alleged operation seems clearly to conflict with a recognized scientific principle as, for example, where an applicant purports to have discovered a machine producing perpetual motion, the presumption of inoperativeness is so strong that very clear evidence is required to overcome it.
    • (1956) F.2d , vol.229 , pp. 457
    • Chilowsky1
  • 271
    • 81855205376 scopus 로고
    • A third type of case was involved in In re, C. C. P. A, wherein the device involved was of such a nature that it could not be tested by any known scientific principles. In such a case, as we there held, it is incumbent on the applicant to demonstrate the workability and utility of the device and make clear the principles on which it operates
    • A third type of case was involved in In re Perrigo, 48 F.2d 965 [C. C. P. A. 1931], wherein the device involved was of such a nature that it could not be tested by any known scientific principles. In such a case, as we there held, it is incumbent on the applicant to demonstrate the workability and utility of the device and make clear the principles on which it operates.
    • (1931) F.2d , vol.48 , pp. 965
    • Perrigo1
  • 272
    • 81855186064 scopus 로고
    • The patent office and pharmaceutical invention
    • Id. at 462; see also, 673, explaining that, from the perspective of the examining corps and in accord with C. C. P. A. precedent, heightened proof is required if human use is involved and the condition is one which is difficult to treat
    • Id. at 462; see also Irving Marcus, The Patent Office and Pharmaceutical Invention, 47 J. PAT. OFF. SOC'Y 669, 673 (1965) (explaining that, from the perspective of the examining corps and in accord with C. C. P. A. precedent, heightened proof is required if human use is involved and the condition is one which is difficult to treat).
    • (1965) J. Pat. Off. Soc'y , vol.47 , pp. 669
    • Marcus, I.1
  • 273
    • 81855186079 scopus 로고    scopus 로고
    • citation and internal quotation marks omitted
    • Citron, 325 F.2d at 253 (citation and internal quotation marks omitted).
    • F.2d , vol.325 , pp. 253
    • Citron1
  • 274
    • 81855205332 scopus 로고
    • Ex parte moore
    • In his opinion Judge Rich cited with approval, 9 Bd. Pat. App
    • In his opinion Judge Rich cited with approval Ex parte Moore, 128 U. S. P. Q. 8, 9 (Bd. Pat. App. 1960).
    • (1960) U. S. P. Q. , vol.128 , pp. 8
  • 275
    • 81855186079 scopus 로고    scopus 로고
    • There the Board stated the following:, The Office is particularly bound to take notice of the question of utility, because. a patent grant is an assurance to the public of the conclusions of the Office.... Cases are not unknown where patents have been secured... and then used simply to impose on a public not disposed to scrutinize closely the merits of a matter upon which the Patent Office has set the seal of its approval
    • Citron, 325 F.2d at 253. There the Board stated the following: The Office is particularly bound to take notice of the question of utility, because... a [patent] grant is an assurance to the public of the conclusions of the Office.... Cases are not unknown where patents have been secured... and then used simply to impose on a public not disposed to scrutinize closely the merits of a matter upon which the Patent Office has set the seal of its approval.
    • F.2d , vol.325 , pp. 253
    • Citron1
  • 276
    • 81855166141 scopus 로고
    • Id. quoting Ex parte De Bausset, 1585
    • Id. (quoting Ex parte De Bausset, 43 O. G. 1583, 1585 (1888)).
    • (1888) O. G. , vol.43 , pp. 1583
  • 277
    • 84897612277 scopus 로고
    • 4 CHISUM, supra note 134, § 4.04[2]; see also Joseph Gray Jackson, Address at the Institute of Patent Law of the Southwest Legal Foundation (Mar. 30, 1967) (observing that while utility is readily accepted without question for new machines, "[a]n elaborate ritual dance is required to satisfy the Patent Office as to the disclosure of [the] utility of a drug"), quoted in In re Kirk, 376 F.2d 936, 958 (C. C. P. A. 1967) (Rich, J., dissenting). Professor Chisum has explained why the double standard existed: The stern view of earlier cases was in reaction to the fact that "it was common in the 19th century to emphasize in advertising the fact that an article was patented. For instance, the phrase 'patent medicine' arises from the widespread sale of patented compounds as medical remedies of various degrees of efficacy." Emphasis on the "patented" status of any product tends to be misleading to the general public because the standards of patentability focus primarily on novelty and not on comparative utility. But the problem was perceived as more severe with products closely connected with human health. 4 CHISUM, supra, § 4.04[2][a]
    • (1967) F.2d , vol.376 , pp. 936
  • 279
    • 81855205312 scopus 로고
    • C. C. P. A
    • 628 F.2d 1322 (C. C. P. A. 1980).
    • (1980) F.2d , vol.628 , pp. 1322
  • 280
    • 81855166181 scopus 로고
    • See id. "When utility as a drug, medicant, and the like in human therapy is alleged, it is proper for the examiner to ask for substantiating evidence unless a PHOSITA would accept the allegations as obviously correct." citing In re Novak, 928 C. C. P. A
    • See id. ("When utility as a drug, medicant, and the like in human therapy is alleged, it is proper for the examiner to ask for substantiating evidence unless [a PHOSITA] would accept the allegations as obviously correct." (citing In re Novak, 306 F.2d 924, 928 (C. C. P. A. 1962));
    • (1962) F.2d , vol.306 , pp. 924
  • 281
    • 81855193170 scopus 로고
    • Ex parte busse
    • 1909 B. P. A. I, explaining that while the art of cancer treatment had advanced markedly since Citron to the extent that treating or curing it was no longer incredible, "unusual" asserted utilities justify the requirement for substantiating evidence; Jackson, supra note 163 "If the drug is to be applied to humans, the Patent Office usually requires clinical tests, that is, tests on human patients."
    • see also Ex parte Busse, 1 U. S. P. Q.2d 1908, 1909 (B. P. A. I. 1986) (explaining that while the art of cancer treatment had advanced markedly since Citron to the extent that treating or curing it was no longer incredible, "unusual" asserted utilities justify the requirement for substantiating evidence); Jackson, supra note 163 ("If the drug is to be applied to humans, the Patent Office usually requires clinical tests, that is,
    • (1986) U. S. P. Q.2d , vol.1 , pp. 1908
  • 282
    • 81855193182 scopus 로고    scopus 로고
    • quoted in Kirk, Rich, J., dissenting. If the applicant provided no substantiating evidence or only speculative statements, a rejection was guaranteed
    • quoted in Kirk, 376 F.2d at 958 (Rich, J., dissenting). If the applicant provided no substantiating evidence or only speculative statements, a rejection was guaranteed.
    • F.2d , vol.376 , pp. 958
  • 283
    • 81855205328 scopus 로고
    • Ex parte Stevens, 1380, B. P. A. I, no substantiating evidence provided
    • See, e.g., Ex parte Stevens, 16 U. S. P. Q.2d 1379, 1380 (B. P. A. I. 1990) (no substantiating evidence provided);
    • (1990) U. S. P. Q.2d , vol.16 , pp. 1379
  • 284
    • 81855205326 scopus 로고    scopus 로고
    • determining that applicant's statement that the disclosed results "warranted further study" was insufficient to establish utility
    • Busse, 1 U. S. P. Q.2d at 1909 (determining that applicant's statement that the disclosed results "warrant[ed] further study" was insufficient to establish utility).
    • U. S. P. Q.2d , vol.1 , pp. 1909
    • Busse1
  • 285
    • 0041446429 scopus 로고    scopus 로고
    • Fed. Cir
    • 51 F.3d 1560 (Fed. Cir. 1995).
    • (1995) F.3d , vol.51 , pp. 1560
  • 286
    • 81855205312 scopus 로고
    • Id. at 1566 citing In re Jolles, 1327 C. C. P. A
    • Id. at 1566 (citing In re Jolles, 628 F.2d 1322, 1327 (C. C. P. A. 1980)).
    • (1980) F.2d , vol.628 , pp. 1322
  • 287
    • 81855193179 scopus 로고
    • Id. at 1567 citing In re Krimmel, 953 C. C. P. A, determining that testing with experimental animals can establish utility explaining that in vivo and animal testing are sufficient
    • Id. at 1567 (citing In re Krimmel, 292 F.2d 948, 953 (C. C. P. A. 1961) (determining that testing with experimental animals can establish utility)) (explaining that in vivo and animal testing are sufficient).
    • (1961) F.2d , vol.292 , pp. 948
  • 288
    • 81855186071 scopus 로고
    • see also Scott v. Finney, 1063 Fed. Cir, "Title 35 does not demand that such human testing occur within the confines of PTO proceedings."
    • see also Scott v. Finney, 34 F.3d 1058, 1063 (Fed. Cir. 1994) ("Title 35 does not demand that such human testing occur within the confines of [PTO] proceedings.").
    • (1994) F.3d , vol.34 , pp. 1058
  • 289
    • 84938394461 scopus 로고    scopus 로고
    • See In re Oetiker, 1445 Fed. Cir, describing the PTO's burden to establish a prima facie case of unpatentability; id. at 1449 Plager, J., concurring explaining that an applicant is entitled to a patent unless the PTO can prove otherwise
    • See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (describing the PTO's burden to establish a prima facie case of unpatentability); id. at 1449 (Plager, J., concurring) (explaining that an applicant is entitled to a patent unless the PTO can prove otherwise).
    • (1992) F.2d , vol.977 , pp. 1443
  • 290
    • 0041446429 scopus 로고    scopus 로고
    • See In re Brana, 1566 Fed. Cir
    • See In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)
    • (1995) F.3d , vol.51 , pp. 1560
  • 291
    • 33845195604 scopus 로고
    • applying the evidentiary framework articulated for enablement in In re Marzocchi, 223 C. C. P. A, to the utility context; see also MPEP, supra note 47, § 2107 II D "Office personnel are reminded that they must treat as true a statement of fact made by an applicant in relation to an asserted utility, unless countervailing evidence can be provided....". The C. C. P. A. laid the foundation for the presumption of utility in a case nearly thirty years earlier
    • (applying the evidentiary framework articulated for enablement in In re Marzocchi, 439 F.2d 220, 223 (C. C. P. A. 1971), to the utility context); see also MPEP, supra note 47, § 2107 (II) (D) ("Office personnel are reminded that they must treat as true a statement of fact made by an applicant in relation to an asserted utility, unless countervailing evidence can be provided...."). The C. C. P. A. laid the foundation for the presumption of utility in a case nearly thirty years earlier.
    • (1971) F.2d , vol.439 , pp. 220
  • 292
    • 81855166132 scopus 로고
    • See In re Gazave, 977 C. C. P. A, reminding the PTO that "in the absence of any apparent reason why the compounds disclosed will not so function, or of any evidence showing that they actually do not, the statements in the application are generally deemed sufficient"
    • See In re Gazave, 379 F.2d 973, 977 (C. C. P. A. 1967) (reminding the PTO that "[i]n the absence of any apparent reason why the compounds disclosed will not so function, or of any evidence showing that they actually do not, the statements in the application are generally deemed sufficient").
    • (1967) F.2d , vol.379 , pp. 973
  • 293
    • 81855186103 scopus 로고    scopus 로고
    • "Only after the PTO provides evidence showing that a PHOSITA would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention's asserted utility."
    • See Brana, 51 F.3d at 1566 ("Only after the PTO provides evidence showing that [a PHOSITA] would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention's asserted utility.").
    • F.3d , vol.51 , pp. 1566
    • Brana1
  • 294
    • 0345848949 scopus 로고    scopus 로고
    • Analyze this: A law and economics agenda for the patent system
    • 2086, noting that the PTO's strict interpretation of § 101 "provoked sharp rebuke" from the Federal Circuit in Brana
    • See Rebecca S. Eisenberg, Analyze This: A Law and Economics Agenda for the Patent System, 53 VAND. L. REV. 2081, 2086 (2000) (noting that the PTO's strict interpretation of § 101 "provoked sharp rebuke" from the Federal Circuit in Brana).
    • (2000) Vand. L. Rev. , vol.53 , pp. 2081
    • Eisenberg, R.S.1
  • 295
    • 84922794711 scopus 로고    scopus 로고
    • Drugs typically undergo three phases of clinical testing to explore their safety and efficacy, §, 21, Briefly, Phase I involves limited human clinical trials to elicit basic safety data and to evaluate dosing and how a drug is metabolized; Phase II expands the testing to a larger group of subjects with the disease to test efficacy and safety; and Phase III involves an even larger group of subject and explores long-term evaluation of the drug's efficacy and safety. Id. § 312.21 a - c. After Phase III, the FDA determines whether the drug should be marketed
    • Drugs typically undergo three phases of clinical testing to explore their safety and efficacy. 21 C. F. R. § 312. 21 (2011). Briefly, Phase I involves limited human clinical trials to elicit basic safety data and to evaluate dosing and how a drug is metabolized; Phase II expands the testing to a larger group of subjects with the disease to test efficacy and safety; and Phase III involves an even larger group of subject and explores long-term evaluation of the drug's efficacy and safety. Id. § 312.21 (a) - (c). After Phase III, the FDA determines whether the drug should be marketed.
    • (2011) C. F. R. , vol.21 , pp. 312
  • 296
    • 81855193158 scopus 로고    scopus 로고
    • C. C. P. A. had dealt with this issue previously. See discussion supra note 125 and cases cited therein
    • Brana, 51 F.3d at 1567-68. The C. C. P. A. had dealt with this issue previously. See discussion supra note 125 and cases cited therein.
    • F.3d , vol.51 , pp. 1567-1568
    • Brana1
  • 297
    • 0041446429 scopus 로고    scopus 로고
    • Brana, 51 F.3d at 1568.
    • F.3d , vol.51 , pp. 1568
    • Brana1
  • 298
    • 81855205311 scopus 로고    scopus 로고
    • Utility and non-operability standards in biotechnology patent prosecution: CAFC precedent versus PTO practice
    • infra notes 285-286 and accompanying text discussing the goal of early public disclosure. One commentator argues that if the Brana court had upheld the stringent utility requirement urged by the PTO, it "ran the risk of seriously inhibiting the incentives to compete among biotechnology companies and, therefore, jeopardized the very existence of the industry.", 250, On the other hand, a utility standard set too low "could impede scientific progress by creating a transaction-cost-heavy thicket of patents on basic research." Rai, supra note 122, at 1131-32
    • See, e.g., infra notes 285-286 and accompanying text (discussing the goal of early public disclosure). One commentator argues that if the Brana court had upheld the stringent utility requirement urged by the PTO, it "[ran] the risk of seriously inhibiting the incentives to compete among biotechnology companies and, therefore, jeopardize[d] the very existence of the industry." Kevin C. Hooper, Utility and Non-Operability Standards in Biotechnology Patent Prosecution: CAFC Precedent Versus PTO Practice, 36 IDEA 203, 250 (1996). On the other hand, a utility standard set too low "could impede scientific progress by creating a transaction-cost-heavy thicket of patents on basic research." Rai, supra note 122, at 1131-32.
    • (1996) Idea , vol.36 , pp. 203
    • Hooper, K.C.1
  • 299
    • 84882752480 scopus 로고    scopus 로고
    • as Professors Burk and Lemley have explained, "By the time the developer of a new drug could show efficacy in humans, they would likely have lost patent protection under, §, b." BURK & LEMLEY, supra note 2, at 111. Briefly, § 102 b dedicates an invention to the public if the applicant does not file a patent application within one year of a public disclosure
    • For instance, as Professors Burk and Lemley have explained, "[B]y the time the developer of a new drug could show efficacy [in humans], they would likely have lost patent protection under [35 U. S. C. §] 102 (b)." BURK & LEMLEY, supra note 2, at 111. Briefly, § 102 (b) dedicates an invention to the public if the applicant does not file a patent application within one year of a public disclosure.
    • U. S. C. , vol.35 , pp. 102
  • 300
    • 70649111072 scopus 로고    scopus 로고
    • §, b, discussed supra note 114 and infra note 283
    • U. S. C. § 102 (b) (2006) (discussed supra note 114 and infra note 283).
    • (2006) U. S. C. , vol.35 , pp. 102
  • 301
    • 81855166155 scopus 로고
    • Gould v. Quigg, 1078 Fed. Cir
    • Gould v. Quigg, 822 F.2d 1074, 1078 (Fed. Cir. 1987)
    • (1987) F.2d , vol.822 , pp. 1074
  • 302
    • 85017661197 scopus 로고
    • quoting In re Chilowsky, 461 C. C. P. A, cf. MPEP, supra note 47, § 2107.03 "The fact that there is no known cure for a disease... cannot serve as the basis for a conclusion that such an invention lacks utility."
    • (quoting In re Chilowsky, 229 F.2d 457, 461 (C. C. P. A. 1956)); cf. MPEP, supra note 47, § 2107.03 ("The fact that there is no known cure for a disease... cannot serve as the basis for a conclusion that such an invention lacks utility.").
    • (1956) F.2d , vol.229 , pp. 457
  • 303
    • 84935465907 scopus 로고    scopus 로고
    • Commercial success and patent standards: Economic perspectives on innovation
    • Cf, 876 1988 arguing that the patent system should not employ a patentability test which compromises its primary goal to promote technological progress
    • Cf. Robert P. Merges, Commercial Success and Patent Standards: Economic Perspectives on Innovation, 76 CALIF. L. REV. 803, 876 (1988) (arguing that the patent system should not employ a patentability test which compromises its primary goal to promote technological progress);
    • Calif. L. Rev. , vol.76 , pp. 803
    • Merges, R.P.1
  • 304
    • 33845201268 scopus 로고
    • see also Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 150-51, noting that the patent system seeks to incentivize inventors who in turn provide the public with new and useful advances in technology
    • see also Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 150-51 (1989) (noting that the patent system seeks to incentivize inventors who in turn provide the public with new and useful advances in technology);
    • (1989) U. S. , vol.489 , pp. 141
  • 306
    • 79955105489 scopus 로고    scopus 로고
    • supra note 2, suggesting that a firm may obtain a patent to "stake their claim" in an area of technology to signal to investors and competitors that it operates at the cutting edge
    • See, e.g., Lemley, Rational Ignorance, supra note 2, at 1504-05 (suggesting that a firm may obtain a patent to "stake their claim" in an area of technology to signal to investors and competitors that it operates at the cutting edge);
    • Rational Ignorance , pp. 1504-1505
    • Lemley1
  • 307
    • 23044533299 scopus 로고    scopus 로고
    • Patent signals
    • 647-49, arguing that firms obtain patents to show their R&D acumen or technological capacity
    • Clarisa Long, Patent Signals, 69 U. CHI. L. REV. 625, 647-49 (2002) (arguing that firms obtain patents to show their R&D acumen or technological capacity).
    • (2002) U. Chi. L. Rev. , vol.69 , pp. 625
    • Long, C.1
  • 308
    • 33845190553 scopus 로고    scopus 로고
    • In re Cortright, 1357 Fed. Cir
    • In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999);
    • (1999) F.3d , vol.165 , pp. 1353
  • 309
    • 81855205336 scopus 로고
    • see also In re Ruskin, 396 C. C. P. A, "A process is operative if it produces its intended result."
    • see also In re Ruskin, 354 F.2d 395, 396 (C. C. P. A. 1966) ("A process is operative if it produces its intended result.").
    • (1966) F.2d , vol.354 , pp. 395
  • 310
    • 84935492637 scopus 로고
    • On the complex economics of patent scope
    • Claim scope is the "technological territory" that the inventor claims is his or hers to control, 844
    • Claim scope is the "technological territory" that the inventor claims is his or hers to control. Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV. 839, 844 (1990);
    • (1990) Colum. L. Rev. , vol.90 , pp. 839
    • Merges, R.P.1    Nelson, R.R.2
  • 311
    • 81855166148 scopus 로고    scopus 로고
    • see also Kara Tech. Inc. v. Stamps.com Inc., 1347-48 Fed. Cir, "It is the claims that define the metes and bounds of the patentee's invention... and define the scope of patent protection. "
    • see also Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1347-48 (Fed. Cir. 2009) ("It is the claims that define the metes and bounds of the patentee's invention... [and] define the scope of patent protection. "
    • (2009) F.3d , vol.582 , pp. 1341
  • 312
    • 81855193174 scopus 로고
    • citing Corning Glass Works v. Sumitomo Elec. U. S. A., Inc., 1257 Fed. Cir
    • (citing Corning Glass Works v. Sumitomo Elec. U. S. A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)).
    • (1989) F.2d , vol.868 , pp. 1251
  • 313
    • 77954989545 scopus 로고
    • Enablement serves as a constraint on claim scope. See O'Reilly v. Morse, 121, explaining that a patentee "can lawfully claim only what he has invented and described, and if he claims more his patent is void"
    • Enablement serves as a constraint on claim scope. See O'Reilly v. Morse, 56 U. S. (15 How.) 62, 121 (1854) (explaining that a patentee "can lawfully claim only what he has invented and described, and if he claims more his patent is void");
    • (1854) U. S. (15 How.) , vol.56 , pp. 62
  • 314
    • 85017659184 scopus 로고    scopus 로고
    • Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 1196 Fed. Cir, explaining that the purpose of the enablement requirement is to "ensure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims"; Merges & Nelson, supra, at 845-52. The scope of enablement is the sum of what is taught in the written description plus what is known by a PHOSITA without undue experimentation
    • Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999) (explaining that the purpose of the enablement requirement is to "ensure[] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims"); Merges & Nelson, supra, at 845-52. The scope of enablement is the sum of what is taught in the written description plus what is known by a PHOSITA without undue experimentation.
    • (1999) F.3d , vol.166 , pp. 1190
  • 315
    • 81855166144 scopus 로고    scopus 로고
    • Nat'l recovery techs
    • Nat'l Recovery Techs., 166 F.3d at 1196.
    • F.3d , vol.166 , pp. 1196
  • 316
    • 81855205316 scopus 로고    scopus 로고
    • Bayer AG v. Schein Pharms., Inc., 1314 Fed. Cir, "The enablement requirement ensures that that a specification shall disclose an invention in such a manner as will enable one skilled in the art to make and utilize it."
    • Bayer AG v. Schein Pharms., Inc., 301 F.3d 1306, 1314 (Fed. Cir. 2002) ("The enablement requirement ensures that that a specification shall disclose an invention in such a manner as will enable one skilled in the art to make and utilize it.").
    • (2002) F.3d , vol.301 , pp. 1306
  • 317
    • 77958506877 scopus 로고    scopus 로고
    • As the Federal Circuit recently explained: Enablement is closely related to the requirement for utility, which prevents mere ideas from being patented. As we noted previously, "patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.... Tossing out the mere germ of an idea does not constitute enabling disclosure." In re '318 Patent Infringement Litig., 1323-24 Fed. Cir
    • As the Federal Circuit recently explained: Enablement is closely related to the requirement for utility, [which] prevents mere ideas from being patented. As we noted [previously], "[p]atent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.... Tossing out the mere germ of an idea does not constitute enabling disclosure." In re '318 Patent Infringement Litig., 583 F.3d 1317, 1323-24 (Fed. Cir. 2009)
    • (2009) F.3d , vol.583 , pp. 1317
  • 318
    • 84904916521 scopus 로고    scopus 로고
    • quoting Genentech, Inc. v. Novo Nordisk A/S, 1366 Fed. Cir
    • (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997)).
    • (1997) F.3d , vol.108 , pp. 1361
  • 319
    • 84886484577 scopus 로고    scopus 로고
    • In a nonprecedential opinion dealing with cold fusion, the Federal Circuit seemingly did the opposite; meaning that the court collapsed the two issues into a question of operability. See In re Dash, 490-92 Fed. Cir
    • In a nonprecedential opinion dealing with cold fusion, the Federal Circuit seemingly did the opposite; meaning that the court collapsed the two issues into a question of operability. See In re Dash, 118 F. App'x 488, 490-92 (Fed. Cir. 2004).
    • (2004) F. App'x , vol.118 , pp. 488
  • 320
    • 84878559600 scopus 로고    scopus 로고
    • See infra notes 202-203 and accompanying text. For references to the objective nature of the enablement requirement, see Ariad Pharm., Inc. v. Eli Lilly & Co., 1366, Fed. Cir, en banc Rader, J., concurring in part and dissenting in part noting that enablement is an objective inquiry which focuses on the four corners of the applicant's written description
    • See infra notes 202-203 and accompanying text. For references to the objective nature of the enablement requirement, see Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1366 (Fed. Cir. 2010) (en banc) (Rader, J., concurring in part and dissenting in part) (noting that enablement is an objective inquiry which focuses on the four corners of the applicant's written description);
    • (2010) F.3d , vol.598 , pp. 1336
  • 321
    • 81855166152 scopus 로고    scopus 로고
    • explaining that "an enabling disclosure by definition turns upon the objective understanding of a PHOSITA"
    • Bayer, 301 F.3d at 1314 (explaining that "an enabling disclosure by definition turns upon the objective understanding of a [PHOSITA]");
    • F.3d , vol.301 , pp. 1314
    • Bayer1
  • 322
    • 81855193164 scopus 로고
    • Glaxo Inc. v. Novopharm Ltd., 1050 Fed. Cir, "The enablement requirement... looks to the objective knowledge of a PHOSITA."
    • Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1050 (Fed. Cir. 1995) ("[T]he enablement requirement... looks to the objective knowledge of [a PHOSITA].");
    • (1995) F.3d , vol.52 , pp. 1043
  • 323
    • 33845195604 scopus 로고
    • In re Marzocchi, 223 C. C. P. A, explaining that since § 112 ¶ 1 only requires "objective" enablement, precisely how an applicant complies with it is immaterial; 2 R. Carl Moy, Moy's Walker on Patents § 7:45 4th ed. 2008 noting that enablement "addresses whether the technological quality of the applicant's disclosure meets an objective, minimum standard"
    • In re Marzocchi, 439 F.2d 220, 223 (C. C. P. A. 1971) (explaining that since § 112 ¶ 1 only requires "objective" enablement, precisely how an applicant complies with it is immaterial); 2 R. Carl Moy, Moy's Walker on Patents § 7:45 (4th ed. 2008) (noting that enablement "address[es] whether the technological quality of the [applicant's disclosure] meets an objective, minimum standard").
    • (1971) F.2d , vol.439 , pp. 220
  • 324
    • 81855186069 scopus 로고
    • In re Glass, 1232 C. C. P. A
    • In re Glass, 492 F.2d 1228, 1232 (C. C. P. A. 1974);
    • (1974) F.2d , vol.492 , pp. 1228
  • 325
    • 81855193165 scopus 로고    scopus 로고
    • accord Enzo Biochem, Inc. v. Calgene, Inc., 1371-72 Fed. Cir, explaining that in both patent examination and litigation the enablement determination "is made retrospectively, i.e., by looking back to the filing date of the patent application and determining whether undue experimentation would have been required to make and use the claimed invention at that time."
    • accord Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371-72 (Fed. Cir. 1999) (explaining that in both patent examination and litigation the enablement determination "is made retrospectively, i.e., by looking back to the filing date of the patent application and determining whether undue experimentation would have been required to make and use the claimed invention at that time.");
    • (1999) F.3d , vol.188 , pp. 1362
  • 326
    • 81855166147 scopus 로고
    • In re Hogan, 607 C. C. P. A, reaffirming rule
    • In re Hogan, 559 F.2d 595, 607 (C. C. P. A. 1977) (reaffirming rule).
    • (1977) F.2d , vol.559 , pp. 595
  • 327
    • 81855197716 scopus 로고
    • In re Wright, 1561 Fed. Cir
    • In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993);
    • (1993) F.2d , vol.999 , pp. 1557
  • 328
    • 84886649540 scopus 로고    scopus 로고
    • see also Sitrick v. Dreamworks, LLC, 999 Fed. Cir, reaffirming the standard
    • see also Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008) (reaffirming the standard).
    • (2008) F.3d , vol.516 , pp. 993
  • 329
    • 84886499092 scopus 로고    scopus 로고
    • If the disclosure lacks sufficient detail, a PHOSITA can presumably rely on knowledge in the field to fill in the missing information. AK Steel Corp. v. Sollac & Ugine, 1244 Fed. Cir, While "undue experimentation" does not appear in the statute, "it is well established that enablement requires that the specification teach those in the art to make and use the invention without undue experimentation. "
    • If the disclosure lacks sufficient detail, a PHOSITA can presumably rely on knowledge in the field to fill in the missing information. AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). While "undue experimentation" does not appear in the statute, "it is well established that enablement requires that the specification teach those in the art to make and use the invention without undue experimentation. "
    • (2003) F.3d , vol.344 , pp. 1234
  • 330
    • 77952620131 scopus 로고
    • In re Wands, 737 Fed. Cir
    • In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
    • (1988) F.2d , vol.858 , pp. 731
  • 331
    • 81855166150 scopus 로고    scopus 로고
    • see supra note 71
    • Sitrick, 516 F.3d at 999. For the applicable standards of review for enablement, see supra note 71.
    • F.3d , vol.516 , pp. 999
    • Sitrick1
  • 332
    • 81855205321 scopus 로고    scopus 로고
    • 858 F.2d at 737.
    • F.2d , vol.858 , pp. 737
  • 333
    • 81855205314 scopus 로고
    • Id. The list of factors found its roots in the PTO. See Ex parte, 547 B. P. A. I, articulating eight factors for determining undue experimentation
    • Id. The list of factors found its roots in the PTO. See Ex parte Forman, 230 U. S. P. Q. 546, 547 (B. P. A. I. 1986) (articulating eight factors for determining undue experimentation).
    • (1986) U. S. P. Q. , vol.230 , pp. 546
    • Forman1
  • 334
    • 33845232188 scopus 로고
    • See Amgen, Inc. v. Chugai Pharm. Co., 1213 Fed. Cir, noting that the Wands factors are illustrative and not mandatory
    • See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991) (noting that the Wands factors are illustrative and not mandatory).
    • (1991) F.2d , vol.927 , pp. 1200
  • 335
    • 81855166153 scopus 로고    scopus 로고
    • supra note 134, § 7.03 collecting cases
    • See 3 CHISUM, supra note 134, § 7.03 (collecting cases).
    • Chisum , vol.3
  • 336
    • 81855166142 scopus 로고
    • factors are interrelated. For example, if the PHOSITA is really smart factor five, an applicant need not disclose what the PHOSITA already knows or can easily figure out factors one and two. Webster Loom Co. v. Higgins, 586, "A patentee may begin at the point where his invention begins, and describe what he has made that is new...."
    • The factors are interrelated. For example, if the PHOSITA is really smart (factor five), an applicant need not disclose what the PHOSITA already knows or can easily figure out (factors one and two). Webster Loom Co. v. Higgins, 105 U. S. 580, 586 (1881) ("[A patentee] may begin at the point where his invention begins, and describe what he has made that is new....");
    • (1881) U. S. , vol.105 , pp. 580
  • 337
    • 33845209295 scopus 로고
    • Spectra-Physics, Inc. v. Coherent, Inc., 1534 Fed. Cir, "A patent need not teach, and preferably omits, what is well known in the art."
    • Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir. 1987) ("A patent need not teach, and preferably omits, what is well known in the art.").
    • (1987) F.2d , vol.827 , pp. 1524
  • 338
    • 79959270914 scopus 로고    scopus 로고
    • technical substance of the disclosure lies at the heart of the enablement analysis. See supra notes 192, 193, 200, and accompanying text. The two factors are clustered together because working examples are a form of guidance, supra note 15, at
    • The technical substance of the disclosure lies at the heart of the enablement analysis. See supra notes 192, 193, 200, and accompanying text. The two factors are clustered together because working examples are a form of guidance. Seymore, Teaching Function, supra note 15, at 641-46.
    • Teaching Function , pp. 641-646
    • Seymore1
  • 339
    • 81855193160 scopus 로고    scopus 로고
    • One way to determine the requisite amount of teaching is whether the underlying technology is "unpredictable" or "predictable." The experimental sciences are regarded as "unpredictable" because PHOSITAs often cannot predict if a reaction protocol that works for one embodiment will work for others. See, e.g., Cedarapids, Inc. v. Nordberg, Inc., No. 95-1529, at, Fed. Cir. Aug. 11, 1997 explaining that in the chemical arts, "a slight variation... can yield an unpredictable result or may not work at all". On the other hand, inventions in applied technologies like mechanical engineering are often regarded as "predictable" arts because they are rooted in well-defined, predictable factors
    • *2 (Fed. Cir. Aug. 11, 1997) (explaining that in the chemical arts, "a slight variation... can yield an unpredictable result or may not work at all"). On the other hand, inventions in applied technologies like mechanical engineering are often regarded as "predictable" arts because they are rooted in well-defined, predictable factors.
    • (1997) WL 452801 , pp. 2
  • 340
    • 81855166143 scopus 로고
    • In re, 496 Fed. Cir
    • In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991).
    • (1991) F.2d , vol.947 , pp. 488
    • Vaeck1
  • 341
    • 69849111409 scopus 로고    scopus 로고
    • The enablement pendulum swings back
    • 282-84 y 2008, hereinafter Seymore, Enablement Pendulum; Seymore, Heightened Enablement, supra note 15, at 136-54
    • For a deeper exploration of the predictable-unpredictable dichotomy, see Sean B. Seymore, The Enablement Pendulum Swings Back, 6 NW. J. TECH. & INTELL. PROP. 278, 282-84 y (2008) [hereinafter Seymore, Enablement Pendulum]; Seymore, Heightened Enablement, supra note 15, at 136-54.
    • Nw. J. Tech. & Intell. Prop , vol.6 , pp. 278
    • Seymore, S.B.1
  • 342
    • 85017588548 scopus 로고    scopus 로고
    • This factor has become increasingly important over the past decade as the Federal Circuit has compelled patentees to enable the full scope of the claimed invention. See, e.g., ALZA Corp. v. Andrx Pharms., LLC, 941-42 Fed. Cir, holding that the district court properly determined the PHOSITA's level of skill and did not err in giving less weight to a witness who analyzed an issue using the wrong level of skill
    • This factor has become increasingly important over the past decade as the Federal Circuit has compelled patentees to enable the full scope of the claimed invention. See, e.g., ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 941-42 (Fed. Cir. 2010) (holding that the district court properly determined the PHOSITA's level of skill and did not err in giving less weight to a witness who analyzed an issue using the wrong level of skill);
    • (2010) F.3d , vol.603 , pp. 935
  • 343
    • 84886499092 scopus 로고    scopus 로고
    • AK Steel Corp. v. Sollac & Ugine, 1244 Fed. Cir, determining that where the claims covered a Type 1 or a Type 2 aluminum coating, yet the patent only described a Type 2 coating, the claims were nonenabled because a PHOSITA could not fill in the gaps without undue experimentation. For commentary on the importance of the PHOSITA in the enablement context
    • AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003) (determining that where the claims covered a Type 1 or a Type 2 aluminum coating, yet the patent only described a Type 2 coating, the claims were nonenabled because a PHOSITA could not fill in the gaps without undue experimentation). For commentary on the importance of the PHOSITA in the enablement context
    • (2003) F.3d , vol.344 , pp. 1234
  • 344
  • 346
    • 85017659184 scopus 로고    scopus 로고
    • Enablement places an outer limit on claim scope. Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 1196 Fed. Cir
    • Enablement places an outer limit on claim scope. Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999).
    • (1999) F.3d , vol.166 , pp. 1190
  • 347
    • 33845232188 scopus 로고
    • Amgen, Inc. v. Chugai Pharm. Co., 1213 Fed. Cir, Relatedly, a decisionmaker need not evaluate each factor before making an enablement determination. Id
    • Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991). Relatedly, a decisionmaker need not evaluate each factor before making an enablement determination. Id.
    • (1991) F.2d , vol.927 , pp. 1200
  • 348
    • 81855166145 scopus 로고    scopus 로고
    • Chiron Corp. v. Genentech, Inc., 1254 Fed. Cir, noting that nascent technologies "must be enabled with a 'specific and useful teaching.' "
    • See, e.g., Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1254 (Fed. Cir. 2004) (noting that nascent technologies "must be enabled with a 'specific and useful teaching.' "
    • (2004) F.3d , vol.363 , pp. 1247
  • 349
    • 84904916521 scopus 로고    scopus 로고
    • quoting Genentech, Inc. v. Novo Nordisk A/S, 1367-68 Fed. Cir
    • (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1367-68 (Fed. Cir. 1997));
    • (1997) F.3d , vol.108 , pp. 1361
  • 350
    • 81855166143 scopus 로고
    • In re, 496 Fed. Cir, noting that the requisite level of disclosure for an invention involving predictable mechanical or electrical elements is less than that required for the unpredictable arts
    • In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991) (noting that the requisite level of disclosure for an invention involving predictable mechanical or electrical elements is less than that required for the unpredictable arts).
    • (1991) F.2d , vol.947 , pp. 488
    • Vaeck1
  • 351
    • 69849096023 scopus 로고    scopus 로고
    • Possession in patent law
    • Recall that enablement is always assessed retrospectively. See supra note 199. Overestimating the PHOSITA's level of skill typically happens for two reasons. First, the PHOSITA's knowledge and abilities can evolve over time, most notably between the time of filing and the time of the enablement analysis. As Professor Holbrook has explained, "Enablement, while conceptually simple, is legally and factually complex because whether a disclosure is enabling can shift over time; as the knowledge of the PHOSITA shifts, an identical disclosure may shift from not being enabled to being enabled.", 130, internal citation omitted hereinafter Holbrook, Possession
    • Recall that enablement is always assessed retrospectively. See supra note 199. Overestimating the PHOSITA's level of skill typically happens for two reasons. First, the PHOSITA's knowledge and abilities can evolve over time, most notably between the time of filing and the time of the enablement analysis. As Professor Holbrook has explained, "Enablement, while conceptually simple, is legally and factually complex [because] whether a disclosure is enabling can shift over time; as the knowledge of the PHOSITA shifts, an identical disclosure may shift from not being enabled to being enabled." Timothy R. Holbrook, Possession in Patent Law, 59 SMU L. REV. 123, 130 (2006) (internal citation omitted) [hereinafter Holbrook, Possession];
    • (2006) Smu L. Rev. , vol.59 , pp. 123
    • Holbrook, T.R.1
  • 352
    • 78851470622 scopus 로고    scopus 로고
    • Equivalency and patent law's possession paradox
    • 41-43, making a similar argument. Second, there is the problem of hindsight bias. It "will normally lead fact-finders to overestimate the level of skill in the art, since subsequent advances will suggest that the invention could not have been that difficult to do."
    • Timothy R. Holbrook, Equivalency and Patent Law's Possession Paradox, 23 HARV. J. L. & TECH. 1, 41-43 (2009) (making a similar argument). Second, there is the problem of hindsight bias. It "will normally lead fact-finders to overestimate the level of skill in the art, since subsequent advances will suggest that the invention could not have been that difficult to do."
    • (2009) Harv. J. L. & Tech. , vol.23 , pp. 1
    • Holbrook, T.R.1
  • 353
    • 4444221062 scopus 로고    scopus 로고
    • Is patent law technology-specific?
    • 1199
    • Dan L. Burk & Mark A. Lemley, Is Patent Law Technology-Specific?, 17 BERKELEY TECH. L. J. 1155, 1199 (2002);
    • (2002) Berkeley Tech. L. J. , vol.17 , pp. 1155
    • Burk, D.L.1    Lemley, M.A.2
  • 354
    • 70349160587 scopus 로고    scopus 로고
    • Patently non-obvious: Empirical demonstration that the hindsight bias renders patent decisions irrational
    • cf, 1402, "Critical for patent law, once individuals have hindsight information, they consistently exaggerate what could have been anticipated in foresight and not only tend to view what has occurred as having been inevitable, but also as having appeared relatively inevitable beforehand."
    • cf. Gregory N. Mandel, Patently Non-Obvious: Empirical Demonstration That the Hindsight Bias Renders Patent Decisions Irrational, 67 OHIO ST. L. J. 1391, 1402 (2006) ("Critical for patent law, once individuals have hindsight information, they consistently exaggerate what could have been anticipated in foresight and not only tend to view what has occurred as having been inevitable, but also as having appeared relatively inevitable beforehand.");
    • (2006) Ohio St. L. J. , vol.67 , pp. 1391
    • Mandel, G.N.1
  • 355
    • 0036868532 scopus 로고    scopus 로고
    • Reconsidering estoppel: Patent administration and the failure of festo
    • 205, "In considering enablement, which is measured through the lens of the knowledge of the relevant field as of the filing date of the patent application, as the filing date becomes distant, the potential for cognitive biases, such as a hindsight bias, increases."
    • R. Polk Wagner, Reconsidering Estoppel: Patent Administration and the Failure of Festo, 151 U. PA. L. REV. 159, 205 (2002) ("[In considering] enablement, which is measured through the lens of the knowledge of the relevant field as of the filing date of the patent application[,] [a]s the filing date becomes distant, the potential for cognitive biases, such as a hindsight bias, increases.").
    • (2002) U. Pa. L. Rev. , vol.151 , pp. 159
    • Wagner, R.P.1
  • 356
    • 81855193162 scopus 로고    scopus 로고
    • Cf, at, making a similar observation for inventions emerging from unpredictable technologies
    • Cf. Chiron, 363 F.3d at 1254 (making a similar observation for inventions emerging from unpredictable technologies).
    • F.3d , vol.363 , pp. 1254
    • Chiron1
  • 358
    • 78649379476 scopus 로고    scopus 로고
    • Mazzari v. Rogan, 1005 Fed. Cir
    • Mazzari v. Rogan, 323 F.3d 1000, 1005 (Fed. Cir. 2003)
    • (2003) F.3d , vol.323 , pp. 1000
  • 359
    • 84855447464 scopus 로고    scopus 로고
    • citing Cooper v. Goldfarb, 1327 Fed. Cir, Of course, working examples vary in technical quality and helpfulness to the PHOSITA. Relevant variables include how the research was performed and in particular, whether it was done according to the scientific method, the amount of information disclosed, lucidity, logical reasoning, and other factors
    • (citing Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998)). Of course, working examples vary in technical quality and helpfulness to the PHOSITA. Relevant variables include how the research was performed (and in particular, whether it was done according to the scientific method), the amount of information disclosed, lucidity, logical reasoning, and other factors.
    • (1998) F.3d , vol.154 , pp. 1321
  • 360
    • 0003838668 scopus 로고    scopus 로고
    • explaining how to disclose experimental results. The broader point is that the presence of working examples does not necessarily guarantee enablement. Importantly for present purposes, they must show a nexus between the claimed result and the supporting evidence
    • See HEATHER SILYN-ROBERTS, WRITING FOR SCIENCE AND ENGINEERING 39-44 (2000) (explaining how to disclose experimental results). The broader point is that the presence of working examples does not necessarily guarantee enablement. Importantly for present purposes, they must show a nexus between the claimed result and the supporting evidence.
    • (2000) Writing for Science and Engineering , pp. 39-44
    • Silyn-Roberts, H.1
  • 361
    • 81855193159 scopus 로고
    • In re, 581 C. C. P. A, "The mere fact that a certain thing may result from a given set of circumstances is not sufficient to satisfy enablement."
    • In re Oelrich, 666 F.2d 578, 581 (C. C. P. A. 1981) ("The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to satisfy enablement].").
    • (1981) F.2d , vol.666 , pp. 578
    • Oelrich1
  • 362
    • 33845190553 scopus 로고    scopus 로고
    • facts in the baldness case In re, 1353 Fed. Cir, provide a good example. One claim at issue recited a method of treating the scalp with an ointment in which the active ingredient reached the base of the hair follicle. Id. at 1355. The court affirmed the PTO's rejection of this claim because the written description failed to provide sufficient evidence, through actual observations or otherwise, which would allow a PHOSITA to conclude that the ingredient actually reached the base of the hair follicle. Id. at 1360 explaining that the statements "it is believed" or "applicant surmises that" did not constitute actual observations emphasis in original
    • The facts in the baldness case In re Cortright, 165 F.3d 1353, 1353 (Fed. Cir. 1999), provide a good example. One claim at issue recited a method of treating the scalp with an ointment in which the active ingredient reached the base of the hair follicle. Id. at 1355. The court affirmed the PTO's rejection of this claim because the written description failed to provide sufficient evidence, through actual observations or otherwise, which would allow a PHOSITA to conclude that the ingredient actually reached the base of the hair follicle. Id. at 1360 (explaining that the statements "[i]t is believed" or "applicant surmises that" did not constitute actual observations) (emphasis in original).
    • (1999) F.3d , vol.165 , pp. 1353
    • Cortright1
  • 363
    • 77950382253 scopus 로고
    • On practical scientific instruction
    • 228, asserting that one who teaches a technical subject must teach with examples that should be full of practical applications and familiar illustrations
    • See, e.g., George Gore, On Practical Scientific Instruction, 7 Q. J. SCI. 215, 228 (1870) (asserting that one who teaches a technical subject must teach with examples that should be full of practical applications and familiar illustrations);
    • (1870) Q. J. Sci. , vol.7 , pp. 215
    • Gore, G.1
  • 364
    • 79959270914 scopus 로고    scopus 로고
    • supra note 15, at, making a similar argument in the patent law context
    • Seymore, Teaching Function, supra note 15, at 641-54 (making a similar argument in the patent law context).
    • Teaching Function , pp. 641-654
    • Seymore1
  • 365
    • 0004013149 scopus 로고    scopus 로고
    • 6th ed, noting that disclosing the experimental methods is important because the scientific community must adjudge the results reproducible before attaching scientific merit to the work; Shamoo & Resnik, supra note 33, at 51 "The ability of other investigators to replicate the experiments by following the method in the published report is crucial to the advancement of science."
    • See, e.g., BERT A. DAY & BARBARA GASTEL, HOW TO WRITE AND PUBLISH A SCIENTIFIC PAPER 61 (6th ed. 2006) (noting that disclosing the experimental methods is important because the scientific community must adjudge the results reproducible before attaching scientific merit to the work); Shamoo & Resnik, supra note 33, at 51 ("The ability of other investigators to replicate the experiments by following the method in the published report is crucial to the advancement of science.").
    • (2006) How to Write and Publish a Scientific Paper , pp. 61
    • Day, B.A.1    Gastel, B.2
  • 366
    • 77950446744 scopus 로고    scopus 로고
    • The use of examples in patent applications
    • 10, But, as with other forms of enablement, the breadth of the teaching provided in a working example must be commensurate with the claim scope sought. See cases cited supra note 192. A teaching which lacks specificity or provides inadequate guidance will result in a narrow ed claim scope Wands factor eight. Burk & Lemley, supra note 2, at 115
    • Bratislav Stankovic, The Use of Examples in Patent Applications, 18 INTELL. PROP. & TECH. L. J. 9, 10 (2006). But, as with other forms of enablement, the breadth of the teaching provided in a working example must be commensurate with the claim scope sought. See cases cited supra note 192. A teaching which lacks specificity or provides inadequate guidance will result in a narrow (ed) claim scope (Wands factor eight). Burk & Lemley, supra note 2, at 115.
    • (2006) Intell. Prop. & Tech. L. J. , vol.18 , pp. 9
    • Stankovic, B.1
  • 367
    • 74149083413 scopus 로고    scopus 로고
    • noting that a goal for disclosing experimental procedures is to establish credibility in the work
    • See MARGARET CARGILL & PATRICK O'CONNOR, WRITING SCIENTIFIC RESEARCH ARTICLES 35 (2009) (noting that a goal for disclosing experimental procedures is to establish credibility in the work);
    • (2009) Writing Scientific Research Articles , pp. 35
    • Cargill, M.1    O'Connor, P.2
  • 368
    • 85014174646 scopus 로고    scopus 로고
    • explaining that the experimental section of a scientific paper "is the very foundation of the scientific merit and feasibility of the work"; DAY & GASTEL, supra note 221, at 61 arguing that working examples are essential for showing that the potential for reproducing the result exists; otherwise the work is not good science
    • MARTHA DAVIS, SCIENTIFIC PAPERS AND PRESENTATIONS 61 (2005) (explaining that the experimental section of a scientific paper "is the very foundation of the scientific merit and feasibility of the work"); DAY & GASTEL, supra note 221, at 61 (arguing that working examples are essential for showing that the potential for reproducing the result exists; otherwise the work is not good science).
    • (2005) Scientific Papers and Presentations , pp. 61
    • Davis, M.1
  • 369
    • 78851469521 scopus 로고    scopus 로고
    • Patenting around nuisance prior art
    • 224, explaining that patent applications that lack working examples can raise suspicion because "it can be difficult for one outside the art to know whether a specific item is enabling or not"
    • See David S. Wainwright, Patenting Around Nuisance Prior Art, 81 J. PAT. & TRADEMARK OFF. SOC'Y 221, 224 (1999) (explaining that patent applications that lack working examples can raise suspicion because "[i]t can be difficult for one outside the art to know whether a specific item is enabling or not");
    • (1999) J. Pat. & Trademark Off. Soc'y , vol.81 , pp. 221
    • Wainwright, D.S.1
  • 370
    • 77950431127 scopus 로고
    • cf. In re, 878 C. C. P. A, stating that the strong and comprehensive language of § 112 evinces Congress's intent for applicants to "make a full and complete disclosure of their invention, leaving nothing to speculation or doubt"
    • cf. In re Lorenz, 305 F.2d 875, 878 (C. C. P. A. 1962) (stating that the strong and comprehensive language of § 112 evinces Congress's intent for applicants to "make a full and complete disclosure of their invention, leaving nothing to speculation or doubt").
    • (1962) F.2d , vol.305 , pp. 875
    • Lorenz1
  • 371
    • 81855205344 scopus 로고
    • 918 C. C. P. A
    • 419 F.2d 918, 918 (C. C. P. A. 1970).
    • (1970) F.2d , vol.419 , pp. 918
  • 372
    • 0003621450 scopus 로고
    • Isotopes are atoms of a particular element with which differ in the number of neutrons. Importantly, isotopes of a given element differ in chemical properties. See generally, 3d ed
    • Isotopes are atoms of a particular element with which differ in the number of neutrons. Importantly, isotopes of a given element differ in chemical properties. See generally LINUS PAULING, GENERAL CHEMISTRY (3d ed. 1988).
    • (1988) General Chemistry
    • Pauling, L.1
  • 373
    • 81855166137 scopus 로고    scopus 로고
    • at
    • Eltgroth, 419 F.2d at 921.
    • F.2d , vol.419 , pp. 921
    • Eltgroth1
  • 374
    • 33845218638 scopus 로고
    • Id. at 919-20. The PTO found a statement in Supreme Court opinion particularly appropriate: "A patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. A patent system must be related to the world of commerce rather than to the realm of philosophy." Brenner v. Manson, 536
    • Id. at 919-20. The PTO found a statement in Supreme Court opinion particularly appropriate: "[A] patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. [A] patent system must be related to the world of commerce rather than to the realm of philosophy." Brenner v. Manson, 383 U. S. 519, 536 (1966)
    • (1966) U. S. , vol.383 , pp. 519
  • 375
    • 79955131291 scopus 로고
    • quoting In re, 970 C. C. P. A, Rich, J.
    • (quoting In re Ruschig, 343 F.2d 965, 970 (C. C. P. A. 1965) (Rich, J.)).
    • (1965) F.2d , vol.343 , pp. 965
    • Ruschig1
  • 376
    • 81855166137 scopus 로고    scopus 로고
    • at
    • Eltgroth, 419 F.2d at 921.
    • F.2d , vol.419 , pp. 921
    • Eltgroth1
  • 377
    • 81855186051 scopus 로고
    • In other words, working examples can show that the state of the art has advanced far enough to allow a PHOSITA to achieve the intended result. See discussion supra notes 37-39 and accompanying text. For instance, working examples helped convince the PTO and the courts that it is possible to successfully treat cancer. Compare In re, 249-53 C. C. P. A, explaining that applicants' invention relating to an alleged effective treatment for cancer, which lacked specific tests, experiments, or clinical data, asserted incredible utility in the light of the knowledge of the art
    • In other words, working examples can show that the state of the art has advanced far enough to allow a PHOSITA to achieve the intended result. See discussion supra notes 37-39 and accompanying text. For instance, working examples helped convince the PTO and the courts that it is possible to successfully treat cancer. Compare In re Citron, 325 F.2d 248, 249-53 (C. C. P. A. 1963) (explaining that applicants' invention relating to an alleged effective treatment for cancer, which lacked specific tests, experiments, or clinical data, asserted incredible utility in the light of the knowledge of the art)
    • (1963) F.2d , vol.325 , pp. 248
    • Citron1
  • 378
    • 81855205312 scopus 로고
    • with In re, 1326-28 C. C. P. A, concluding that clinical tests, combined with the close structural similarity of the claimed compounds with chemotherapeutics known in the art, would allow a PHOSITA to accept the claimed utility
    • with In re Jolles, 628 F.2d 1322, 1326-28 (C. C. P. A. 1980) (concluding that clinical tests, combined with the close structural similarity of the claimed compounds with chemotherapeutics known in the art, would allow a PHOSITA to accept the claimed utility)
    • (1980) F.2d , vol.628 , pp. 1322
    • Jolles1
  • 379
    • 0041446429 scopus 로고    scopus 로고
    • In re, 1566 Fed. Cir, noting that treating cancer with chemical compounds "does not suggest an inherently unbelievable undertaking or involve implausible scientific principles" because there are "numerous successful chemotherapeutic agents"
    • and In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995) (noting that treating cancer with chemical compounds "does not suggest an inherently unbelievable undertaking or involve implausible scientific principles" because there are "numerous successful chemotherapeutic agents").
    • (1995) F.3d , vol.51 , pp. 1560
    • Brana1
  • 380
    • 79959270914 scopus 로고    scopus 로고
    • Cf, supra note 15, at, arguing that it is easiest for an examiner to gauge enablement when actual experimental results are disclosed
    • Cf. Seymore, Teaching Function, supra note 15, at 653 (arguing that it is easiest for an examiner to gauge enablement when actual experimental results are disclosed).
    • Teaching Function , pp. 653
    • Seymore1
  • 382
  • 383
    • 73949124384 scopus 로고    scopus 로고
    • The folly of early filing in patent law
    • Professor Cotropia also advocates an actual reduction to practice requirement in patent law. See, 120-22, proposing a framework wherein the PTO would defer examination until the applicant submits evidence of actual implementation of the invention
    • Professor Cotropia also advocates an actual reduction to practice requirement in patent law. See Christopher A. Cotropia, The Folly of Early Filing in Patent Law, 61 HASTINGS L. J. 65, 120-22 (2009) (proposing a framework wherein the PTO would defer examination until the applicant submits evidence of actual implementation of the invention).
    • (2009) Hastings L. J. , vol.61 , pp. 65
    • Cotropia, C.A.1
  • 384
    • 81855186058 scopus 로고    scopus 로고
    • supra note 15, at, internal quotation marks and brackets omitted
    • Seymore, Heightened Enablement, supra note 15, at 156 n. 15 (internal quotation marks and brackets omitted);
    • Heightened Enablement , Issue.15 , pp. 156
    • Seymore1
  • 385
    • 73049101916 scopus 로고    scopus 로고
    • cf. Ash v. Tyson Foods, Inc, 456-57
    • cf. Ash v. Tyson Foods, Inc. 546 U. S. 454, 456-57 (2006)
    • (2006) U. S. , vol.546 , pp. 454
  • 386
    • 79956137104 scopus 로고    scopus 로고
    • per curiam quoting Cooper v. Southern Co., 732 11th Cir, evaluating the "jump off the page" standard in the context of an employment discrimination suit. Invoking a working example requirement probably falls within the PTO's statutory authority
    • (per curiam) (quoting Cooper v. Southern Co., 390 F.3d 695, 732 (11th Cir. 2004)) (evaluating the "jump off the page" standard in the context of an employment discrimination suit). Invoking a working example requirement probably falls within the PTO's statutory authority.
    • (2004) F.3d , vol.390 , pp. 695
  • 387
    • 81855193204 scopus 로고    scopus 로고
    • See supra note 82 discussing the working model requirement of, §
    • See supra note 82 (discussing the working model requirement of 35 U. S. C. § 114);
    • U. S. C. , vol.35 , pp. 114
  • 388
    • 81855186054 scopus 로고    scopus 로고
    • supra note 15, at, same
    • Seymore, Teaching Function, supra note 15, at 642 n. 103 (same).
    • Teaching Function , Issue.103 , pp. 642
    • Seymore1
  • 389
    • 81855201152 scopus 로고
    • Recent progress of alchemy in America
    • On May 7, 1897, Edward C. Brice filed a patent application claiming a process for making gold from other elements. See, Aug. 6, at, describing the claimed method
    • On May 7, 1897, Edward C. Brice filed a patent application claiming a process for making gold from other elements. See H. Carrington Bolton, Recent Progress of Alchemy in America, CHEMICAL NEWS, Aug. 6, 1897, at 61-63 (describing the claimed method);
    • (1897) Chemical News , pp. 61-63
    • Bolton, H.C.1
  • 390
    • 81855197723 scopus 로고
    • A nineteenth century gold factory
    • Feb. 26, at, presenting additional experimental details
    • Adolf G. Vogeler, A Nineteenth Century Gold Factory, PHARM. J., Feb. 26, 1898, at 189-91 (presenting additional experimental details).
    • (1898) Pharm. J. , pp. 189-191
    • Vogeler, A.G.1
  • 391
    • 0004211783 scopus 로고    scopus 로고
    • Antimony is a chemical element typically obtained from complex mineral ores containing lead, tin, zinc, silver, and gold. See
    • Antimony is a chemical element typically obtained from complex mineral ores containing lead, tin, zinc, silver, and gold. See NICHOLAS C. NORMAN, CHEMISTRY OF ARSENIC, ANTIMONY, AND BISMUTH 43 (1998).
    • (1998) Chemistry of Arsenic, Antimony, and Bismuth , pp. 43
    • Norman, N.C.1
  • 392
    • 81855222488 scopus 로고
    • Chicago alchemist thinks that by following in nature's pathway to make gold of dross
    • In the actual case, the inventor shared his theory of transmutation with a reporter: Brice depends almost entirely upon a decomposition of the atomic properties of the antimony and a radical reconstruction as a new body using intense heat and the free admission of oxygen. This is nature's process, and is exemplified in the volcanic action by which most of the gold existing in a natural state was formed. Some researchers believe that at some long-ago period tremendous convulsions of subterraneous gas threw up from the earth's interior some metallic substance, which underwent a transmutation into gold. Brice chose antimony as a starting material mainly because it is found in considerable quantity in gold ores, Dec. 12, at, Brice built a gold-making factory in Chicago which processed over 10, 000 pounds of crude ore per day. See Vogeler, supra note 235, at 189-90 describing the daily operation of the National Metallurgical Company
    • In the actual case, the inventor shared his theory of transmutation with a reporter: [Brice] depends almost entirely upon a decomposition of the atomic properties of the antimony and a radical reconstruction as a new body [using] intense heat and the free admission of oxygen. This is nature's process, and is exemplified in the volcanic action by which most of the gold existing in a natural state was formed. [Some researchers believe] that at some long-ago period tremendous convulsions of subterraneous gas threw up from the earth's interior some metallic substance, which underwent a transmutation into gold. [Brice chose antimony as a starting material] mainly because it is found in considerable quantity [in] gold ores. Chicago Alchemist Thinks that by Following in Nature's Pathway to Make Gold of Dross, CHI. TRIB., Dec. 12, 1897, at 33. Brice built a gold-making factory in Chicago which processed over 10, 000 pounds of crude ore per day. See Vogeler, supra note 235, at 189-90 (describing the daily operation of the National Metallurgical Company).
    • (1897) Chi. Trib. , pp. 33
  • 393
    • 33845195604 scopus 로고
    • In re, 223 C. C. P. A
    • In re Marzocchi, 439 F.2d 220, 223 (C. C. P. A. 1971).
    • (1971) F.2d , vol.439 , pp. 220
    • Marzocchi1
  • 394
    • 84938394461 scopus 로고    scopus 로고
    • An examiner must prove unpatentability by a preponderance of the evidence. See In re, 1445 Fed. Cir, articulating the burden-shifting framework used in patent examination
    • An examiner must prove unpatentability by a preponderance of the evidence. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (articulating the burden-shifting framework used in patent examination).
    • (1992) F.2d , vol.977 , pp. 1443
    • Oetiker1
  • 395
    • 81855197716 scopus 로고
    • In re, 1561-62 Fed. Cir
    • In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993).
    • (1993) F.2d , vol.999 , pp. 1557
    • Wright1
  • 396
    • 85017591945 scopus 로고    scopus 로고
    • at
    • Marzocchi, 439 F.2d at 224;
    • F.2d , vol.439 , pp. 224
    • Marzocchi1
  • 397
    • 81855222492 scopus 로고
    • see also In re, 1405 C. C. P. A, holding that the PTO must provide a factual basis for a lack of enablement rejection, rather than conclusory statements regarding the PHOSITA's level of skill
    • see also In re Brebner, 455 F.2d 1402, 1405 (C. C. P. A. 1972) (holding that the PTO must provide a factual basis for a lack of enablement rejection, rather than conclusory statements regarding the PHOSITA's level of skill).
    • (1972) F.2d , vol.455 , pp. 1402
    • Brebner1
  • 398
    • 84886499092 scopus 로고    scopus 로고
    • See MPEP, supra note 47, § 2164.04 instructing an examiner who suspects that one or more claims lack enablement to first construe them to determine their scope; see also AK Steel Corp. v. Sollac & Ugine, 1241 Fed. Cir, explaining that because a patent's written description must enable the full scope of the claimed invention, the enablement inquiry typically begins with a construction of the claims
    • See MPEP, supra note 47, § 2164.04 (instructing an examiner who suspects that one or more claims lack enablement to first construe them to determine their scope); see also AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1241 (Fed. Cir. 2003) (explaining that because a patent's written description must enable the full scope of the claimed invention, the enablement inquiry typically begins with a construction of the claims).
    • (2003) F.3d , vol.344 , pp. 1234
  • 399
    • 81855223630 scopus 로고    scopus 로고
    • explaining that the methods section should contain information including the commercial supplier from which materials were purchased so that a competent researcher can read the recipe and repeat exactly what was done. Laboratory chemicals vary widely in degrees of purity
    • See MAXINE LINTERN, LABORATORY SKILLS FOR SCIENCE AND MEDICINE 64-65 (2007) (explaining that the methods section should contain information including the commercial supplier from which materials were purchased so that a competent researcher can read the recipe and repeat exactly what was done). Laboratory chemicals vary widely in degrees of purity.
    • (2007) Laboratory Skills for Science and Medicine , pp. 64-65
    • Lintern, M.1
  • 402
    • 77952620131 scopus 로고
    • See MPEP, supra note 47, § 2164.01 a citing In re, 740 Fed. Cir, reminding examiners that "any conclusion of nonenablement must be based on the evidence as a whole"
    • See MPEP, supra note 47, § 2164.01 (a) (citing In re Wands, 858 F.2d 731, 740 (Fed. Cir. 1988)) (reminding examiners that "any conclusion of nonenablement must be based on the evidence as a whole").
    • (1988) F.2d , vol.858 , pp. 731
    • Wands1
  • 403
    • 77951130497 scopus 로고    scopus 로고
    • During the course of patent examination, the examiner may request "technical information known to the applicant concerning... the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner's stated interpretation of such item.", § 1.105 a 1 viii
    • During the course of patent examination, the examiner may request "[t]echnical information known to [the] applicant concerning... the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner's stated interpretation of such item." 37 C. F. R. § 1.105 (a) (1) (viii) (2009).
    • (2009) C. F. R. , vol.37
  • 404
    • 81855222505 scopus 로고    scopus 로고
    • Technical grade, the lowest chemical grade, "is used industrially, but is generally unsuitable for laboratory use because of the presence of many impurities.", supra note 248, at
    • Technical grade, the lowest chemical grade, "is used industrially, but is generally unsuitable for laboratory [use] because of the presence of many impurities." CHEMICAL TECHNICIANS' READY REFERENCE HANDBOOK, supra note 248, at 571.
    • Chemical Technicians' Ready Reference Handbook , pp. 571
  • 405
  • 407
    • 84897667684 scopus 로고    scopus 로고
    • contrasting "genuine" alchemists of ancient times with those who entered the quest in modern times
    • see also HERBERT S. REDGROVE, BYGONE BELIEFS 102 (1999) (contrasting "genuine" alchemists of ancient times with those who entered the quest in modern times).
    • (1999) Bygone Beliefs , pp. 102
    • Redgrove, H.S.1
  • 408
    • 81855166128 scopus 로고    scopus 로고
    • Fed. Cir, per curiam nonprecedential
    • 273 F. App'x 945 (Fed. Cir. 2008) (per curiam) (nonprecedential).
    • (2008) F. App'x , vol.273 , pp. 945
  • 409
    • 81855197716 scopus 로고
    • See In re, 1561-62 Fed. Cir, holding that the applicant failed to enable a claim covering "any and all live, non-pathogenic vaccines, and processes for making these vaccines"
    • See In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (holding that the applicant failed to enable a claim covering "any and all live, non-pathogenic vaccines, and processes for making these vaccines").
    • (1993) F.2d , vol.999 , pp. 1557
    • Wright1
  • 410
    • 81855201146 scopus 로고    scopus 로고
    • Second Law of Thermodynamics states that it is impossible to convert heat completely to work without some energy loss, 3d ed, A machine that could do so would be one hundred percent efficient. Such machines are referred to as perpetual motion machines of the second kind. Id. Curiously, the term "perpetual motion" does not appear either in the PTO documents or in the Federal Circuit opinion
    • The Second Law of Thermodynamics states that it is impossible to convert heat completely to work without some energy loss. R. K. RAJPUT, ENGINEERING THERMODYNAMICS 232 (3d ed. 2010). A machine that could do so would be one hundred percent efficient. Such machines are referred to as perpetual motion machines of the second kind. Id. Curiously, the term "perpetual motion" does not appear either in the PTO documents or in the Federal Circuit opinion.
    • (2010) Engineering Thermodynamics , pp. 232
    • Rajput, R.K.1
  • 411
    • 81855223640 scopus 로고    scopus 로고
    • See Speas, "Thus, the movement of the ferrofluid imparts mechanical energy upon the wheel. Speas claims that because this ferrofluid is moved and adds energy to the paddle wheel 'without input into the system other than ambient thermal energy, ' it is proof that the second law of thermodynamics is not inviolate-an object of the invention. "
    • See Speas, 273 F. App'x at 946 ("Thus, the movement of the ferrofluid imparts mechanical energy upon the wheel. Speas claims that because this ferrofluid is moved and adds energy to the paddle wheel 'without input into the system other than ambient thermal energy, ' it is proof that the second law of thermodynamics is not inviolate-an object of the invention. ").
    • F. App'x , vol.273 , pp. 946
  • 412
    • 81855166128 scopus 로고    scopus 로고
    • see also Brief for Appellee Director of the U. S. Patent and Trademark Office at 7-8, In re, Fed. Cir, No. 2008-1076
    • see also Brief for Appellee Director of the U. S. Patent and Trademark Office at 7-8, In re Speas, 273 F. App'x 945 (Fed. Cir. 2008) (No. 2008-1076).
    • (2008) F. App'x , vol.273 , pp. 945
    • Speas1
  • 413
    • 81855186109 scopus 로고
    • Id. at 18. For support for this reasoning, see Raytheon Co. v. Roper Corp., 956 Fed. Cir, "When a claim requires a means for accomplishing an unattainable result, the claimed invention must be considered inoperative as claimed and the claim must be held invalid under either § 101 or § 112 of 35 U. S. C." emphasis added
    • Id. at 18. For support for this reasoning, see Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983) ("[W]hen a claim requires a means for accomplishing an unattainable result, the claimed invention must be considered inoperative as claimed and the claim must be held invalid under either § 101 or § 112 of 35 U. S. C." (emphasis added)).
    • (1983) F.2d , vol.724 , pp. 951
  • 414
    • 84855467623 scopus 로고    scopus 로고
    • at
    • Speas, 273 F. App'x at 946.
    • F. App'x , vol.273 , pp. 946
    • Speas1
  • 415
    • 81855223639 scopus 로고    scopus 로고
    • CAFC rejects patent on invention to overcome the second law of thermodynamics
    • In his commentary on Speas, Professor Crouch reached a similar conclusion: "Although this type of case is fun to read, it also provides an interesting lesson-that there are tools to reject inadequate patent applications on their merits without resorting to broad exclusions of particular subject matter.", May 1
    • In his commentary on Speas, Professor Crouch reached a similar conclusion: "Although this type of case is fun to read, it also provides an interesting lesson-that [there are] tools to reject inadequate patent applications on their merits without resorting to broad exclusions of particular subject matter." Dennis Crouch, CAFC Rejects Patent on Invention to Overcome the Second Law of Thermodynamics, PATENTLY-O, May 1, 2008, http://www.patentlyo.com/patent/2008/05/cafc-rejects-pa.html.
    • (2008) Patently-O
    • Crouch, D.1
  • 416
    • 81855197722 scopus 로고    scopus 로고
    • Cf, at, "Because the impossible cannot be enabled, a claim containing a limitation impossible to meet may be held invalid under § 112."
    • Cf. Raytheon, 724 F.2d at 956 ("[B]ecause the impossible cannot be enabled, a claim containing a limitation impossible to meet may be held invalid under § 112.").
    • F.2d , vol.724 , pp. 956
    • Raytheon1
  • 417
    • 0003910139 scopus 로고    scopus 로고
    • "Error is a normal part of science, and uncovering flaws in scientific observations or reasoning is the everyday work of scientists."
    • See ROBERT L. PARK, VOODOO SCIENCE 9 (2002) ("Error is a normal part of science, and uncovering flaws in scientific observations or reasoning is the everyday work of scientists.");
    • (2002) Voodoo Science , pp. 9
    • Park, R.L.1
  • 418
    • 4344669602 scopus 로고    scopus 로고
    • noting that an experimental result can be "so aberrant that error seems the most reasonable explanation"
    • JOHN WALLER, FABULOUS SCIENCE 40 (2004) (noting that an experimental result can be "so aberrant that error seems the most reasonable explanation").
    • (2004) Fabulous Science , pp. 40
    • Waller, J.1
  • 419
    • 33845593202 scopus 로고    scopus 로고
    • On courts herding cats: Contending with the "written description" requirement (and other unruly patent disclosure doctrines)
    • Other commentators have argued for a robust enablement requirement. See, e.g., 108, arguing that a vigorous enablement requirement could lead to the development of more coherent patentability guidelines
    • Other commentators have argued for a robust enablement requirement. See, e.g., Mark D. Janis, On Courts Herding Cats: Contending with the "Written Description" Requirement (and Other Unruly Patent Disclosure Doctrines), 2 WASH. U. J. L. & POL'Y 55, 108 (2000) (arguing that a vigorous enablement requirement could lead to the development of more coherent patentability guidelines).
    • (2000) Wash. U. J. L. & Pol'y , vol.2 , pp. 55
    • Janis, M.D.1
  • 420
    • 64949147427 scopus 로고    scopus 로고
    • Patent disclosure
    • Patent scholars differ in their views on the role of the disclosure. Compare Holbrook, Possession, supra note 216, at 126, 133-47 describing the "pervasive" role of disclosure in patent law and policy, including enriching the state of the art contemporaneously with the invention and showing evidence of possession of the invention, and, 547-54, cataloguing the beneficial uses for disclosure in patent law; including stimulating innovation, preventing duplication, gauging patentability, and signaling R&D strength
    • Patent scholars differ in their views on the role of the disclosure. Compare Holbrook, Possession, supra note 216, at 126, 133-47 (describing the "pervasive" role of disclosure in patent law and policy, including enriching the state of the art contemporaneously with the invention and showing evidence of possession of the invention), and Jeanne C. Fromer, Patent Disclosure, 94 IOWA L. REV. 539, 547-54 (2009) (cataloguing the beneficial uses
    • (2009) Iowa L. Rev. , vol.94 , pp. 539
    • Fromer, J.C.1
  • 421
    • 79955968759 scopus 로고    scopus 로고
    • The misunderstood function of the disclosure in patent law
    • with, 412, arguing that "disclosure as an objective of patent policy should be discarded in certain circumstances" because it "serves no more than an ancillary role within the larger purpose of the patent regime"
    • with Alan Devlin, The Misunderstood Function of the Disclosure in Patent Law, 23 HARV. J. L. & TECH. 401, 412 (2010) (arguing that "disclosure as an objective of patent policy should be discarded in certain circumstances" because it "serves no more than an ancillary role within the larger purpose of the patent regime").
    • (2010) Harv. J. L. & Tech. , vol.23 , pp. 401
    • Devlin, A.1
  • 422
    • 79959270914 scopus 로고    scopus 로고
    • See discussion supra note 208 noting that the PHOSITA needs less guidance in predictable fields. For a concrete example, see, supra note 15, at, contending that for a patent claiming a broom rake, a PHOSITA would not benefit from a working example because the technology is easily understood
    • See discussion supra note 208 (noting that the PHOSITA needs less guidance in predictable fields). For a concrete example, see Seymore, Teaching Function, supra note 15, at 644 (contending that for a patent claiming a broom rake, a PHOSITA would not benefit from a working example because the technology is easily understood).
    • Teaching Function , pp. 644
    • Seymore1
  • 423
    • 17444383468 scopus 로고    scopus 로고
    • Reconceiving patents in the age of venture capital
    • 144, "One of the reasons people are patenting at a very early stage in the process is precisely in order to attract or appease venture capital."
    • See, e.g., Mark A. Lemley, Reconceiving Patents in the Age of Venture Capital, 4 J. SMALL & EMERGING BUS. L. 137, 144 (2000) ("[O]ne of the reasons people are patenting at a very early stage in the process is precisely in order to attract or appease venture capital.").
    • (2000) J. Small & Emerging Bus. L. , vol.4 , pp. 137
    • Lemley, M.A.1
  • 424
    • 77952760538 scopus 로고    scopus 로고
    • For example, an applicant must file a patent application within one year of disclosing the invention in a printed publication, § 102 b, Likewise, if the invention is used in public, sold, or subject to an offer for sale in the United States, the applicant must file within one year of the event. Id. A fundamental purpose of § 102 b is to encourage prompt filing
    • For example, an applicant must file a patent application within one year of disclosing the invention in a printed publication. 35 U. S. C. § 102 (b) (2006). Likewise, if the invention is used in public, sold, or subject to an offer for sale in the United States, the applicant must file within one year of the event. Id. A fundamental purpose of § 102 (b) is to encourage prompt filing.
    • (2006) U. S. C. , vol.35
  • 425
    • 81855201157 scopus 로고    scopus 로고
    • Woodland Trust v. Flowertree Nursery, Inc., 1370 Fed. Cir, Similarly, § 102 g "penalizes the unexcused delay or failure of a first inventor to share the benefit of the knowledge of the invention with the public after the invention has been completed."
    • Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (Fed. Cir. 1998). Similarly, § 102 (g) "penaliz[es] the unexcused delay or failure of a first inventor to share the benefit of the knowledge of the invention with the public after the invention has been completed."
    • (1998) F.3d , vol.148 , pp. 1368
  • 426
    • 81855186053 scopus 로고
    • Checkpoint Sys., Inc. v. U. S. Int'l Trade Comm'n, 761 Fed. Cir, citation and internal quotation marks omitted
    • Checkpoint Sys., Inc. v. U. S. Int'l Trade Comm'n, 54 F.3d 756, 761 (Fed. Cir. 1995) (citation and internal quotation marks omitted).
    • (1995) F.3d , vol.54 , pp. 756
  • 427
    • 81855223636 scopus 로고    scopus 로고
    • one-year grace period available in the United States is not available in many foreign countries. In fact, most countries have an absolute novelty requirement such that any prefiling disclosure, including activity by the inventor, is patent-defeating. See, e.g., Convention on the Grant of European Patents, art. 54 2, Oct. 5, 1973, 272. Accordingly, if foreign filing is a possibility, the applicant must take steps to avoid inadvertent or premature disclosure
    • The one-year grace period available in the United States is not available in many foreign countries. In fact, most countries have an absolute novelty requirement such that any prefiling disclosure, including activity by the inventor, is patent-defeating. See, e.g., Convention on the Grant of European Patents, art. 54(2), Oct. 5, 1973, 1065 U. N. T. S. 255, 272. Accordingly, if foreign filing is a possibility, the applicant must take steps to avoid inadvertent or premature disclosure.
    • U. N. T. S. , vol.1065 , pp. 255
  • 429
    • 2942520956 scopus 로고    scopus 로고
    • Rethinking the prospect theory of patents
    • 445, arguing that early filing leads to reduced patent terms, thereby dedicating the invention to the public at an earlier time
    • See John F. Duffy, Rethinking the Prospect Theory of Patents, 71 U. CHI. L. REV. 439, 445 (2004) (arguing that early filing leads to reduced patent terms, thereby dedicating the invention to the public at an earlier time).
    • (2004) U. Chi. L. Rev. , vol.71 , pp. 439
    • Duffy, J.F.1
  • 430
    • 33845201268 scopus 로고
    • Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 151
    • Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 151 (1989);
    • (1989) U. S. , vol.489 , pp. 141
  • 431
    • 84938361949 scopus 로고
    • see also Aronson v. Quick Point Pencil Co., 262, noting that one goal of patent law is "to promote disclosure of inventions to stimulate further innovation"
    • see also Aronson v. Quick Point Pencil Co., 440 U. S. 257, 262 (1979) (noting that one goal of patent law is "[to] promote [] disclosure of inventions to stimulate further innovation");
    • (1979) U. S. , vol.440 , pp. 257
  • 432
    • 81855197717 scopus 로고
    • Transco Prods. Inc. v. Performance Contracting, Inc., 558 Fed. Cir, rejecting an interpretation of § 112 which would "subvert the patent system's goal of... encouraging early disclosure."
    • Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 558 (Fed. Cir. 1994) (rejecting an interpretation of § 112 which would "subvert the patent system's goal of... encouraging early disclosure.");
    • (1994) F.3d , vol.38 , pp. 551
  • 433
    • 85017612847 scopus 로고
    • W. L. Gore & Assocs. v. Garlock, Inc., 1550 Fed. Cir, "Early public disclosure the linchpin of the patent system." citation omitted
    • W. L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) ("Early public disclosure the linchpin of the patent system.") (citation omitted).
    • (1983) F.2d , vol.721 , pp. 1540
  • 434
    • 79959270914 scopus 로고    scopus 로고
    • Cotropia, supra note 233, at 87-119 presenting a comprehensive analysis of the costs of early filing on the patent system;, supra note 15, at, arguing that the current disclosure framework can thwart innovation
    • See, e.g., Cotropia, supra note 233, at 87-119 (presenting a comprehensive analysis of the costs of early filing on the patent system); Seymore, Teaching Function, supra note 15, at 659 (arguing that the current disclosure framework can thwart innovation).
    • Teaching Function , pp. 659
    • Seymore1
  • 435
    • 28544451209 scopus 로고
    • In other words, the disclosure probably lacks sufficient technical detail to be helpful. Thus, it does little to advance technological progress, which is commanded by the Constitution. Graham v. John Deere Co., 6
    • In other words, the disclosure probably lacks sufficient technical detail to be helpful. Thus, it does little to advance technological progress, which is commanded by the Constitution. Graham v. John Deere Co., 383 U. S. 1, 6 (1966).
    • (1966) U. S. , vol.383 , pp. 1
  • 436
    • 31544454429 scopus 로고    scopus 로고
    • Invention, refinement and patent claim scope: A new perspective on the doctrine of equivalents
    • A good example is when an early filer strategically drafts claims which cover undeveloped technology. See BESSEN & MEURER, supra note 121, at 67 arguing that the practice "penalizes real innovators who operate in the shadow of early, broad claims";, 1975, exploring the practice
    • A good example is when an early filer strategically drafts claims which cover undeveloped technology. See BESSEN & MEURER, supra note 121, at 67 (arguing that the practice "penalizes real innovators who operate in the shadow of early, broad claims"); Michael J. Meurer & Craig Allen Nard, Invention, Refinement and Patent Claim Scope: A New Perspective on the Doctrine of Equivalents, 93 GEO. L. J. 1947, 1975 (2005) (exploring the practice).
    • (2005) Geo. L. J. , vol.93 , pp. 1947
    • Meurer, M.J.1    Nard, C.A.2
  • 437
    • 79959270914 scopus 로고    scopus 로고
    • supra note 15, at, Another commentator elaborates on the scope and consequences of the problem: The further a patent moves away from a requirement that the inventor actually have a complete and operative invention at the time of filing, the broader the patent's scope and the greater potential that the claims will protect speculative ideas... With just a little time, money, and imagination, one may... without inventing anything... obtain a patent with claims that are broad enough to encompass technology developed for the first time years after the inventor first files an application.... This can have an undue chilling effect on the behavior of later scientists and researchers... who sometimes many years later through their own experimentation, hard work, and trial and error, succeed in creating a bona fide product or process that actually works
    • Seymore, Teaching Function, supra note 15, at 660. Another commentator elaborates on the scope and consequences of the problem: The further a patent moves away from a requirement that the inventor actually have a complete and operative invention [at the time of filing], the broader the patent's scope and the greater potential that the [claims] will protect speculative ideas... With just a little time, money, and imagination, one may... without inventing anything... [obtain a patent with] claims that are broad enough to [encompass] technology developed for the first time years after the inventor first files an application.... [This can have] an undue chilling effect on the behavior of later scientists [and] researchers... who (sometimes many years later) through their own experimentation, hard work, and trial and error[,] succeed in [creating] a bona fide product or process that actually works.
    • Teaching Function , pp. 660
    • Seymore1
  • 438
    • 77950393365 scopus 로고    scopus 로고
    • Fending off paper patents and patent trolls: A novel "cold fusion" defense because changing times demand it
    • 453, A good illustration involves Type III impossibilities, which were defined earlier as quests which are impossible at time X but might become possible at time Y. See supra Part I. B. Suppose inventor A obtains a patent at time X and inventor B obtains a patent for a new and nonobvious improvement at time Y. In order to practice the improvement, B must get a license from A. See Merges & Nelson, supra note 192, at 860-61 explaining dominant and subservient patents. If B wants to avoid a license, B must challenge A's patent in court and prove by clear and convincing evidence that A's presumptively valid patent is invalid for nonenablement
    • Christopher A. Harkins, Fending Off Paper Patents and Patent Trolls: A Novel "Cold Fusion" Defense Because Changing Times Demand It, 17 ALB. L. J. SCI. & TECH. 407, 453 (2007). A good illustration involves Type III impossibilities, which were defined earlier as quests which are impossible at time X but might become possible at time Y. See supra Part I. B. Suppose inventor A obtains a patent at time X and inventor B obtains a patent for a new and nonobvious improvement at time Y. In order to practice the improvement, B must get a license from A. See Merges & Nelson, supra note 192, at 860-61 (explaining dominant and subservient patents). If B wants to avoid a license, B must challenge A's patent in court and prove by clear and convincing evidence that A's presumptively valid patent is invalid for nonenablement.
    • (2007) Alb. L. J. Sci. & Tech. , vol.17 , pp. 407
    • Harkins, C.A.1
  • 439
    • 85017588548 scopus 로고    scopus 로고
    • ALZA Corp. v. Andrx Pharms., LLC, 940 Fed. Cir, Also, B may have a hard time getting the improvement patent because the PTO can assert the disclosure of A's patent as prior art against B's claim, most likely for a lack of nonobviousness
    • ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010). Also, B may have a hard time getting the improvement patent because the PTO can assert the disclosure of A's patent as prior art against B's claim, most likely for a lack of nonobviousness.
    • (2010) F.3d , vol.603 , pp. 935
  • 440
    • 0042529644 scopus 로고    scopus 로고
    • §, To make matters worse for B, the Federal Circuit has held that the examiner can presume that A's disclosure is enabled, meaning that the examiner need not elucidate if what A discloses really works
    • See 35 U. S. C. § 103. To make matters worse for B, the Federal Circuit has held that the examiner can presume that A's disclosure is enabled, meaning that the examiner need not elucidate if what A discloses really works.
    • U. S. C. , vol.35 , pp. 103
  • 441
    • 33845207878 scopus 로고    scopus 로고
    • Amgen Inc. v. Hoechst Marion Roussel, Inc., 1355 Fed. Cir
    • Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003);
    • (2003) F.3d , vol.314 , pp. 1313
  • 442
    • 81855201147 scopus 로고    scopus 로고
    • supra note 15, at, criticizing this presumption. To win, B must rebut the presumption by a preponderance of the evidence
    • see also Seymore, Rethinking Novelty, supra note 15, at 940-46 (criticizing this presumption). To win, B must rebut the presumption by a preponderance of the evidence.
    • Rethinking Novelty , pp. 940-946
    • Seymore1
  • 443
    • 85017613957 scopus 로고
    • In re, 681 C. C. P. A, The basic point is that in both cases B has to prove nonenablement for a patent that never should have issued
    • In re Sasse, 629 F.2d 675, 681 (C. C. P. A. 1980). The basic point is that in both cases B has to prove nonenablement for a patent that never should have issued.
    • (1980) F.2d , vol.629 , pp. 675
    • Sasse1
  • 444
    • 27844560954 scopus 로고    scopus 로고
    • Carrots and sticks to create a better patent system
    • Cf, 765, suggesting that concerns related to the PTO's issuance of "facially" invalid patents may stem from the examiner's inability to accurately determine the scope and content of the prior art
    • Cf. Jay P. Kesan, Carrots and Sticks to Create a Better Patent System, 17 BERKELEY TECH. L. J. 763, 765 (2002) (suggesting that concerns related to the PTO's issuance of "facially" invalid patents may stem from the examiner's inability to accurately determine the scope and content of the prior art).
    • (2002) Berkeley Tech. L. J. , vol.17 , pp. 763
    • Kesan, J.P.1
  • 445
    • 79959270914 scopus 로고    scopus 로고
    • supra note 15, at
    • See Seymore, Teaching Function, supra note 15, at 652-66.
    • Teaching Function , pp. 652-666
    • Seymore1
  • 446
    • 84872512659 scopus 로고    scopus 로고
    • This goal emanates from the Intellectual Property Clause of the Constitution: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.", art. I, § 8, cl. 8
    • This goal emanates from the Intellectual Property Clause of the Constitution: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U. S. CONST. art. I, § 8, cl. 8;
    • U. S. Const.
  • 447
    • 80055055677 scopus 로고    scopus 로고
    • see also Bilski v. Kappos, 3236, Stevens, J., concurring explaining that Intellectual Property Clause empowered Congress "to pass a series of patent laws... as a means of encouraging innovation"
    • see also Bilski v. Kappos, 130 S. Ct. 3218, 3236 (2010) (Stevens, J., concurring) (explaining that Intellectual Property Clause empowered Congress "to pass a series of patent laws... as a means of encouraging innovation");
    • (2010) S. Ct. , vol.130 , pp. 3218
  • 448
    • 33847388923 scopus 로고    scopus 로고
    • Eldred v. Ashcroft, 223, noting that the constitutional command is the "ultimate purpose" of the patent system
    • Eldred v. Ashcroft, 537 U. S. 186, 223 (2003) (noting that the constitutional command is the "ultimate purpose" of the patent system);
    • (2003) U. S. , vol.537 , pp. 186
  • 449
    • 84878026713 scopus 로고
    • Motion Picture Patents Co. v. Universal Film Mfg. Co., 511, observing that "the primary purpose of our patent laws... is 'to promote the progress of science and useful arts' ". Scholars have sought to clarify the meaning of the constitutional language
    • Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U. S. 502, 511 (1917) (observing that "the primary purpose of our patent laws... is 'to promote the progress of science and useful arts' "). Scholars have sought to clarify the meaning of the constitutional language.
    • (1917) U. S. , vol.243 , pp. 502
  • 450
    • 81855201145 scopus 로고    scopus 로고
    • explaining that in the latter part of the eighteenth century, the term "science" was synonymous with "knowledge" and "learning"
    • See, e.g., EDWARD WALTERSCHEID, THE NATURE OF THE INTELLECTUAL PROPERTY CLAUSE 125-26 (2002) (explaining that in the latter part of the eighteenth century, the term "science" was synonymous with "knowledge" and "learning");
    • (2002) The Nature of the Intellectual Property Clause , pp. 125-126
    • Walterscheid, E.1
  • 451
    • 33749843423 scopus 로고
    • Patents and science: A clarification of the patent clause of the u. S. Constitution
    • 54, noting that the term "useful arts" is synonymous with the word "technology"
    • Karl B. Lutz, Patents and Science: A Clarification of the Patent Clause of the U. S. Constitution, 18 GEO. WASH. L. REV. 50, 54 (1949) (noting that the term "useful arts" is synonymous with the word "technology") .
    • (1949) Geo. Wash. L. Rev. , vol.18 , pp. 50
    • Lutz, K.B.1
  • 452
    • 81855210276 scopus 로고
    • In re, 1074 C. C. P. A
    • In re Ferens, 417 F.2d 1072, 1074 (C. C. P. A. 1969).
    • (1969) F.2d , vol.417 , pp. 1072
    • Ferens1
  • 453
    • 81855205312 scopus 로고
    • In re, 1327 C. C. P. A
    • In re Jolles, 628 F.2d 1322, 1327 (C. C. P. A. 1980).
    • (1980) F.2d , vol.628 , pp. 1322
    • Jolles1
  • 454
    • 0041446429 scopus 로고    scopus 로고
    • In re, 1566 Fed. Cir
    • In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995).
    • (1995) F.3d , vol.51 , pp. 1560
    • Brana1
  • 455
    • 81855166130 scopus 로고
    • In re, 330 C. C. P. A
    • In re Pottier, 376 F.2d 328, 330 (C. C. P. A. 1967).
    • (1967) F.2d , vol.376 , pp. 328
    • Pottier1
  • 456
    • 33845218638 scopus 로고
    • Brenner v. Manson, 533, "One of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions."
    • Brenner v. Manson, 383 U. S. 519, 533 (1966) ("[O]ne of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions.");
    • (1966) U. S. , vol.383 , pp. 519
  • 457
    • 33044482938 scopus 로고    scopus 로고
    • What is congress supposed to promote? Defining "progress"
    • in Article 1, Section 8, Clause 8 of the United States Constitution, or Introducing the Progress Clause, 778-79, arguing that the Intellectual Property Clause empowers Congress to create an individual right to exclude through patents only to the extent that those rights promote the dissemination of knowledge. The statutory scheme helps achieve this goal. As discussed above, a fundamental purpose of both § 102 b and § 102 g is to encourage prompt filing. See supra note 283. In addition, recent amendments to the patent statutes facilitate quicker dissemination. For instance, until recently, patent applications were kept in secret unless and until the patent issued. Now, most patent applications filed on or after November 29, 2000, publish eighteen months after the earliest effective filing date. See American Inventors Protection Act of 1999
    • see also Malla Pollack, What is Congress Supposed to Promote? Defining "Progress" in Article 1, Section 8, Clause 8 of the United States Constitution, or Introducing the Progress Clause, 80 NEB. L. REV. 754, 778-79 (2001) (arguing that the Intellectual Property Clause empowers Congress to create an individual right to exclude through patents only to the extent that those rights promote the dissemination of knowledge). The statutory scheme helps achieve this goal. As discussed above, a fundamental purpose of both § 102 (b) and § 102 (g) is to encourage prompt filing. See supra note 283. In addition, recent amendments to the patent statutes facilitate quicker dissemination. For instance, until recently, patent applications were kept in secret unless and until the patent issued. Now, most patent applications filed on or after November 29, 2000, publish eighteen months after the earliest effective filing date. See American Inventors Protection Act of 1999
    • (2001) Neb. L. Rev. , vol.80 , pp. 754
    • Pollack, M.1
  • 458
    • 81855201142 scopus 로고    scopus 로고
    • §, b 1 A
    • U. S. C. § 122 (b) (1) (A) (2006).
    • (2006) U. S. C. , vol.35 , pp. 122
  • 459
    • 81855223629 scopus 로고    scopus 로고
    • A rich legacy
    • Fromer, supra note 277, at 541. Importantly, the public can engage in these activities during the patent term. As the late Judge Giles S. Rich once explained: Another aspect of what we think of as "the patent" which should not be forgotten is that it is not only a grant of right to exclude from the government; simultaneously, it is a publication, making (in principle at least) a full public disclosure of the invention due to § 112 ¶ 1. So even if it does not go into the public domain during the patent term, the public gets the advantage of knowing what the invention is and how to practice it. ("Literae patentes" = "open letters", in short form, "patents.").... Janice M. Mueller, A Rich Legacy, 14 BERKELEY TECH. L. J. 895, 900 (1999) (quoting an email from Judge Giles S. Rich, Circuit Judge of the U. S. Court of Appeals for the Federal Circuit, to Professor Janice M. Mueller (Aug. 16, 1997)). But, Professor Holbrook argues that the Federal Circuit's evisceration of the common law experimental use exception means that "[o]ne can read the patent but cannot make or use the invention for purposes of exploring its function or the manner in which it works [without risking infringement]." Holbrook, Possession, supra note 216, at 140;
    • (1999) Berkeley Tech. L. J. , vol.14 , pp. 895
    • Mueller, J.M.1
  • 460
    • 78649687073 scopus 로고    scopus 로고
    • The experimental use exemption to patent infringement: Information on ice, competition on hold
    • 494-504, making a similar argument
    • see also Ted Hagelin, The Experimental Use Exemption to Patent Infringement: Information on Ice, Competition on Hold, 58 FLA. L. REV. 483, 494-504 (2006) (making a similar argument).
    • (2006) Fla. L. Rev. , vol.58 , pp. 483
    • Hagelin, T.1
  • 461
    • 85017638274 scopus 로고    scopus 로고
    • FTC Report, supra note 79, ch. 4, at 3-4; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 1344 Fed. Cir, describing enablement as the essential aspect of the patent bargain
    • FTC Report, supra note 79, ch. 4, at 3-4; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344 (Fed. Cir. 2005) (describing enablement as the essential aspect of the patent bargain);
    • (2005) F.3d , vol.424 , pp. 1336
  • 462
    • 81855223631 scopus 로고    scopus 로고
    • supra note 134, § 7.01 explaining that among the disclosure requirements, enablement has the deepest historical roots and "lies at the heart of the patent bargain"
    • CHISUM, supra note 134, § 7.01 (explaining that among the disclosure requirements, enablement has the deepest historical roots and "lies at the heart of the patent bargain").
    • Chisum , vol.3
  • 463
    • 0010550194 scopus 로고
    • The economic underpinnings of patent law
    • 267
    • Kenneth W. Dam, The Economic Underpinnings of Patent Law, 23 J. LEGAL STUD. 247, 267 n. 79 (1994);
    • (1994) J. Legal Stud. , vol.23 , Issue.79 , pp. 247
    • Dam, K.W.1
  • 464
    • 81855223622 scopus 로고    scopus 로고
    • Intellectual property
    • 92 Adam Jolly ed., arguing that since patent applications contain a complete description of the relevant technology and are readily accessible online, "why struggle to solve a technical problem already solved by another and published in a patent application?". One could argue that any delay of entry into the patent system caused by the need to make working examples could actually set the stage for duplicative research efforts. However, it is probably rare that researchers are working on the identical problem in exactly the same way at the same moment in time
    • see also Anthony Murphy, Intellectual Property, in INNOVATION: HARNESSING CREATIVITY FOR BUSINESS GROWTH 87, 92 (Adam Jolly ed., 2003) (arguing that since patent applications contain a complete description of the relevant technology and are readily accessible online, "[w]hy struggle to solve a technical problem already solved by another and published in [a patent] application?"). One could argue that any delay of entry into the patent system caused by the need to make working examples could actually set the stage for duplicative research efforts. However, it is probably rare that researchers are working on the identical problem in exactly the same way at the same moment in time.
    • (2003) Innovation: Harnessing Creativity for Business Growth , pp. 87
    • Murphy, A.1
  • 465
    • 78851471691 scopus 로고    scopus 로고
    • explaining that disclosure adds to the pool of accessible knowledge that other creative individuals can use and improve upon
    • See MICHAEL A. GOLLIN, DRIVING INNOVATION 15-19 (2008) (explaining that disclosure adds to the pool of accessible knowledge that other creative individuals can use and improve upon).
    • (2008) Driving Innovation , pp. 15-19
    • Gollin, M.A.1
  • 466
    • 81855201141 scopus 로고    scopus 로고
    • noting that patents enrich the public domain and thus support further innovation
    • See ROGER E. SCHECHTER & JOHN R. THOMAS, PRINCIPLES OF PATENT LAW 6 (2004) (noting that patents enrich the public domain and thus support further innovation).
    • (2004) Principles of Patent Law , vol.6
    • Schechter, R.E.1    Thomas, J.R.2
  • 467
    • 0023641373 scopus 로고
    • Proprietary rights and norms of science in biotechnology research
    • In particular, both mainstream science and patent law promote disclosure through publication. Once in the public domain, there is hope that others will build upon those results and engage in further research. See, 184, exploring the compatibility and conflicts between the norms of science and patent law. But Professor Eisenberg also points out that to the extent that patent protection "limits the ability of other scientists to use published knowledge, intellectual property law has been perceived within the scientific research community as conflicting with the traditional norms and rewards of science." Id.
    • In particular, both mainstream science and patent law promote disclosure through publication. Once in the public domain, there is hope that others will build upon those results and engage in further research. See Rebecca S. Eisenberg, Proprietary Rights and Norms of Science in Biotechnology Research, 97 YALE L. J. 177, 184 (1987) (exploring the compatibility and conflicts between the norms of science and patent law). But Professor Eisenberg also points out that to the extent that patent protection "limit[s] the ability of other scientists to use published knowledge, intellectual property law has been perceived within the scientific research community as conflicting with the traditional norms and rewards of science."
    • (1987) Yale L. J. , vol.97 , pp. 177
    • Eisenberg, R.S.1
  • 468
    • 34548610362 scopus 로고
    • Patents and the progress of science: Exclusive rights and experimental use
    • 1017, "Yet the idea that exclusive rights in new knowledge will promote scientific progress is counterintuitive to many observers of research science, who believe that science advances most rapidly when the community enjoys free access to new discoveries."
    • see also Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. CHI. L. REV. 1017, 1017 (1989) ("Yet the idea that exclusive rights in new knowledge will promote scientific progress is counterintuitive to many observers of research science, who believe that science advances most rapidly when the community enjoys free access to new discoveries.").
    • (1989) U. Chi. L. Rev. , vol.56 , pp. 1017
    • Eisenberg, R.S.1
  • 469
    • 33044498765 scopus 로고    scopus 로고
    • See J. E. M. AG Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 142, explaining that to obtain a patent, the applicant "must describe the invention with sufficient specificity to enable others to 'make and use' the invention after the patent term expires"
    • See J. E. M. AG Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U. S. 124, 142 (2001) (explaining that to obtain a patent, the applicant "must describe the [invention] with sufficient specificity to enable others to 'make and use' the invention after the patent term expires"
    • (2001) U. S. , vol.534 , pp. 124
  • 470
    • 77952760538 scopus 로고    scopus 로고
    • quoting, § 112 ¶ 1. Here it is worth noting that quests which are per se impossible Type I or pseudoscientific Type II can nevertheless produce knowledge which promotes scientific and technological progress. As one commentator explains: The pursuit of the perpetual motion machine... has not been fruitless from a scientific point of view. On the contrary, although inventors have never produced a perpetual motion machine, the enormous time and energy invested into building such a fabled machine has led physicists to carefully study the nature of heat engines. In the same way, the fruitless search of alchemists for a method to turn lead into gold helped to uncover some of the basic laws of chemistry. KAKU, supra note 24, at 262-63
    • (quoting 35. U. S. C. § 112 ¶ 1)). Here it is worth noting that quests which are per se impossible (Type I) or pseudoscientific (Type II) can nevertheless produce knowledge which promotes scientific and technological progress. As one commentator explains: The pursuit of the perpetual motion machine... has not been fruitless from a scientific point of view. On the contrary, although inventors have never produced a perpetual motion machine, the enormous time and energy invested into building such a fabled machine has led physicists to carefully study the nature of heat engines. (In the same way, the fruitless search of alchemists for [a method to] turn lead into gold[] helped to uncover some of the basic laws of chemistry.) KAKU, supra note 24, at 262-63.
    • U. S. C. , vol.35
  • 471
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    • See Eames v. Andrews The Driven-Well Cases, 56, explaining that an inventor's ignorance of the scientific principles is immaterial as long as the patent's disclosure sets forth the "thing" to be done so that it can be reproduced
    • See Eames v. Andrews (The Driven-Well Cases), 122 U. S. 40, 56 (1887) (explaining that an inventor's ignorance of the scientific principles is immaterial as long as the patent's disclosure sets forth the "thing" to be done so that it can be reproduced);
    • (1887) U. S. , vol.122 , pp. 40
  • 472
    • 81855197711 scopus 로고
    • Radiator Specialty Co. v. Buhot, 376 3d Cir, "It is with the inventive concept, the thing achieved, not with the manner of its achievement or the quality of the mind which gave it birth, that the patent law concerns itself."
    • Radiator Specialty Co. v. Buhot, 39 F.2d 373, 376 (3d Cir. 1930) ("It is with the inventive concept, the thing achieved, not with the manner of its achievement or the quality of the mind which gave it birth, that the patent law concerns itself.");
    • (1930) F.2d , vol.39 , pp. 373
  • 473
    • 81855223627 scopus 로고    scopus 로고
    • Earle v. Sawyer, 256 C. C. D. Mass. 1825 No. 4, 247 Story, J. "It is of no consequence, whether the thing be simple or complicated; whether it be by accident, or by long, laborious thought... that it is first done because the law looks to the fact, and not to the process by which it is accomplished."
    • Earle v. Sawyer, 8 F. Cas. 254, 256 (C. C. D. Mass. 1825) (No. 4, 247) (Story, J.) ("It is of no consequence, whether the thing be simple or complicated; whether it be by accident, or by long, laborious thought... that it is first done [because the] law looks to the fact, and not to the process by which it is accomplished.").
    • F. Cas , vol.8 , pp. 254
  • 474
    • 81855186106 scopus 로고
    • CHUBIN & HACKETT, supra note 93, at 4 arguing that aside from asserting the autonomy and authority of science, peer review "makes new knowledge claims more credible to the nonscientist because they bear the approval of the scientific community". But see Brooktree Corp. v. Advanced Micro Devices, Inc., 1571 Fed. Cir, explaining that "while utility and enablement often involve complex scientific principles, the Federal Circuit views them not as "legal abstractions", but as issues "which properly devolve on the trier of fact" who, as for other kinds of evidence, "must make determinations of credibility, reliability, and weight". Despite the drawbacks in using credibility assessments for patentability purposes, they can be useful in other contexts
    • See, e.g., CHUBIN & HACKETT, supra note 93, at 4 (arguing that aside from asserting the autonomy and authority of science, peer review "makes new knowledge claims more credible to the nonscientist because [they] bear the approval of the scientific community"). But see Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571 (Fed. Cir. 1992) (explaining that "[w]hile utility and enablement often involve complex scientific principles, the Federal Circuit views them not as "legal abstractions", but as issues "[which] properly devolve on the trier of fact" who, as for other kinds of evidence, "must make determinations of credibility, reliability, and weight"). Despite the drawbacks in using credibility assessments for patentability purposes, they can be useful in other contexts.
    • (1992) F.2d , vol.977 , pp. 1555
  • 475
    • 32344452112 scopus 로고
    • Daubert v. Merrell Dow Pharms., 592-94, setting forth a five-part test for U. S. judges to evaluate the credibility of scientific testimony for admissibility purposes
    • See, e.g., Daubert v. Merrell Dow Pharms., 509 U. S. 579, 592-94 (1993) (setting forth a five-part test for U. S. judges to evaluate the credibility of scientific testimony for admissibility purposes).
    • (1993) U. S. , vol.509 , pp. 579


* 이 정보는 Elsevier사의 SCOPUS DB에서 KISTI가 분석하여 추출한 것입니다.