Can a Patent Violate the Laws of Chemistry and Physics?
May 14 2021
Quick answer: no!
The Federal Circuit Court of Appeals recently tangled with a patent application for an invention that did not have scientific support. The court affirmed a decision of the Patent Trial and Appeal Board rejecting a patent application on these grounds. While this is not a common occurrence, in this case, it’s an easy conclusion to reach.
In In re Huping Hu, 2021 U.S. App. LEXIS 7776, the inventors applied for patents for inventions related to “quantum entanglement.” According to the inventors, quantum entanglement is “quantum spins of photons, electrons and nuclei.” The inventors explained that “quantum spins of photons, electrons and nuclei have now been successfully entangled in various ways for purposes of quantum computation and communication.” The inventors said that quantum entanglement is a phenomenon that happens if particles, such as photons and electrons, become linked, and, when separated, the mechanical states of the molecules are still linked such that if the state of one particle is changed, the linked particle is affected. The PTO explained the inventors’ method as using quantum entanglement “to change the characteristics of one substance via the manipulation of a completely physically separate substance.” The PTO did not dispute the existence of quantum entanglement, but said that the phenomenon has been seen in very specific conditions for only a fraction of a second.
The inventors claimed that they had developed quantum entanglement into technologies that could be used in communications, engineering, health, medicine, and recreation. They filed four applications for methods and apparatus to produce or use quantum entanglement. One of the claims was directed to a method “of producing a non-local effect in a target substance through manipulating an originating substance and detecting said nonlocal effect…” and included the steps of “selecting a substance” and “letting said substance sit.” Another claim was directed to a method of using general anesthesia by applying magnetic pulses to the brain while placing the anesthetic in a container outside the body. The PTAB commented that this claim was “directing music toward the brain through a container of that anesthetic.” I don’t know about you, but I’d rather not have surgery with general anesthesia outside my body!
Not surprisingly, the patent examiners rejected the claims of the four applications on several grounds. First, the examiners rejected claims as inoperative under 35 U.S.C §101, stating that the claims were “not credible” and therefore could not meet the utility requirement of §101. The patent examiners also rejected claims as not enabled and lacking written description on the grounds that the claimed invention was “incapable of functioning as claimed.” One very thorough examiner said that the claims violated the first law of thermodynamics, basic laws of chemistry, classical laws of physics, and the principle of conservation of mass.
The PTAB affirmed the examiners’ rejections. The PTAB found that the claims did not satisfy §112; they were indefinite, lacked written description, and were not enabled. The PTAB explained that the claims were not enabled “due to the absence of any known scientific principles explaining how [applicants’] invention could possibly operate in this manner, the absence of any cogent explanation in [applicants’] specification regarding the general principles or mechanisms causing this to occur, and the absence of any verifiable test data reasonably attributable to the reported result……” The PTAB also affirmed the rejections under §101, finding that the claimed inventions were directed to a natural phenomenon, which is not patent-eligible subject matter.
As would be expected, the Federal Circuit affirmed the PTAB’s decision. On appeal, the applicants argued that the PTO had the burden of establishing unpatentability, and that the examiners and the PTAB had erroneously relied on “skepticism and ignorance” and had not considered the evidence and the prior art. The court agreed that the burden rested with the PTO, but said that “concepts that strain scientific principles are properly held to a heightened standard, typically measured by reproducibility of results.” The court compared this invention to inventions for perpetual motion machines and cold fusion. There was no scientific support for the invention, and the data was not sufficient to support the claims.