04/09/14

In re Hoffmann: Unclear Preliminary Calculations Suggest No Enablement

Category: Enablement
 
 
 
By: Christian Hannon, Contributor 
 
TitleIn re Hoffmann, No. 2013-1657 (Fed. Cir. Feb. 25, 2014) (non-precedential).
Issue

Eugene Hoffmann and David Lund appeal the [lack of enablment] rejection of their application for a patent on a “[t]ropical hurricane control system.” In re Hoffmann at *2.

Holding

[Hoffmann and Lund have not provided] enough information to enable a person of
ordinary skill in the art to practice the method without undue experimentation [because of unclear 'preliminary calculations' and a statement requireing "further experimentation" concerning claimed subject matter]. Id. at *5 (text added).

 
 
 
Procedural HistoryThe examiner rejected the claims for lack of enablement, and the Patent Trial and Appeal Board (“Board”) affirmed. In re Hoffmann at *2.
 
 
 
 
Legal Reasoning (Rader, Chief Judge, Newman and Dyk) (Per Curiam)
Background
Object of Invention

Hoffmann and Lund’s patent application, No. 11/504,474, describes a “method and system for diminishing the intensity of tropical cyclones by delivering super coolant from [an] aircraft into the eye wall of the tropical cyclone.” According to the specification, delivering “a sufficient quantity” of super coolant into the storm’s eye wall “breaks the forming or recently formed eye wall, which will cause the eye wall to implode.” Although the method has never been tested, the specification contains a set of “preliminary calculations” detailing the amount of super coolant and number of airplanes necessary to address an example storm of small size. In re Hoffmann at *2. (internal citations omitted).

Representative ClaimIndependent claim 36 is representative of the claims: A process for disrupting a formed or forming tropical cyclone eye wall or eye or center of lowest pressure comprising: Introduction of a super coolant chemical agent sprayed with force (the super coolant is stored in a vessel under pressure) and or released from pre-measured containers from an appropriate number of large aircraft to reduce the temperature within the eye wall (top to bottom at sea level), thereby circulating the super coolant throughout the eye wall by the centrifugal force of the eye wall, alternatively into the eye or center of lowest pressure to reduce the temperature in the eye or center of lowest pressure and the water beneath, thereby reducing the wind and storm surge of the eye wall or raising the pressure in the eye or center of lowest pressure and converting it back to a tropical rainstorm. Id. at *2-3.
Enablement
Undue Experimentation StandardSection 112(a) of the patent statute requires that the specification of a patent describe “the manner and process of making and using [the invention], in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.” A specification is not enabling if a person of ordinary skill in the art would be unable to practice the invention without “undue experimentation.” Factors relevant to a determination of whether undue experimentation would be necessary include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. In re Hoffmann at *4 (citations omitted).
Undue Experimentation Standard Applied to Hoffmann Application[T]he examiner’s findings are more than enough to constitute a “reasonable explanation” of the doubts regarding enablement.The “preliminary calculations” contain figures that are either inaccurate or incoherent, raising the possibility that a person of ordinary skill would need to correct those errors in order to practice the claimed method. The patent [sic] itself acknowledges a need for further experimentation to determine the necessary or optimal value of certain variables. And perhaps most significantly, the very efficacy of the method itself is sujbect to considerable doubt in the scientific community. Id. at *4-5 (citations omitted).
Conclusion
We conclude that the Board correctly ruled that Hoffmann and Lund’s specification does not describe their invention in such “full, clear, concise, and exact terms” to enable a person of ordinary skill in the art to practice the invention. 35 U.S.C. § 112(a). In re Hoffmann at *5.
 
 
 
Image Attribution Statement: United States National Oceanic and Atmospheric Administration, "Hurricanes Gustav and Hanna in the Atlantic with Tropical Depression Nine" available as a public domain image (2008), http://commons.wikimedia.org/wiki/File:08_Hurricanes_on_01_sep_at_1800.png (last viewed April 8, 2014).
 
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