Incredible Claims Held to Lack Credibility

The Court of Appeal for the Federal Circuit’s (CAFC) recent decision In Re Hu 19-2104 involved consideration of whether patent applications that violated currently established laws of physics were sufficiently enabled and whether the onus of establishing their unpatentability had been discharged.

At issue were four applications filed collectively by Hu and Wu in 2007 and 2012 claiming various methods or apparatus for producing or using quantum entanglement. Quantum entanglement is considered the most defining feature that makes quantum physics incompatible with classical physics. It refers to the entanglement of quantum spins of photons, electrons and nuclei and occurs when those particles interact and become linked such that their spin, momentum or polarization remain linked with instantaneous mutual affects even when separated by distance.

A brief description of two of the applications follows. Application 11/944631 is titled Method and Apparatus for Producing Non-Local Physical, Chemical and Biological Effects. It describes a method whereby a “certain volume of a liquid, gel, gas, solid or a composition thereof such as water” is quantum entangled by being “simply left alone at a desired temperature for a certain period of time before use.” This material is then divided into the target substance in a container at location A, and an originating substance in another container at location B. The originating substance is then manipulated, and the effects are manifested in the target substance through quantum entanglement.

Application 11/670996 is titled Method and Apparatus for Producing Quantum Entanglement and Non-Local Effects of Substances. It describes using laser light to create quantum entanglement between a substances such as water in two separated vessels in the path of the laser light. It claims that subsequent to undergoing the process the generated quantum entanglements allow manipulation of the substance in one of the vessels to be used to create non-local effects on a physical, chemical or biological property or process of the substance in the other vessel.

Responses by the examiners and the Patent Trial and Appeal Board (PTAB) to the various applications involved the following objections:

• The claims and disclosure were considered to lack credibility for being incapable of functioning as claimed and so fail the utility requirement.
• The claims to changing attributes of one substance by manipulating a separate and distant substance violated the first law of thermodynamics and the classical laws of physics and are also contrary to the traditional understanding of chemistry.
• That the absence of any known scientific principles or cogent explanations in the specifications explaining how the inventions could operate as claimed, and the absence of any verifiable test data justifies the doubts about the asserted utility and operability of the claimed inventions.
• The disclosed experiments and experimental data were considered to not adequately allow a person skilled in the art to practice the invention without undue experimentation.

Hu argued that the rejections of the applications by the examiners and the PTAB were based on scepticism, speculation and ignorance and did not discharge their onus of establishing unpatentability by way of prior art, contrary knowledge or contrary evidence. The CAFC confirmed that patentability is presumed unless a prima facie case is established otherwise. While the statement of a prima facie case of unpatentability can shift the burden onto the applicant to provide evidence or argument to rebut that prima facie case, the ultimate burden is on the examiner / Commissioner / PTAB to provide a prima facie case of unpatentability before refusing grant.

The CAFC found that reasonable and objective grounds for establishing a prima facie case of unpatentability had been given. The examiners and the PTAB had not disputed the concept of quantum entanglement; rather it was the application of that concept in contexts where such quantum effects had no expectation of occurring and without any credible explanation or verifiable test data for establishing why or that it had occurred that was objected to. While technological innovation can involve unusual concepts and require a degree of receptivity thereto by the PTO, the CAFC held that where scientific principles are strained the PTO is right to require heightened standards, such as reproducibility of results showing experimental verification.

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