See:
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2107_01.htm
II. WHOLLY INOPERATIVE INVENTIONS; "INCREDIBLE" UTILITY
Situations where an invention is found to be "inoperative" and
therefore lacking in utility are rare, and rejections maintained
solely on this ground by a Federal court even rarer. In many of these
cases, the utility asserted by the applicant was thought to be
"incredible in the light of the knowledge of the art, or factually
misleading" when initially considered by the Office. In re Citron,
325 F.2d 248, 253, 139 USPQ 516, 520 (CCPA 1963). Other cases suggest
that on initial evaluation, the Office considered the asserted
utility to be inconsistent with known scientific principles or
"speculative at best" as to whether attributes of the invention
necessary to impart the asserted utility were actually present in the
invention. In re Sichert, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977).
However cast, the underlying finding by the court in these cases was
that, based on the factual record of the case, it was clear that the
invention could not and did not work as the inventor claimed it did.
Indeed, the use of many labels to describe a single problem (e.g., a
false assertion regarding utility) has led to some of the confusion
that exists today with regard to a rejection based on the "utility"
requirement. Examples of such cases include: an invention asserted to
change the taste of food using a magnetic field (Fregeau v.
Mossinghoff, 776 F.2d 1034, 227 USPQ 848 (Fed. Cir. 1985)), a
perpetual motion machine (Newman v. Quigg, 877 F.2d 1575, 11 USPQ2d
1340 (Fed. Cir. 1989)), a flying machine operating on "flapping or
flutter function" (In re Houghton, 433 F.2d 820, 167 USPQ 687 (CCPA
1970)), a "cold fusion" process for producing energy (In re Swartz,
232 F.3d 862, 56 USPQ2d 1703, (Fed. Cir. 2000)), a method for
increasing the energy output of fossil fuels upon combustion through
exposure to a magnetic field (In re Ruskin, 354 F.2d 395, 148 USPQ
221 (CCPA 1966)), uncharacterized compositions for curing a wide
array of cancers (In re Citron, 325 F.2d 248, 139 USPQ 516 (CCPA
1963)), and a method of controlling the aging process (In re
Eltgroth, 419 F.2d 918, 164 USPQ 221 (CCPA 1970)). These examples are
fact specific and should not be applied as a per se rule. Thus, in
view of the rare nature of such cases, Office personnel should not
label an asserted utility "incredible," "speculative" or otherwise
unless it is clear that a rejection based on "lack of utility" is proper.
- Jed
