While a fact and technology specific case, it is worth noting that characterizing certain calculations as “preliminary” and discussing the need for further experimentation may be detrimental to enablement.
Background / Facts: The application on appeal here from rejection at the PTO is directed to a “[t]ropical hurricane control system.” The rejected claims describe a process for weakening a tropical storm by injecting a super coolant such as liquid nitrogen into the eye wall of the storm from airplanes. The specification only provides, however, a set of untested, “preliminary calculations” detailing the amount of super coolant and number of airplanes necessary to address an example storm of small size. The specification also acknowledges the need for experimentation to determine the amount of super coolant needed and the optimal time to strike.
Issue(s): Whether the specification provides enabling support under 35 U.S.C. § 112(a) for the claims.
Holding(s): No. “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 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 subject to considerable doubt in the scientific community. These points are sufficient to meet the PTO’s burden.” In dismissing for lack of evidence the applicants’ contention that “the specification must be enabling because the government has secretly implemented their method and abated or redirected many hurricanes over the past several years,” the court noted that “[a]ll [the applicants] have is a speculative inference of government use drawn from the fact that relatively few named storms have made landfall in the United States in recent years.”