Chapter §10.06 Inoperability

• Jurisdiction: United States

§10.06 Inoperability

If the utility asserted for an invention contravenes generally accepted scientific principles, the USPTO will reject the inventor's claims under 35 U.S.C. §101 as drawn to inoperable subject matter. Inoperability is a type of rejection for lack of utility. If an invention does not work as claimed, then it is not considered useful in the patent law sense. Moreover, one cannot logically describe how to use an inoperable invention in accordance with 35 U.S.C. §112, ¶1.⁸³

[A] Examples of Inoperable Inventions

The inventor in Newman v. Quigg⁸⁴ claimed an "Energy Generation System Having Higher Energy Output Than Input," which the USPTO characterized as a "perpetual motion machine." After the agency's rejection of his claims under §101, Newman brought a civil action against the USPTO Commissioner pursuant to 35 U.S.C. §145.⁸⁵ The Federal Circuit affirmed a federal district court's conclusion that the invention was "unpatentable under 35 U.S.C. §101 because 'Newman's device lacks utility (in that it does not operate to produce what he claims it does).' " The district court had properly relied on National Bureau of Standards' test results proving that Newman's machine did not in fact generate more energy than the amount input, the machine having, at most, an efficiency of only 77 percent.

The operability of a treatment for hair loss was at issue in In re Cortright.⁸⁶ In that case the patent applicant claimed a method of treating baldness by applying Bag Balm® (a commercially available ointment typically used to moisturize the udders of cows) to the head of a human suffering from hair loss. Although the Federal Circuit did not consider the asserted utility of treating baldness to be "inherently suspect" in view of the several hair-loss treatments already approved by the FDA, the court nevertheless affirmed the USPTO's rejection of Cortright's claim 15, which recited a method of

offsetting the effects of lower levels of a male hormone being supplied by arteries to the papilla of scalp hair follicles with the active agent 8-hydroxy-quinoline sulfate to cause hair to grow again on the scalp, comprising rubbing into the scalp the ointment having the active agent 8-hydroxy-quinoline sulfate 0.3% carried in a petrolatum and lanolin base so that the active agent reaches the papilla. ⁸⁷

In essence, claim 15 recited the particular way in which Cortright believed that her invention worked.

Unfortunately, Cortright's patent application lacked any...