Thermodynamics: More Than Just a Good Idea, It's the Law

In Re Speas, [2008-1076] (April 9, 2008) [MAYER, BRYSON, GAJARSA] The Federal Circuit affirmed rejections of Speas patent application under 35 U.S.C. §§ 101 and 112.
SIGNIFICANCE: You can’t broadly claim the impossible, unless you enable the impossible.
BRIEF: Speas filed a patent application claiming “any and all devices and systems which operate in such a manner as to violate the second law of thermodynamics as it is currently understood and accepted as inviolable by a majority of the worldwide scientific community.” The claims were rejected because they were not supported by an asserted or well established utility, and because the specification did not enable any person having ordinary skill in the art to utilize the invention commensurate in scope with the claims. Speas appealed to the board, which affirmed the rejection. The Federal Circuit found that the board’s decision was supported by substantial evidence. The specification does not enable a person having ordinary skill in the art to make “any and all devices and systems which are adapted for converting thermal energy into other energy forms by contacting a heat source without the necessity of also contacting a thermal medium of lower temperature.” This particularly broad claim is nearly limitless. However, to be enabled the claim must be described by a commensurately broad description encompassing how to utilize the invention to create any and all such devices and systems.