Inre: Hoffmann , 558 F. App'x 985 ( 2014 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE EUGENE J. HOFFMANN AND
DAVID E. LUND
______________________
2013-1657
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board, in Serial No.
11/504,474.
______________________
Decided: February 25, 2014
______________________
EUGENE J. HOFFMANN, of Sun City Center, Florida,
pro se and DAVID E. LUND, of Hertford, North Carolina,
pro se.
NATHAN K. KELLEY, Acting Solicitor, Office of the So-
licitor, United States Patent and Trademark Office, of
Alexandria, Virginia, for appellee. With him on the brief
were BENJAMIN T. HICKMAN and MICHAEL S. FORMAN,
Associate Solicitors.
______________________
Before RADER, Chief Judge, NEWMAN, and DYK, Circuit
Judges.
2 IN RE HOFFMANN
PER CURIAM.
Eugene Hoffmann and David Lund appeal the rejec-
tion of their application for a patent on a “[t]ropical hurri-
cane 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 examiner rejected the
claims for lack of enablement, and the Patent Trial and
Appeal Board (“Board”) affirmed. We agree with the
Board’s decision and affirm.
BACKGROUND
Hoffmann and Lund’s patent application, No.
11/504,474, describes a “method and system for diminish-
ing the intensity of tropical cyclones by delivering super
coolant from [an] aircraft into the eye wall of the tropical
cyclone.” J.A. 204. According to the specification, deliver-
ing “a sufficient quantity” of super coolant into the storm’s
eye wall “breaks the forming or recently formed eye wall,
which will cause the eye wall to implode.” J.A. 207. Alt-
hough the method has never been tested, the specification
contains a set of “preliminary calculations” detailing the
amount of super coolant and number of airplanes neces-
sary to address an example storm of small size. J.A. 219-
23.
Independent claim 36 is representative of the claims:
A process for disrupting a formed or forming trop-
ical cyclone eye wall or eye or center of lowest
pressure comprising: Introduction of a super cool-
ant chemical agent sprayed with force (the super
coolant is stored in a vessel under pressure) and
or released from pre-measured containers from an
appropriate number of large aircraft to reduce the
temperature within the eye wall (top to bottom at
sea level), thereby circulating the super coolant
throughout the eye wall by the centrifugal force of
IN RE HOFFMANN 3
the eye wall, alternatively into the eye or center of
lowest pressure to reduce the temperature in the
eye or center of lowest pressure and the water be-
neath, thereby reducing the wind and storm surge
of the eye wall or raising the pressure in the eye
or center of lowest pressure and converting it back
to a tropical rainstorm.
J.A. 593.
The examiner rejected the claims for failure to comply
with the enablement requirement of 35 U.S.C. § 112(a).
The examiner relied on three principal grounds for his
conclusion on lack of enablement. First, he noted that the
preliminary calculations contained several unexplained
assumptions and mathematical errors. Second, the exam-
iner noted that the specification itself acknowledged the
need for experimentation to determine the amount of
super coolant needed and the optimal time to strike.
Finally, the examiner cited a variety of publications by
weather scientists who expressed serious doubts about
the viability of weather modification plans like Hoffmann
and Lund’s. The examiner ultimately concluded that
Hoffmann and Lund “failed to provide a disclosure of the
invention which would enable one of ordinary skill in the
art to make and/or use the invention without undue
experimentation.” J.A. 1538.
The Board affirmed the examiner’s rejection after ap-
plying the eight factor analysis set forth by In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
Hoffmann and Lund appeal. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A). We review the Board’s
decision on enablement de novo and its underlying factual
findings for substantial evidence. See In re Gartside, 203
F.3d 1305, 1315-16 (Fed. Cir. 2000); Enzo Biochem, Inc. v.
Calgene, Inc., 188 F.3d 1362, 1369 (Fed. Cir. 1999).
4 IN RE HOFFMANN
DISCUSSION
Section 112(a) of the patent statute requires that the
specification of a patent describe “the manner and process
of making and using [the invention], in such full, clear,
concise, and exact terms as to enable any person skilled in
the art to which it pertains . . . to make and use the
same.” 35 U.S.C. § 112(a). A specification is not enabling
if a person of ordinary skill in the art would be unable to
practice the invention without “undue experimentation.”
Wands, 585 F.2d at 737. Factors relevant to a determina-
tion of whether undue experimentation would be neces-
sary include:
(1) the quantity of experimentation necessary, (2)
the amount of direction or guidance presented, (3)
the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the
prior art, (6) the relative skill of those in the art,
(7) the predictability or unpredictability of the art,
and (8) the breadth of the claims.
Id. (footnote omitted). When rejecting a claim for lack of
enablement, the initial burden is on the PTO to set forth
“a reasonable explanation” of why it believes the specifi-
cation is not enabling. In re Wright, 999 F.2d 1557, 1561-
62 (Fed. Cir. 1993). The burden then shifts to the appli-
cant to provide “suitable proofs indicating that the specifi-
cation is indeed enabling.” Id. at 1562.
We agree with the Board that the PTO has met its
burden and that Hoffmann and Lund have failed to meet
theirs. As an initial matter, the examiner’s findings are
more than enough to constitute a “reasonable explana-
tion” of the doubts regarding enablement. Id. at 1561. 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
IN RE HOFFMANN 5
determine the necessary or optimal value of certain
variables. And perhaps most significantly, the very effica-
cy of the method itself is subject to considerable doubt in
the scientific community. These points are sufficient to
meet the PTO’s burden.
Hoffmann and Lund, on the other hand, offer little to
meet their burden to show that the specification is indeed
enabling. Their primary argument is that the specifica-
tion must be enabling because the government has secret-
ly implemented their method and abated or redirected
many hurricanes over the past several years. But they
have no evidence to support this theory. All they 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. Hoffmann and Lund
also argue that the specification is enabling because it
contains a table estimating the number of airplanes
necessary to treat tropical storms of different sizes. But
that is not enough information to enable a person of
ordinary skill in the art to practice the method without
undue experimentation.
We conclude that the Board correctly ruled that
Hoffmann and Lund’s specification does not describe their
invention in such “full, clear, concise, and exact terms” to
enable a person of ordinary skill in the art to practice the
invention. 35 U.S.C. § 112(a).
AFFIRMED