Appeal No. 1999-0928
Application No. 08/334,952
satisfies the utility requirement of § 101 are closely related
and thus we treat these two rejections together. See In re
Swartz, 232 F.3d 862, 863, 56 USPQ2d 1703, 1703 (Fed. Cir. 2000).
To satisfy the enablement requirement of § 112, ¶1, the patent
application must adequately disclose the claimed subject matter
so as to enable one of ordinary skill in the art to practice the
invention at the time the application was filed without undue
experimentation. See Swartz, supra. The utility requirement of
§ 101 mandates that the invention be operable to achieve useful
results. See Swartz, 232 F.3d at 863, 56 USPQ2d at 1703-04.
“Thus, if the claims in an application fail to meet the utility
requirement because the invention is inoperative, they also fail
to meet the enablement requirement because a person skilled in
the art cannot practice the invention.” Swartz, 232 F.3d at 863,
56 USPQ2d at 1704.
The examiner states that appellants’ invention “falls into
the ‘cold fusion’ category of alleged low temperature nuclear
fusion/transformation reactions and ‘excess heat’ generation.”
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