You Can’t Patent Walking Through Walls

Danie Roy

If you know anything at all about patent law, you absolutely have to know the three requirements for patentability: the invention must be novel, non-obvious, and useful. That’s why, if you ever have or ever will study for the patent bar, 35 U.S.C. §§ 102, 103, and 101 are drilled in to your head, respectively.

The requirements are pretty straightforward, once you understand what they mean. Novelty is pretty obvious: is it new and different from everything else out there? Non-obvious is slightly more fuzzy: would someone of ordinary skill in the field of the invention have come up with the idea of putting the invention together on his or her own? Useful is pretty much what it sounds like, too: does it have a specific and substantial credible (legal) utility?

The requirements of §101 (also found in MPEP §2107), is why a lot of things cannot be patented: perpetual motion machines, resurrection burial tombs, and walking through walls.  There is no credible utility for any of them. They all defy the laws of physics and science as we know them. That doesn’t mean some people won’t try.

First up: the perpetual motion machine, U.S. Published Patent Application No. 2007/0246939. It’s not much to look at, mostly rough drawings of a machine that the applicant claims can run forever. The application was abandoned in 2008 for failure to respond to an Office Action, in which the Examiner predictably cited §101 – invention is inoperative and therefore lacking utility. The examiner then proceeded to point out that the claimed invention violated the laws of physics.

Next, we have the resurrection burial tomb, U.S. Published Patent Application No. 2005/0027316. This one has a four-page long first claim (which I couldn’t follow), but I gather that the method borders on what Dr. Frankenstein used in creating his monster. The application was abandoned for failure to respond to an Office Action/failure to pay filing fee for Appeal. For this particular application, I believe I saw six different rejections, among them, §101/§112: no credible utility/failure to enable use of the invention. Most amusing part? The application claims priority from or is a continuation/continuation-in-part of 13 different applications, all expired or abandoned except one: a microwave hot water boiler heating system. How we got from heaters to resurrection, I’m definitely not sure.

Finally, the walking through walls training system and method, U.S. Published Patent Application No. 2006/0014125. I think the most interesting part of this one is the use of algorithms for storing hyperspace energy. They make up most of the application, really. This application was also abandoned in 2008 for failure to respond to an Office Action. I have to hand it to this Examiner: the claims were rejected on three separate grounds. Rejection 1: 35 U.S.C. §101 and §112 first paragraph: no credible utility and defies the laws of physics/unable to use invention as disclosed. Rejection 2: 35 U.S.C. §112 second paragraph: failure to point out and distinctly claim what the applicant regards as his/her invention (wasn’t specific). And, my favorite, Rejection 3: 35 U.S.C. §103: OBVIOUS.

Okay, to clarify, the training system was rendered obvious in light of a dancing training system. Both systems used printed banners to show where to step next. But, still, I let out a little bit of a guffaw when I read that.

The lesson to be learned here? If your invention stands to redefine life (or death) and/or the laws of physics as we know it, ask a registered attorney or agent first. If you can’t prove your invention works or that those laws are wrong, the registered practitioner can save you a lot of time (and money).