## Facts

- Mitchell R. Swartz filed a patent application claiming a process purportedly producing energy through cold fusion.
- The examiner issued a final rejection of claims 25–48 for (1) lack of utility/operability under 35 U.S.C. § 101 and (2) lack of enablement under 35 U.S.C. § 112 ¶ 1.
- The examiner relied on scientific literature reporting failure to reproduce cold-fusion results and questioning the reliability of claimed excess-energy effects.
- Swartz submitted materials and argument asserting his experiments showed excess energy and that the PTO misunderstood his data.
- The Board of Patent Appeals and Interferences affirmed the rejections, concluding Swartz did not provide sufficient evidence that the claimed process was operative or enabled.
- Swartz appealed to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. § 141.

## Issues

1. Whether substantial evidence supported the Board’s finding that the claimed cold-fusion process lacked utility/operability under 35 U.S.C. § 101.
2. Whether the Board correctly affirmed a lack-of-enablement rejection under 35 U.S.C. § 112 ¶ 1 based on the record concerning operability and disclosure.

## Decision

- The Federal Circuit affirmed the Board’s decision.
- The court held that substantial evidence supported the Board’s finding that Swartz failed to establish operability and practical utility.
- Because inoperability defeats utility, the court concluded the claims also failed enablement, since a skilled artisan cannot be enabled to practice an inoperative invention.
- The court declined to reweigh competing scientific evidence under the substantial-evidence standard applicable to the Board’s factual findings.

## Legal Principles

- Utility under § 101 requires that the claimed invention be operative to achieve useful results; lack of utility is a question of fact.
- Enablement under § 112 ¶ 1 requires disclosure sufficient for a person skilled in the art to practice the invention without undue experimentation; enablement is a legal conclusion grounded in factual determinations.
- Utility and enablement are closely related; a finding that an invention is inoperative (and thus lacks utility) entails a failure of enablement because the specification cannot teach how to use what does not work.
- When the PTO produces evidence casting doubt on asserted utility (including evidence of irreproducibility in the relevant scientific record), the applicant must present credible rebuttal evidence establishing operability.
- On appeal from the Board, the Federal Circuit reviews factual findings for substantial evidence and does not retry technical disputes if the Board’s conclusions are reasonably supported by the record.

## Conclusion

The Federal Circuit upheld the PTO’s rejection of Swartz’s cold-fusion claims, concluding that the record supported findings of inoperability and lack of practical utility, which in turn required affirmance of the enablement rejection because an inoperative invention cannot be enabled.


In re Swartz, 232 F.3d 862 (Fed. Cir. 2000)