COPYRIGHT © 2006 TRUSTEES OF BOSTON UNIVERSITY. THIS VERSION DOES NOT CONTAIN PARAGRAPH/PAGE REFERENCES. PLEASE CONSULT THE PRINT OR ON- LINE DATABASE VERSIONS FOR PROPER CITATION INFORMATION NOTE NANOTECHNOLOGY: WHEN MAKING SOMETHING SMALLER IS NONOBVIOUS R. Scott Roe* TABLE OF CONTENTS I. INTRODUCTION ......................................................................................... II. THE CURRENT LAW................................................................................... A. Changes in Size.................................................................................. B. New and Improved Properties........................................................... C. Overcoming Inherent Anticipation Through Unexpected Results ............................................................................................... III. PROPOSAL.................................................................................................. A. Prior Art Should Not Monopolize Nano-Scaled Counterparts.......... B. Looking to Other Legal Doctrine to Resolve the Issue...................... C. Interpreting the Prior Art’s Claims in Accordance with 35 U.S.C. § 112 ...................................................................................... D. Reevaluating Nonobviousness as Applied to Size-Based Patentability ...................................................................................... IV. RECOMMENDATION: PROPER EXAMINATION OF NANOTECHNOLOGY PATENTS BY THE USPTO.......................................... V. CONCLUSION ............................................................................................. I. INTRODUCTION On December 3, 2003, President Bush signed the 21st Century Nanotechnology Research and Development Act (the “Nanotechnology Act”),1 authorizing approximately $3.7 billion in federal funding for nanotechnology research and development over the next four years.2 The signing of the bill makes nanotechnology the highest federally funded basic science and * J.D. Candidate, Boston University School of Law, 2006; B.S., Mech. Eng., Bucknell University, 2003. 1 15 U.S.C. §§ 7501-09 (2000). 2 15 U.S.C. § 7505 (2000) (authorizing $3,678,863,000 in federal funding over the 2005- 2008 fiscal years). COPYRIGHT © 2006 TRUSTEES OF BOSTON UNIVERSITY. THIS VERSION DOES NOT CONTAIN PARAGRAPH/PAGE REFERENCES. PLEASE CONSULT THE PRINT OR ON- LINE DATABASE VERSIONS FOR PROPER CITATION INFORMATION B.U. J. SCI. & TECH. L. [Vol. 12:1 technology effort since the “Space Race.”3 The Nanotechnology Act defines “nanotechnology” as “the science and technology that will enable one to understand, measure, manipulate, and manufacture at the atomic, molecular, and supramolecular levels.”4 The prefix “nano” in the word nanotechnology means one billionth.5 Nanotechnology thus deals with various structures of matter having dimensions on the order of a billionth of a meter.6 A nanometer is approximately the length of three to six atoms placed side by side;7 or alternatively, the width of a single strand of DNA.8 To put this into perspective, the human hair is roughly between 50,000 and 100,000 nanometers in diameter.9 The Committee on Technology referred to the science of nanotechnology as the next industrial revolution.10 Nanotechnology is not just the study of small things; it is research and development “aimed at creating materials, devices, and systems with fundamentally new molecular organization, properties, and functions.”11 Nanotechnology promises many innovative inventions, including the ability to self-replicate so that machines can assemble identical copies of themselves,12 storing the information which all of mankind has ever recorded on just thirty-five sheets of paper,13 or manufacturing “nanobots” that 3 Charles Choi, Analysis: Nano bill not just a grand gesture; it promises real results (Dec. 5, 2003) (quoting F. Mark Modzelewski, executive director of the NanoBusiness Alliance in New York), available at http://www.nanospace.org/new_page_44.htm, (referring to the competition between the United States and the Soviet Union for space exploration superiority during the 1950s and 1960s). See also Steven Garber & Roger Launius, A Brief History of NASA, National Aeronautics and Space Administration, http://www.hq.nasa.gov/ office/pao/History/factsheet.htm (last visited Nov. 6, 2005). 4 15 U.S.C. § 7509 (2000). 5 THE WORLD BOOK DICTIONARY 1380 (Clarence L. Barnhart & Robert K. Barnhart eds., World Book, Inc. 1992). 6 CHARLES P. POOLE, JR. & FRANK J. OWENS, INTRODUCTION TO NANOTECHNOLOGY 1 (John Wiley & Sons, Inc. 2003). 7 CENTER FOR RESPONSIBLE NANOTECHNOLOGY, C-R-NANOTECHNOLOGY GLOSSARY, available at http://www.crnano.org/crnglossary.htm (last visited Nov. 6, 2005). 8 Id. 9 Id. 10 INTERAGENCY WORKING GROUP ON NANOSCIENCE, ENG’G AND TECH., COMM. ON TECH., National Nanotechnology Initiative: Leading to the Next Industrial Revolution 16 (Feb. 2000) http://www.ostp.gov/NSTC/html/iwgn/iwgn.fy01budsuppl/nni.pdf [hereinafter Nanotechnology Initiative Report]. 11 15 U.S.C. § 7509 (2000) (defining nanotechnology within the Nanotechnology Act). 12 See K. Eric Drexler, Engines of Creation, The Coming Era of Nanotechnology 19 (Anchor Books 1986), available at http://www.foresight.org/EOC/Engines.pdf. 13 Richard P. Feynman, There’s Plenty of Room at the Bottom: An Invitation to Enter a New Field of Physics, Address at the Annual Meeting of the American Physical Society at the California Institute of Technology (Dec. 29, 1959), available at http://www.zyvex.com/ COPYRIGHT © 2006 TRUSTEES OF BOSTON UNIVERSITY. THIS VERSION DOES NOT CONTAIN PARAGRAPH/PAGE REFERENCES. PLEASE CONSULT THE PRINT OR ON- LINE DATABASE VERSIONS FOR PROPER CITATION INFORMATION 2006] NANOTECHNOLOGY selectively infiltrate and target cancer cells or viruses within the human body, selectively incapacitating the targets with therapeutics stored within the nanodevice.14 Nanoscience will inevitably “change the nature of almost every human- made object in the next century” and will redefine our interaction with the world around us.15 These potentially revolutionary innovations explain why scientists and industry leaders associate nanotechnology with the next industrial revolution, and not just another step in technological progress. According to Mike Honda, California House Representative and co-drafter of the original Nanotechnology Act, “the worldwide market for nanotechnology products and services could reach $1 trillion by 2015.”16 For the first time in recent history, however, the United States is not at the forefront of this emerging technological field.17 As of 2001, over thirty countries had already initiated their own national nanotechnology programs.18 The nanotechnology race is thus well underway, and the first to secure the relevant intellectual property rights will be in the best position to reap the greatest rewards. Nanotechnology-related patents are not expected to encounter the wholesale confusion associated with the early prosecution of claims for business methods,19 biotechnology,20 and computer software technology,21 which the U.S. Patent and Trademark Office (the “USPTO”) initially held as non- patentable subject matter.22 With respect to nanotechnology, patent nanotech/feynman.html. 14 C. A. Haberzettl, Nanomedicine: Destination or Journey?, 13 NANOTECHNOLOGY R9, R9 (2002). 15 See Nanotechnology Initiative Report, supra note 10, at 16; see also David Pogue, Explaining Nanotechnology, N.Y. TIMES (Feb. 3, 2005) (quoting Steve Jurvetson, managing director of a Silicon Valley venture-capital firm that invests heavily in nanotech companies, as saying that nanotechnology will be more important than the Industrial Revolution itself), available at http://www.nytimes.com/2005/02/03/technology/circuits/03POGUE- EMAIL.html. 16 See R. Colin Johnson, Nanotech R&D Act Becomes Law, EE TIMES (Dec. 3, 2003), available at http://www.eetimes.com/story/OEG20031203S0025. 17 See Pogue, supra note 15 (noting that the European Union and Japan have already invested more in the development of nanotechnology than the United States). 18 M. C. ROCO, International Strategy for Nanotechnology Research and Development, NATI’L SCI. FOUND., Aug. 28, 2001, at 1. 19 Iona Niven Kaiser, Nanotechnology Patents: Will Small-Scale Science Pose Big Challenges for Applicants and the Patent Office?, PATENT STRATEGY & MGMT., July 6, 2004, at 1. 20 See id. 21See Barry Newberger, Intellectual Property and Nanotechnology, 11 TEX. INTELL. PROP. L.J. 649, 654 (2003) (presentation transcript). 22 See Kaiser, supra note 19, at 1; see also Newberger, supra note 21, at 654. COPYRIGHT © 2006 TRUSTEES OF BOSTON UNIVERSITY. THIS VERSION DOES NOT CONTAIN PARAGRAPH/PAGE REFERENCES. PLEASE CONSULT THE PRINT OR ON- LINE DATABASE VERSIONS FOR PROPER CITATION INFORMATION B.U. J. SCI. & TECH. L. [Vol. 12:1 applications concern “products in the traditional sense, items of manufacture, and processes of manufacturing nanotech-based materials.”23 Indeed, the fundamental science of nanotechnology embraces the combined elements of well-developed arts, such as chemistry, physics, electronics, material science, and mechanical engineering, to which nanotechnology seems “readily integrable into the scope of traditional patent protection.”24 It is this view of nanotechnology that has led some to conclude that there are no doctrinal issues that need to be worked through.25 Nevertheless, the prosecution of nanotechnology-related patent claims is sure to raise unique problems.26 As technology continues to become