Careers

Diversity

With 18 offices, from New York to Los Angeles and Seattle to Orlando, we live and work in communities all over the U.S., collaborating across locations, disciplines and even borders. Our experienced, highly ranked lawyers serve businesses wherever they are and wherever they want to go.

Offices

About Us

Pages

Professionals

Thought leadership: blogs, podcasts, videos, publications, events and news

Insights

Practices & Industries

Pro Bono

Am Law 100 firm with practices in Business, Digital Assets and Data Management, Intellectual Property, Labor & Employment, Litigation and Tax.

Home | BakerHostetler

Blockchain Monitor

Blockchain Monitor - Planet earth in outer space with network connection and sunlight.

Weekly Blockchain Blog – April 6, 2026

2026 BHIPP - BakerHostetler IP Perspective

When Creativity Meets Code: Copyright and Trademark Troubles with AI-Generated Material

IP Intelligence Report

Science Fiction as Prior Art?

The Federal Election Commission’s Interpretive Role After Loper Bright (Harvard Journal of Law and Public Policy)

Some inventors find their inventive spark through science fiction. Tasers, for example, were inspired by (and named after) the 1911 novel Tom Swift and His Electric Rifle.<a id="_ftnref1" href="#_ftn1">[1]</a> Likewise, Motorola’s early cellphones were heavily influenced by the communicators in Star Trek.<a id="_ftnref2" href="#_ftn2">[2]</a> Hugo Gernsback, the author of countless sci-fi classics and a prolific patent holder himself, suggested that works of science fiction function like patent disclosures.<a id="_ftnref3" href="#_ftn3">[3]</a> Gernsback even asked the question that naturally follows: Can science fiction be used as prior art during examination?

core/paragraph

In theory, the answer is yes. Under 35 U.S.C. § 102 (§ 102), science fiction may qualify as prior art if it is enabling.<a id="_ftnref4" href="#_ftn4">[4]</a> Under 35 U.S.C. § 103 (§ 103), even nonenabling science fiction may be relevant as part of an obviousness analysis when considered alongside other teachings available to a person of ordinary skill in the art.<a id="_ftnref5" href="#_ftn5">[5]</a> In practice, however, science fiction references have rarely been seriously invoked, and there is no body of judicial precedent or PTAB authority addressing the issue. Still, science fiction presents patent practitioners with a category of references that is theoretically broad but practically uncommon.

Science fiction may qualify as prior art under § 102, but it must be sufficiently enabling.<a href="#_ftn6" id="_ftnref6">[6]</a> A reference need not describe a physically built embodiment to be cited against a claim.<a href="#_ftn7" id="_ftnref7">[7]</a> Examiners may rely on references without first proving enablement, and Applicants then bear the burden of showing that the disclosure is nonenabling.<a href="#_ftn8" id="_ftnref8">[8]</a> Accordingly, much science fiction is not suitable under § 102 because it often omits operative technical detail or relies on fantastical elements that would not enable a real-world implementation.

Still, some descriptions are concrete enough to matter. For example, the patent application for the waterbed was famously rejected because it was anticipated by Robert Heinlein’s description of a “hydraulic bed” in Stranger in a Strange Land.<a id="_ftnref9" href="#_ftn9">[9]</a> Heinlein’s hydraulic bed included a flexible cover skin, a way to fill the skin, and a way to shut off water flow.<a id="_ftnref10" href="#_ftn10">[10]</a> These details were sufficient to anticipate one of the most distinctive design trends of the 1970s.

Science fiction is particularly interesting under the obviousness analysis because, unlike § 102, § 103 does not have an explicit enablement requirement.<a href="#_ftn11" id="_ftnref11">[11]</a> In particular, a reference used in an obviousness rejection need not, by itself, enable the entire claimed invention, so long as the combined teachings relied upon by the Examiner would have rendered the claim obvious to a person of ordinary skill in the art.<a href="#_ftn12" id="_ftnref12">[12]</a> Even so, the body of prior art as a whole must be enabling for a properly supported § 103 rejection.<a href="#_ftn13" id="_ftnref13">[13]</a> In other words, an Examiner may use a science-fiction invention, combined with real enabling references, to support an obviousness rejection.

Consider the tricorder.<a id="_ftnref14" href="#_ftn14">[14]</a> In Star Trek, a tricorder is a handheld device used to scan, analyze, and record environmental, technical, and medical data.<a id="_ftnref15" href="#_ftn15">[15]</a> A combination of real-life inventions can already approximate a tricorder: handheld computers, wearable biometric sensors, LiDAR sensors, portable EKGs, metal detectors, learning algorithms, and pulse oximeters. An Examiner could reject an application for a real-life tricorder by combining these inventions with an episode of Star Trek. But that does not mean the science fiction itself meaningfully teaches how to arrive at the claimed invention. In many cases, the science-fiction reference may do little more than describe the desired end state, leaving the Examiner to rely on real-world references for the actual technical path.

Practitioners can respond to such rejections in different ways. First, Applicants facing science-fiction rejections can rebut a § 102 rejection by demonstrating lack of enablement.<a href="#_ftn16" id="_ftnref16">[16]</a> Courts have repeatedly emphasized that anticipation requires an enabling disclosure, so Applicants should point out fantastical or implausible aspects. For example, Star Trek spaceships are powered by fictional “dilithium crystals.” Accordingly, a practitioner faced with a Star Trek-based rejection should investigate whether “dilithium crystals” are used to fill the technical gaps within the reference.

Second, several obviousness defenses apply with particular force to science-fiction references. Nonanalogous art cannot support an obviousness rejection if the reference lies outside the inventor’s field of endeavor or is not reasonably pertinent to the problem addressed by the invention.<a href="#_ftn17" id="_ftnref17">[17]</a> A reasonably pertinent reference is one that an ordinarily skilled artisan would have consulted in seeking a solution to the relevant problem.<a href="#_ftn18" id="_ftnref18">[18]</a> Applicants may therefore argue that science fiction is nonanalogous art where its entertainment-oriented context and content make it unlikely that a person of ordinary skill in the art would have consulted it in solving the relevant technical problem.<a href="#_ftn19" id="_ftnref19">[19]</a>

Finally, science fiction often imagines a final device without providing the needed intermediate steps to get there. This leaves science-fiction rejections vulnerable to hindsight reconstruction. Hindsight reconstruction is the impermissible practice of using the claimed invention as a template to assemble isolated pieces of prior art after the fact.<a id="_ftnref20" href="#_ftn20">[20]</a> Thus, when a science-fiction reference merely proposes a device without workable technical detail, Applicants may argue that an Examiner is trying to establish obviousness through hindsight reconstruction.<a id="_ftnref21" href="#_ftn21">[21]</a> These doctrines give Applicants several tools with which to respond to science-fiction rejections even though no authority squarely addresses science fiction itself.

Science fiction occupies an uneasy place in prior art. Gernsback was not entirely wrong to suggest that science-fiction works can function like patent disclosures. If enabling, science fiction may qualify as prior art under § 102, and even when nonenabling, may still inform obviousness under § 103. Yet in practice, doctrines like enablement, analogous art, and the ban on hindsight reconstruction could limit their force. Those constraints give practitioners real tools to respond to science-fiction rejections even as courts and the PTAB remain largely silent. With AI now making it easier to produce detailed, plausible, and technically rich fictional disclosures, however, the problem Gernsback anticipated could become harder to ignore.

Law Clerk Gwen Logsdon co-authored this blog post.

core/separator

<a id="_ftn1" href="#_ftnref1">[1]</a> Kiona N. Smith, Why Is It Called a Taser?, Forbes (Apr. 6, 2019), <a href="https://www.forbes.com/sites/kionasmith/2019/04/06/why-is-it-called-a-taser" target="_blank" rel="noreferrer noopener">https://www.forbes.com/sites/kionasmith/2019/04/06/why-is-it-called-a-taser</a> (last visited Mar. 13, 2026).

<a id="_ftn2" href="#_ftnref2">[2]</a> HandelProductions, How William Shatner Changed the World – Martin Cooper, mobile phone Inventor, YouTube (Dec. 8, 2009), <a href="https://youtu.be/wN-_VA5HFwM" target="_blank" rel="noreferrer noopener">https://youtu.be/wN-_VA5HFwM</a>.

<a id="_ftn3" href="#_ftnref3">[3]</a> Camilla A. Hrdy &amp; Daniel H. Brean, Testing the Gernsback Hypothesis: Science Fiction’s Influence on Patents and Innovation, 63 Hous. L. Rev. 359, 361 (2025), <a href="https://houstonlawreview.org/article/154446-testing-the-gernsback-hypothesis-science-fiction-s-influence-on-patents-and-innovation" target="_blank" rel="noreferrer noopener">https://houstonlawreview.org/article/154446-testing-the-gernsback-hypothesis-science-fiction-s-influence-on-patents-and-innovation</a>.

<a href="#_ftnref4" id="_ftn4">[4]</a> In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (“Accordingly, even if the claimed invention is disclosed in a printed publication, that disclosure will not suffice as prior art if it was not enabling.”).

<a href="#_ftnref5" id="_ftn5">[5]</a> Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (“While a reference must enable someone to practice the invention in order to anticipate under § 102(b), a non-enabling reference may qualify as prior art for the purpose of determining obviousness under § 103.”).

<a href="#_ftnref6" id="_ftn6">[6]</a> See Donohue, 766 F.2d at 534.

<a href="#_ftnref7" id="_ftn7">[7]</a> Id.

<a href="#_ftnref8" id="_ftn8">[8]</a> In re Antor Media Corp., 689 F.3d 1282, 1288–1289 (Fed. Cir. 2012) (“As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.”).

<a id="_ftn9" href="#_ftnref9">[9]</a> Daedalus Howell, Wet Dreams: Who Invented the Water Bed?, Daedalus Howell &amp; Co. (March 27, 2013), <a href="https://dhowell.com/blog/who-invented-water-bed/#:~:text=%E2%80%9CMy%20contribution%20was%20the%20modern,Hall%20eventually%20received%20his%20reward" target="_blank" rel="noreferrer noopener">https://dhowell.com/blog/who-invented-water-bed/#:~:text=%E2%80%9CMy%20contribution%20was%20the%20modern,Hall%20eventually%20received%20his%20reward</a> (last visited April 1, 2026).

<a href="#_ftnref10" id="_ftn10">[10]</a> Robert A. Heinlein, Stranger in a Strange Land 9, 14 (Ace Premium ed. 2018) (“The patient floated in the flexible skin of the hydraulic bed.”) and (“‘Here, help me lift him into the bed.’ ‘No—fill it first.’ Frame did so, cutting off the flow when the cover skin floated six inches from the top.”).

<a href="#_ftnref11" id="_ftn11">[11]</a> 35 U.S.C. § 103.

<a href="#_ftnref12" id="_ftn12">[12]</a> Raytheon Techs. Corp. v. Gen. Elec. Co., 993 F.3d 1374, 1380 (Fed. Cir. 2021) (“In the absence of such other supporting evidence to enable a skilled artisan to make the claimed invention, a standalone § 103 reference must enable the portions of its disclosure being relied upon.”).

<a href="#_ftnref13" id="_ftn13">[13]</a> See Raytheon, 993 F.3d at 1379.

<a href="#_ftnref14" id="_ftn14">[14]</a> “Spectre of the Gun,” Star Trek: The Original Series (NBC television broadcast Oct. 25, 1968).

<a href="#_ftnref15" id="_ftn15">[15]</a> Id.

<a href="#_ftnref16" id="_ftn16">[16]</a> See Donohue, 766 F.2d at 533–34.

<a href="#_ftnref17" id="_ftn17">[17]</a> See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)).

<a href="#_ftnref18" id="_ftn18">[18]</a> See Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1382 (Fed. Cir. 2019) (citing In re GPAC Inc., 57 F.3d 1573, 1589 (Fed. Cir. 1995)).

<a id="_ftn19" href="#_ftnref19">[19]</a> See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“It has not been shown that a person of ordinary skill, seeking to solve a problem of fastening a hose clamp, would reasonably be expected or motivated to look to fasteners for garments.”). See also In re Clay, 966 F.2d 656, 660 (Fed. Cir. 1992) (“A person having ordinary skill in the art would not reasonably have expected to solve the problem of dead volume in tanks for storing refined petroleum by considering a reference dealing with plugging underground formation anomalies.”) and In re Klein, 647 F.3d 1343, 1350–1351 (Fed. Cir. 2011) (“An inventor considering the problem of making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals, would not have been motived to consider [references to statement-card receptacles, tool trays, cabinet drawers, and blood plasma bottles] when making this invention.”).

<a href="#_ftnref20" id="_ftn20">[20]</a> See W.L. Gore &amp; Assocs. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007).

<a href="#_ftnref21" id="_ftn21">[21]</a> See Leo Pharm. Prods., Ltd. v. Kappos, 726 F.3d 1346, 1357–58 (Fed. Cir. 2013) (rejecting a “hindsight-guided combination of elements” where the PTAB selected a vitamin D analog from one reference and inserted it into the claimed steroid composition). See also In re Dembiczak, 175 F.3d 994, 999–1000 (Fed. Cir. 1999) (rejecting obviousness where the PTAB used hindsight to combine ordinary trash bags with jack-o’-lantern craft references to reconstruct the claimed pumpkin trash bag) and In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (rejecting obviousness where the examiner used hindsight reconstruction to piece together a claimed landscape edging strip from isolated prior-art disclosures, treating the invention itself as a “template” for the combination).

Related Services

Featured Insights