Patent-Conscious Preparation for a Summer at the Beach

Guest Post by Marketa Trimble

As the America Invents Act slowly fades as a cocktail party topic, your conversation might gravitate to your upcoming summer vacation at the beach. Don’t worry, this conversation will present opportunities for patent-spirited discussions as well.

Last month, while preparing a presentation on U.S. IP law for a class of fashion design and communications students in Milan, Italy, I came across a patent that changed my perspective on a summer beach vacation. U.S. patent 8,371,043, applied for on August 1, 2008 (two provisional applications were filed earlier), and issued on February 12, 2013, concerns “a molded shoe featuring a 3 dimensional figure (e.g., an animal or character)” that is perfect footwear for any child’s day of fun at the beach.

I wanted to include a utility patent in a series of examples of how individual types of IP rights under U.S. law, which is often presented as deficient in its limited protection of fashion, might provide some protection to some aspects of fashion. However, this particular utility patent was not a good introduction to U.S. patent law for the students – it certainly was not suitable to explain the “law on the books,” although it was appropriate to illustrate the “law in action.” By the point in the semester when I spoke to the class, the students had a pretty good idea of IP law as it exists in European countries, and they seemed to be eager to learn about U.S. IP law. They took copious notes when I talked about section 101 and the conditions for patentability under U.S. law. But when I showed the slide with the molded shoe patent the pens went down and the eyebrows went up.

U.S. patent 8,371,043 covers a shoe that

“has a sole having a bottom surface that comprises a series of projections and recesses that form a print for an animal or character, to thereby obtain an imprinting surface; and an upper, attached to the sole, having an outer surface that comprises a series of projections and recesses that form a three dimensional figure (e.g., an animal figure or a character figure). The sole and upper are substantially formed from molded plastic; the projections and recesses of the animal imprinting surface allow one wearing the shoe to make imprints on a soft surface, and the three dimensional figure on the outer surface of the upper relates to the print of the imprinting surface.” (Abstract that substantially tracks Claim 1)

It was telling that the students, on seeing the drawings of the invention, almost uniformly exclaimed: “Crocs!” Indeed, to an average consumer the shoe in the drawings might resemble Crocs, which have been on the market since about 2002, and it might surprise the public that the assignee of the patent is not Crocs, Inc., but Polliwalks, Inc. The idea of putting the face of an animal or a character on the tip of a shoe and a corresponding surface print on the bottom of the shoe might have been non-obvious to a PHOSITA but did not seem non-obvious to the students, who knew of various fabric shoes featuring animals and characters – shoes that very likely had preceded the invention in the patent. Nor did having a sole that makes an imprint corresponding to the shape of the sole impress the students as non-obvious. In the end the class agreed that issues of patentability are complex and that the students were not likely to be in a position to second-guess a complicated assessment of non-obviousness.

What was perhaps more troublesome about the patent, though, was that it extends to “[a] method of making an animal imprint on a surface with a molded shoe” (Claim 11). If you have any doubts about the link to a day at the beach you should know that the surface in the patent is identified as “a soft surface that includes dirt, mud, sand or clay” (Claim 12). With the exception of sale representatives and designers of competitor-infringers who might engage in making imprints with patent infringing products, the only other people likely to infringe the method claims appear to be consumers using patent infringing products – children who, as the patent applicant assures us, “enjoy exploring and learning about new things” (as written in the Background of the Invention). Apparently, these “things” will now include patent infringement.

Of course, your children will not infringe the method claims if you purchase a pair of the shoes that are sold by the patent owner or with the patent owner’s consent – we know that the patent owner’s right to control the disposition of the shoe is exhausted upon the first authorized sale of the shoe, and that the patent owner’s right to control the use of the patented method that is substantially embodied in the product will be exhausted upon the first authorized sale of the product as well. But if you purchase “knock-offs” of the shoes or other shoes that infringe the patent, your child might end up being a patent infringer.

The Milan students wondered about the utility of patenting a method that is likely to be infringed primarily – if not only – by consumers. Does the patent owner really plan to sue consumers for patent infringement when consumers walk on U.S. beaches? Is that an ideal public relations strategy? Are the method claims really just hooks for potential indirect infringement claims? Or did the applicant simply apply for whatever protection that was available?

U.S. patent 8,371,043 was certainly issued in time to be a conversation topic before the upcoming summer at the beach. It provides excellent material for a discussion of U.S. IP protection for fashion and the value of U.S. patents. It also allows you to revive the America Invents Act as cocktail party conversation and point out that the AIA, while making some revolutionary changes to U.S. patent law, certainly does not solve all of the issues of the U.S. patent system.

85 thoughts on “Patent-Conscious Preparation for a Summer at the Beach

  1. 84

    Wow.

    Claim 1. A shoe that comprises: a. a sole that includes a bottom surface; and b. an upper having sides extending from the sole and a toe portion, wherein the sides and the toe portion comprise an outer surface that comprises a series of projections and recesses that form a three-dimensional animal or character figure with one or more features; wherein the sole, and the upper which includes the sides, toe portion and the three-dimensional animal or character figure having the one or more features are a single piece substantially formed from a molded material.

    It seems the inventors should pursue design patent protection, if they haven’t already.

  2. 82

    Spend less time looking for cute clips on Youtube and more time on substantive matters (that way you might actually be able to supply answers, or [gasp] be able to take positions in the first instance in accord with the law).

    Thanks Malcolm.

  3. 79

    “Oh, you’re complaining about poor search quality. Why didn’t you say so?

    Like I’ve been saying all along, that’s not a piecemeal examination issue.”

    So if poor search quality is not a piecemeal examination issue, please explain why MPEP 707.07(g), which explains what piecemeal examination is and how to avoid it, directs examiners to MPEP 904.03, which is “Conducting the search”.

    No wonder you’re not getting it.

  4. 78

    That makes one peson who claims he cannot understand the plain language already being used.

    That person is IANANE.

    What a surprise – indeed.

  5. 77

    AAA JJ,

    There are none so blind as those who wish not to see.

    IANAE is purposefully running full force with his eyes tightly clenched closed.

    And yet he keeps wondering why he runs into the wall.

  6. 75

    Please do feel free to enlighten us all as to what piecemail examination is/entails/etc. I’m sure your answer will be quite fascinating.

  7. 74

    Poor search quality is not a piecemeal examination issue?

    What color is the sky in your world?

  8. 73

    That “oops, that’s not good” part is the examiner figuring out that the reference is not the best reference.

    Oh, you’re complaining about poor search quality. Why didn’t you say so?

    Like I’ve been saying all along, that’s not a piecemeal examination issue.

  9. 72

    I’m looking forward to hearing about that “coke party” that you, NWPA, and anon will be having. Please do keep us posted.

  10. 71

    Thanks. But I don’t drink coke. I need something a wee bit stronger to deal with the deliberate obtuseness of Prof. IANAE.

  11. 70

    “That’s exactly what happened in anon’s scenario. The examiner picked the best art he had for the claims, and presented a 102 rejection.”

    Uhm, no. Here’s anon’s scenario:

    “Hm, 102 – and stop.

    oops, that’s not good.

    Restart.

    102 – and stop.

    oops, that’s not good.

    Restart.”

    That “oops, that’s not good” part is the examiner figuring out that the reference is not the best reference. That “stop” part is the examiner discontinuing the search as soon as he/she finds some reference, most likely through a text search, that happens to have some of the same words as claim 1 of the application being examined.

    “Neither of you has explained how the examiner could have ‘correctly’ handled the situation, other than by never issuing 102 rejections.”

    Sure I have. Several times now. Follow the instructions in MPEP 707.07(g) and 904.03.

  12. 69

    I’ll buy you a thousand cases of coke

    That makes three people who claim to understand the issue here, and are willing to do pretty much anything other than briefly explain it in plain language.

    What a surprise.

  13. 67

    I’ll buy you a thousand cases of coke if you can get IANAE’s motor running a bit faster. He seems to be stuck at idle.

  14. 66

    And if there are multiple references that may be considered anticipatory, the examiner is not supposed to reject over all of them, only the best,

    That’s exactly what happened in anon’s scenario. The examiner picked the best art he had for the claims, and presented a 102 rejection.

    Neither of you has explained how the examiner could have “correctly” handled the situation, other than by never issuing 102 rejections.

    For that matter, neither of you has explained what the examiner actually did wrong in anon’s scenario. But I’m sure if he repeats himself often enough, it will all magically make sense.

  15. 65

    Thanks AAA JJ

    (you still get just a coke and not the case as IANAE purposeful fog remains)

    A for effort, though.

  16. 64

    “That’s not the least bit relevant to anon’s fact scenario.”

    It’s not?

    Here’s a part of MPEP 707.07(g) that I didn’t quote:

    “The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references. (See MPEP § 904.03.)”

    Here’s MPEP 904.03 for you (the whole enchilada):

    “It is a prerequisite to a speedy and just determination of the issues involved in the examination of an application that a careful and comprehensive search, commensurate with the limitations appearing in the most detailed claims in the case, be made in preparing the first action on the merits so that the second action on the merits can be made final or the application allowed with no further searching other than to update the original search. It is normally not enough that references be selected to meet only the terms of the claims alone, especially if only broad claims are presented; but the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment. Applicants can facilitate a complete search by including, at the time of filing, claims varying from the broadest to which they believe they are entitled to the most detailed that they would be willing to accept.

    In doing a complete search, the examiner should find and cite references that, while not needed for treating the claims, would be useful for forestalling the presentation of claims to other subject matter regarded by applicant as his or her invention, by showing that this other subject matter is old or obvious.

    In selecting the references to be cited, the examiner should carefully compare the references with one another and with the applicant’s disclosure to avoid the citation of an unnecessary number. The examiner is not called upon to cite all references that may be available, but only the ‘best.’ (37 CFR 1.104(c).) Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided. The examiner must fully consider all the prior art references cited in the application, including those cited by the applicant in a properly submitted Information Disclosure Statement.

    The best reference should always be the one used. Sometimes the best reference will have a publication date less than a year prior to the application filing date, hence it will be open to being overcome under 37 CFR 1.131. In these cases, if a second reference exists which cannot be so overcome and which, though inferior, is an adequate basis for rejection, the claims should be additionally rejected thereon.

    In all references considered, including nonpatent, foreign patents, and domestic patents, the examiner should study the specification or description sufficiently to determine the full value of the reference disclosure relative to the claimed or claimable subject matter.”

    So when you read MPEP 707.07(g) and 904.03 together, it’s pretty clear that the PTO’s instructions to examiners are not to simply stop searching and write up an anticipation rejection the instant the examiner finds a reference that can be used to rejec the examiner’s BUI of the claim. Because doing that leads exactly to anon’s fact pattern.

    The examiner is supposed to search the disclosure and the claims. And if there are multiple references that may be considered anticipatory, the examiner is not supposed to reject over all of them, only the best, i.e. the references that would actually anticipate a properly BRI’d claim, not whichever ones merely meet the terms of the claims alone.

    So when 6tard posts, “…under the current office search philosophy which states quite clearly that if you’ve found a 102 for the whole thing then you can safely end the search. If you’re using an absurd interpretation, find a 102, and end your search, then they either amend to end the absurd interpretation or argue persuasively against it, then all of a sudden the search is back on” he is dead wrong. That is not PTO policy. In fact, it is the exact opposite of the PTO policy set forth in MPEP 707.07(g) and 904.03.

  17. 63

    I understand it perfectly.

    So too, does AAA JJ.

    It is (still) a “you” problem here IANAE.

    Thanks

  18. 62

    Here’s MPEP 707.07(g) for you:

    That’s not the least bit relevant to anon’s fact scenario. Which I still don’t see the inherent problem with.

    Actually, it pretty much says to do the very thing anon is complaining of – right after it says piecemeal examination is bad. So maybe one of you can make sense of what anon is babbling about?

  19. 61

    That should be “It’s not” and the PTO’s directive that piecemeal “examination” should be avoided as much as possible.

  20. 60

    …and you are laughing…

    …why?

    “gramps” – LOL – an age-related attempt at a put down with zero meaning. Yet another vacuous Malcolm post.

    Attaboy.

  21. 59

    “That’s not what ‘piecemeal examination’ means, though.”

    It’s not.

    Here’s MPEP 707.07(g) for you:

    “Piecemeal examination should be avoided as much as possible. … In cases where there exists a sound rejection on the basis of prior art which discloses the ‘heart’ of the invention (as distinguished from prior art which merely meets the terms of the claims), secondary rejections on minor technical grounds should ordinarily not be made. Certain technical rejections (e.g. negative limitations, indefiniteness) should not be made where the examiner, recognizing the limitations of the English language, is not aware of an improved mode of definition.”

    Seems pretty clear to me that the PTO’s directive that “piecemeal prosecution should be avoided as much as possible” is an instruction to the examining corps, not to applicants. And it’s an instruction not to do the nonsense that 6tard describes as the “situation on the ground” over there at the PTO.

    Do I need to copy and paste MPEP 904+ for you, or can you look it up on the interwebz by yourself?

  22. 58

    trollboy: Not to be too picky (this is a blog), but what were you trying to say here?

    Never mind, gramps.

    ROTFLMAO

  23. 57

    Keep on reading until it dawns on you what the discussion entails.

    Thanks. It makes me feel better, knowing that you don’t understand your point either.

  24. 56

    LOL – What does it mean.

    In English, or whatever otherworldly language you care to use to give an answer?

    (careful – you know your tendency to fry your dogmas when you venture into giving answers)

    Make sure your answer ties into Ned’s pet ‘action of a machine’ anti-patentability and the (repeated) attempts to tie such into mental-process anti-patent stances – and you can even try to explain why Ned HAS NEVER addressed this concept that you are going to put in English.

    Self-defeat away Malcolm.

  25. 55

    will have a sad

    Not to be too picky (this is a blog), but what were you trying to say here?

    Should I lob the stones back up to you in your glass house?

  26. 54

    Do you know what anthropomorphication means?

    I know what it means in English. Maybe you can tell us what it means in your special troll language, Humpty.

  27. 53

    LOL – I owe you a coke, AAA JJ.

    (I’ll buy you a case if you can make a dent in IANAE’s density)

  28. 52

    Keep on reading until it dawns on you what the discussion entails.

    It is already here in plain English – (the language is not the issue – it is a ‘you’ issue).

    (hint: pay attention to what AAA JJ adds)

  29. 51

    is change of material (i.e from sewn to molded) enough to be considered novel or unanticipated?

    I assume you mean “non-obvious” rarther than “unanticipated”. In any event, this question is far too difficult for anyone except a Federal Circuit judge to even pretend to be able to answer. Besides, anon/trollboy will have a sad if we try.

  30. 50

    The problem is: 1) examiners don’ read the application to gain an understanding of the claimed inventions; and 2) do a lame word search and then make up whatever silly nonsense they need to make up to reject the claim with the search results they get.

    That’s not what “piecemeal examination” means, though.

  31. 49

    “Now you can go read the one where I ask you to explain what the problem is…”

    The problem has been discussed ad nauseum on this site and others. The problem is: 1) examiners don’ read the application to gain an understanding of the claimed inventions; and 2) do a lame word search and then make up whatever silly nonsense they need to make up to reject the claim with the search results they get.

    But you already knew that.

    “…and how exactly you think examiners should do things differently.”

    This has also been discussed ad nauseum on this site and others. Examiners should search in accordance with PTO policy set forth in MPEP 904+.

    But you already knew that too.

    Don’t you have some exam questions to make up or something better to do than waste everybody’s time with your inane posts?

  32. 48

    Try actually reading the comments already on the thread before asking for another.

    I’ve read that one twice now. Now you can go read the one where I ask you to explain what the problem is, and how exactly you think examiners should do things differently.

    If your complaint is “my applications keep getting rejected under 102”, that’s not inherently an examination problem, and it’s definitely not a piecemeal examination problem.

    So let’s go again. Try to explain your point in plain English.

  33. 47

    Hm, 102 – and stop.

    oops, that’s not good.

    Restart.

    102 – and stop.

    oops, that’s not good.

    Restart.

    Another C@lvinball face sp1ke for you.

    Try actually reading the comments already on the thread before asking for another.

  34. 46

    You kind of missed that next important step.

    Explain the problem, then. And what the examiner is supposed to do to fix it.

  35. 44

    Accord.

    (but I don’t blame the examiners per se – human nature is that you get what you measure)

  36. 43

    Hm, 102 – and stop.

    Yup. A 102 for all the claims is enough, isn’t it? How many 102 rejections do you think the examiner should present before you consider that he’s done his job?

  37. 42

    “You still presume that the office’s search policy is to search the entire thing, no matter the construction, or encompassing all constructions possible under BRI is mistaken.”

    That is the Office’s policy. See MPEP 904+.

    “That is simply not the situation on the ground no matter how much you desire it to be.”

    Every practitioner and applicant is aware that the “situation on the ground” is that examiner’s regard grubbin’ counts to be their supreme duty, PTO policy be d#mned. That doesn’t mean we have to like it.

  38. 41

    Hm, 102 – and stop.

    oops, that’s not good.

    Restart.

    102 – and stop.

    oops, that’s not good.

    Restart.

    Another C@lvinball face sp1ke for you.

  39. 40

    It’s called piecemeal prosecution

    Yup, that’s what it’s called, all right. Wait, no, it’s the opposite of that.

  40. 39

    Although I am surprised that there hasn’t been years of duck faced and web footed shoes printing the sands of American beaches, this idea and implementation still passes my gut test, despite my bias of actually using my shoe soles to create at least one art project. These claims seem to be well crafted to avoid conflict with, for instance, long existent PUMA shoe designs. PUMA often over time has molded their logo animal character on the sole and embraced sole patterns as stamps/molds (the PUMA logotype molded backwards on the sole so it prints correctly).

    You are the experts, is change of material (i.e from sewn to molded) enough to be considered novel or unanticipated? Is this the only distinction from ubiquitous bunny slippers in claim 1. (Unless “a sole that includes a bottom surface” is something special).

    This one makes sense if we accept the ornamental functions, theorize the independent claims and consider that claim 13 is just 1 and 3 reclaimed. We can torture the language to describe (said) ornamental elements (the animal species, facial features, skin teeth etc) as projections and recesses, but will I really infringe claim 11 next Halloween if I track wet wolfman paw prints on the sidewalk?

    Although it is arguably contrived, the embodied product still seems novel enough for me, the extraordinary designer, but it is another force fit into the system.

  41. 38

    that if you’ve found a 102 for the whole thing then you can safely end the search.

    That’s a different problem and exists regardless of BRI.

    It’s called piecemeal prosecution and has nothing to do with the current conversation.

    But thanks anyway, 6.

  42. 37

    “Isn’t the second one that you are thinking of necessarily a subset of the first? Isn’t that the justification for BRI in the first instance?”

    Not under the current office search philosophy which states quite clearly that if you’ve found a 102 for the whole thing then you can safely end the search. If you’re using an absurd interpretation, find a 102, and end your search, then they either amend to end the absurd interpretation or argue persuasively against it, then all of a sudden the search is back on. I would think this is what ned is referring to.

    You still presume that the office’s search policy is to search the entire thing, no matter the construction, or encompassing all constructions possible under BRI is mistaken. That is simply not the situation on the ground no matter how much you desire it to be.

  43. 36

    Ned,

    Whether absurd or not is quite beside the point I make above. Your answer is no responsive to the point that any ‘second search’ is necessarily a subset of the first search.

    So (sigh) again,

    Why does BRI assume two searches?

    Isn’t the second one that you are thinking of necessarily a subset of the first? Isn’t that the justification for BRI in the first instance?

  44. 35

    Anon, BRI assumes ordinary meaning for the words of the claim. This can lead to at time absurd constructions and absurd searches. If you haven't experienced this yourself, I think you must not be a patent prosecutor like most of us here.

  45. 34

    101, what is prohibited by the "dissection" doctrine is the ignoring of old elements in the claims may, as in Diehr, be directed to eligible subject matter and into which the ineligible subject matter is integrated.

  46. 33

    Why does BRI assume two searches?

    Isn’t the second one that you are thinking of necessarily a subset of the first? Isn’t that the justification for BRI in the first instance?

  47. 32

    The Adventure of the Priory School – Arthur Conan Doyle

    ” it is a remarkable cow which walks, canters, and
    gallops.” “This fellow Hayes had shod his horses with shoes which counterfeited the tracks of cows.”

    ” These shoes,” it ran, ” were dug up in the moat of Holder-
    nesse Hall. They are for the use of horses, but they are
    shaped below with a cloven foot of iron, so as to throw pursuers off the track. They are supposed to have belonged to some of the marauding Barons of Holdernesse in the Middle Ages.”

  48. 30

    The RCE is an outgrowth of compact prosecution. The former exists because the latter is entirely dysfunctional.

  49. 29

    As a former EPO examiner, I must point out that examination at the EPO isn’t really a team effort. Although everything is signed by the “Examination Division”, the brunt of the work is carried out by the Primary Examiner, with the Chairman of the Examination Division and the Secondary Examiner playing only a limited role at the end of the examination. Basically, once the Primary Examiner prepares his final decision to grant or reject (and at the EPO, final decisions are really final), the Chairman checks the substance of the decision and, if the patent is to be granted, the Secondary Examiner checks the patent for any formal defect. But that’s all.
    If Oral Proceedings are to be held, the Chairman in particular takes a more active role, but Oral Proceedings are usually held only as a last-ditch attempt to come to a favourable conclusion. Informal interviews, on the other hand, are normally only attended by the Primary Examiner.
    Finally, until the turn of the century, the prior art search was carried out separately in The Hague, whereas the subsequent “substantive” examination, involving all contact with the applicant, was carried out by the Examination Divisions in Munich. Since then, however, the two roles have been brought together, with prior art searches and “substantive” examination being carried out in both The Hague and Munich. Nowadays, the Search Examiner in charge of the prior art search will also usually be the Primary Examiner in the Examination Division.

    As regards to your question, some calculations I’ve seen estimated about twice as much examiner time allocated at the EPO than at the USPTO for each file. Comparations are difficult, though, since the EPO doesn’t have the USPTO’s RCE system…

  50. 26

    Ned: “The PON here is a mental step.”

    Well, i have not read the claim. But I can tell you for certain that the Supreme Courts Integration doctrine does not permit the dissection of elements into mental and non mental steps for patent eligibility purposes, if that is what you are trying to assert.

  51. 25

    Denis, as part of your comparison between the EPO system and the US system did you compare the count system in the US (i.e. hours per count required for a primary examiner, especially in easier arts) and the EPO’s team examination system? Something to consider.

  52. 22

    Read much Malcolm? Where do you think the nominally a machine and mental steps thoughts intersect?

    Why do you think that Ned has never posted a response to this concept?

    Geesh.

  53. 20

    Newsflash, Ned: Machines do not think and cannot have mental steps.

    Ned never said otherwise, Trollboy. Nice try, though.

  54. 19

    nominally a machine… regardless that the claim was claiming mental steps

    Newsflash, Ned: Machines do not think and cannot have mental steps.

    ANTHROPOMORPHICATION

    It’s about time you recognize the concept, don’t you think?

  55. 18

    Dan, I am not sure the problem is with poor examiners. It is with a somewhat conflicted Federal Circuit, some of whose members like to see themselves representing the patent community against an anti-patent Supreme Court. Those sentiments are often expressed here in Patently-O, when Rich is held high, and Justice Douglas and/or Stevens are held in derision.

    You could not be more off-base Ned.

    Not even if you nominated Malcolm to be the director of the USPTO.

    No wait, you did that today too…

    What the h311 are you taking today?

  56. 17

    Maybe Jaguar can patent putting The Leaper on its tire treads so it makes an image when it drives over a soft surface.

    Oops, I guess i just k-lled that idea, which would otherwise surely have been patent-worthy because nobody ever thought of using a rubbery stamper-like object to create images on (or in) a suitable surface.

    I got it: how about a toothbrush with a stamper on one end for putting a design on a hard-boiled egg, where the design is a picture of David Kappos’ face? It’s the perfect gift for that special friend who has just passed the patent bar. It’ll also allow that person to express himself in an entertaining fashion, just like those g-rbage bags in In re Dembiczak.

  57. 16

    Dan, I am not sure the problem is with poor examiners. It is with a somewhat conflicted Federal Circuit, some of whose members like to see themselves representing the patent community against an anti-patent Supreme Court. Those sentiments are often expressed here in Patently-O, when Rich is held high, and Justice Douglas and/or Stevens are held in derision.

    The Patent Bar took the opportunity in ’52, through the APLA and the National Council of Patent Law association and through a coordinating committee comprise of Rich and Rose, to undo Cuno Engineering, Halliburton and Mercoid, cases they then viewed as disasters. What they crafted was not well crafted and was left to misinterpretation.

    But the worst happened when Rich was appointed to the CCPA, where he undertook to rewrite the whole of patent law based on his “authorship” of the ’52 Act. Thus we not only got a new 103, 271(b) and (c); 112(f); but also 102(f) and (g) as prior art for all purposes, including obviousness.

    But Rich’s greatest work was in undoing the proscription on function claiming, applying 112(f) to PTO claim construction, and it broadening patentable subject matter to anything nominally a machine, process, manufacture or composition, regardless of substance, regardless that the claim was claiming mental steps or abstractions such as price.

    All Hail Judge Rich.

  58. 15

    Sometime in the 1990’s I owned a pair of shoes that had soles with a tire tread pattern in them along with the stylized name “Goodyear” and a US Design patent number (could have been D323421 or D323422 or D341246 or D337877 or D337878, I don’t recall); I’m pretty sure I walked on the sand with them. I know that before 2008 my kids had toys having projections and recesses that they impressed into soft surfaces to leave a particular pattern, including animal patterns. And I think impression stamps – the kind you first press into an inkpad, then press onto a sheet of paper to leave your company name, “property of Bob Smith”, a picture of teddy bear or the like – were around before 2008, but maybe I’m just getting senile.

    My question is, why can’t MY clients get powderpuff examiners like the one who let this “patent” out the PTO door?

  59. 14

    Sometime in the 1990’s I owned a pair of shoes that had soles with a tire tread pattern in them along with the stylized name “Goodyear” and a US Design patent number (could have been D323421 or D323422 or D341246 or D337877 or D337878, I don’t recall); I’m pretty sure I walked on the sand with them. I know that before 2008 my kids had toys having projections and recesses that they impressed into soft surfaces to leave a particular pattern, including animal patterns. And I think impression stamps – the kind you first press into an inkpad, then press onto a sheet of paper to leave your company name, “property of Bob Smith”, a picture of teddy bear or the like – were around before 2008, but maybe I’m just getting senile.

    My question is, why can’t MY clients get powderpuff examiners like the one who let this “patent” out the PTO door?

  60. 13

    Is tire tread printed matter…?

    I thought you understood the exceptions to the printed matter doctrine. You never stop talking about it, until it’s relevant.

  61. 11

    The PON here is a mental step.

    No, there’s definitely (an asserted) novelty in the shape of the shoe. I think the term you’re looking for here is “printed matter”.

  62. 6

    Malcolm, indeed.

    Shoes with projections are old. They form prints. What varies from the prior art is what is printed. That varies only in the appreciation of the mind – a picture.

    The PON here is a mental step.

  63. 4

    “many of King Tutankhamen’s subjects wore sandals with pictures on their soles”

    And King Tut’s IP advisors were in no position to second guess a sophisticated obviousness analysis either.

  64. 3

    Anybody think these flip-flops aren’t relevant prior art?

    link to alibaba.com

    or this

    link to en.wikipedia.org

    In 1978, the company made its first real breakthrough, and gained widespread international recognition for its comfort footwear, when it launched the “Joke” shoe, followed by the classics “Free” and “Time”.[2] These shoes were the first in the world to feature a sole imprinted with the manufacturer’s logo. (a dubious claim but there it stands)

    or this:

    link to lds.org

    Many of King Tutankhamen’s subjects wore sandals with pictures on their soles, just like shoes worn by some children today. Instead of using pictures of their favorite things, however, the Egyptians decorated their sandal soles with pictures of people they didn’t like so that they could crush their enemy’s likeness with every step they took!

    Heckuva job, PTO.

  65. 2

    For the purposes of a utility patent, what possible difference to patentability could it make

    “Fun to look at” is a utility, right?

    You’re gonna love claim 2, which adds that the imprint and the 3-D figure “relate to” each other.

    But the most important thing is that, according to this patent, “a need exists for shoes that have a three dimensional animal or character figure integrated into them. A further need exists to make a three dimension animal/character shoe that also makes imprints.” And nobody else was able to do it until this brilliant inventor figured out how.

    Come on, Mal. Think of the children.

  66. 1

    has a sole having a bottom surface that comprises a series of projections and recesses that form a print

    For the purposes of a utility patent, what possible difference to patentability could it make whether the “print” that is formed is a grid of squares, a name, a phrase (“Heckuva job, Kappos”, comes to mind), an animal, a vegetable, the face of a public figure, an advertisement for huge multinational corporation, the name of your insurance company, your social security number or any other content?

    the students were not likely to be in a position to second-guess a complicated assessment of non-obviousness.

    Don’t sell your students short, Marketa. ;)

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