Here is a 1-hour quiz that I recently gave my patent law students on some of the basics of 101; 102; 103; and 112. Questions:
1. An employee at Freya’s small start-up company has come up with a new smartphone-app that helps cat-lovers meet. Essentially, the app causes the phone to “meow” when another user is nearby; “purr” when a good match is nearby; and “hiss” when an identified cat-hater or non-compatible is nearby. In her patent application, Freya claims:
A mobile device having a memory and a processor and operating as part of a social network, wherein the memory includes a stored program configured to:
cause the mobile device to emit a first sound based upon the proximity of a mobile device associated with a member of the social network;
cause the mobile device to emit a second sound based upon the proximity of a mobile device associated with a member of the social network who has been identified as a match; and
cause the mobile device to emit a third sound based upon the proximity of a mobile device associated with a member of the social network who has been identified as a bad match.
Is Freya’s claim subject-matter-eligible under 35 U.S.C. § 101? (120 words).
2. Regarding back to Freya’s claim above. Provide a concise argument that the yet-unpatented claim fails for lack of definiteness. (60 words).
3. Sometime during the past decade, Thor invented a new metal alloy known as Midguardium that is extremely hard and exhibits boomerang-like properties when thrown. Thor would like to patent a hammer made from the alloy but keep the actual process of making the alloy a trade-secret. May he do this? (50 words).
4. Following your advice above, Thor does fully disclose the process of making the alloy in his patent application (claiming “A hammer comprising a hammer-head made of Midguardium and a handle”). After Thor created his hammer (but before he filed his patent application), Loki independently invents Midguardium and forms it into scepter that he uses publicly in New York City. Loki does not, however, file for patent protection.
Concisely explain how the dates of invention, public use date, and Thor’s filing date may impact whether Loki’s disclosure counts as prior art against Thor’s patent application (250 words).
5. Assuming that Loki’s public-use counts as prior art against Thor’s patent application, can you make an argument that the scepter anticipates the aforementioned hammer claim? (60 words).
6. Still assuming that Loki’s public-use counts as prior art against Thor’s patent application, what can Thor do/argue in order in order to overcome the USPTO’s initial conclusion that the patent claim is obviousness based upon Loki’s use? (describe up to three approaches/arguments). (100 words).
Note: You are allowed to use a statutory reference (both pre and post AIA) and look-up relevant case law.