Introduction: Although not a poultry expert, Prof Crunch recently designed and built his own back-yard chicken coop (Coop) (started and completed in August 2016). Among its special features, the coop includes a translucent roof to allow additional winter light, a hinged trap-door in the floor for removing waste, and a vertically sliding door opening to the chicken-run. The vertically sliding door is operated by a pulley system and can be controlled while standing next-to the nesting box door. Thus, a user can provide access to the chicken-run at the same time as collecting eggs. The coop is also designed to be long-and-narrow in order to fit through a 40-inch wide gate while also providing at least 21 square feet of floor area. While Crunch expects that many of these features are not unique, he believes that the combination is unique. Crunch is an idea-man. Rather than production is looking to sell plans and instructions for making his Coop.
Crunch drafts the following two patent claims in his patent application filed December 5, 2016:
| I claim:
1. A poultry coop having a length, width, and height, said poultry coop comprising: a roof made of a translucent material with at least 50% light transmission; a floor having a hinged trap door and having an area of at least 21 square feet; a first side wall that includes a nesting box with an externally hinged door; and a second side wall that includes a vertically sliding door operated via a pulley system; wherein said pulley system is operable by a user standing near said nesting box and wherein said coop is configured with a width of less than 40-inches. 2. A set of instructions comprising: instructions for making the poultry coop of claim 1. |
Question 1. (120 words). Crunch had considered adding an additional limitation that precisely defines the configuration of the pulley system and its components. What are major pros and cons of adding these additional limitations to claim 1 (considering primarily the doctrines of patentability and infringement)?
Question 2. (200 words) Are these claims patent eligible subject matter?
Question 3. (60 words) Provide a concise argument that claim 1 fails for lack of definiteness.
Question 4. (80 words) Should Crunch be concerned that his back-yard prototype constitutes prior art that could be used against his own patent application?
Question 5. (240 words) Assume the following for this question: (a) the back-yard prototype is not prior art; and (b) Crunch’s expectations are correct that while many of the patented elements are known in the prior art, the combination as a whole is unique. What can we say about the novelty/nonobviousness of the claims.
Question 6. (25 words) Assuming claim 1 is patented but not claim 2. Does Crunch have an infringement claim against a third party who begins teaching others how to make the coop?
Dobu basically said below that if it was physical that it couldn’t be an abstraction under Alice.
This is typical of the type of ignorance (both real and pretend, e.g., Lemley) that is rampant at the SCOTUS and the CAFC. Each of the elements of a claim to an information processing method or machine requires physical space to implement one of the solutions for the element. So, why is a recitation of boards any different than a recitation of a function to process information? Both are physical.
It does not even have to reach your level of (reality/metaphysical?) understanding, Night Writer.
Actual claims explicitly “directed to” actual hardware were deemed “Abstract.”
As I have mentioned previously, the scrivening of the Court has removed the actual statutory categories with such claims on a point that was not even at issue with the Court (such claims having been stipulated by both parties to meet the statutory category of “machine”).
The Court has reached beyond their proper authority, violating the separation of powers, scrivening new legislation that is void for vagueness, and suffers from being ultra vires in at least two aspects of a) projecting a mere conjectural future possibility (“that may inhibit”) and b) that turns actual claimed hardware into something deemed “Abstract.”
As to b), Ned (among others) has complained about “form over substance” and attempted to scape goat Judge Rich on this point, but the converse of his position (and one sign of the broken score board) is that the Court deigns itself “Emperor” and simply dismisses something that the applicant (the one designated by Congress to define the invention) has explicitly defined as a machine (or in other cases as a manufacture- perhaps a machine component). The Court waves its magic wand and proclaims an actual hardware claim as mere “trickery” and in its own (self-appointed) powers instead turns the actual claim into an (unclaimed) “thing” that is “Abstract.”
You raise a good point. I think that Stevens actually thought these things are performed in the spirit world.
Most of Ned’s arguments are exactly like witch arguments from 1300. Lemley presents arguments (like functional claiming) that are counter what is taught at Stanford’s school of engineering, and Lemley does not mention this which is a clear ethical violation.
Etc. The fact is that non of the anti-patent judicial arguments are based on sound reasoning, but on unethical and intellectual dishonest misrepresentations of fact and law.
And, by the way, the big reason it is so important that information is physical is because it is not so easy to distinguish an information processing machine from a drilling rig.
Information storage media are physical and concrete.
Information is abstract.
It really is that simple . . .
. . . at least, until nefarious scriveners attempt to conflate the information with the storage medium, or conflate classical information with quantum information, or pretend a “new” machine has been invented when they assign new abstract meanings (e.g., a shadow account balance) to an addressed memory circuit.
Alice cites a computer, yes. A computer they did not “invent”.
Now, let’s hear all about the Monty Hall Experiment, and the Great Horse/Mouse Fallacy. Again. *yawn*
Nefarious scriveners…
LOL
You missed the part in 101 that says “or any improvement thereof.”
Oops.
Maybe you want to address the Grand Hall experiment or the Morse/House fallacy instead of merely throwing shade…?
Kind of funny that you have actually done that…
(Thrown shade and NOT actually address the things that you throw shade at, that is)
Non-responsive to whether the elements of an information processing method or machine requires physical space and has structure.
Dobu: you are one of the unethical intellectual dishonest people.
My comments for that special case, as a patent agent (Québec, Canada, French and English):
1. I would discourage the inventor for filing a patent application because anybody can do it and it would be cost-prohibitive to sue all of them…
2. If he/she still wants to go on with a patent application, I would at least rewrite claim 2 as:
A method (or process) for making a poultry coop, the method (we now need to specify…) comprising the steps of, using non-transitory tangible building materials (LOL):
building an enclosure with said materials, the enclosure having a width, a floor, a roof extending opposite the floor at a distance thereof, and walls extending between the floor and the roof so that the floor, the roof and the walls define the enclosure,
and wherein:
the roof comprises at least a portion (dependent claims may specify the portion) made of a translucent material with at least 50% light transmission;
the floor having a hinged trap door and having an area of at least 21 square feet;
a first one of the side walls includes a nesting box with a hinged door movable between closed and open positions…;
a second one of the side walls includes a sliding door movable between first and second positions where…, the sliding door having an operating element extending near said nesting box inside the enclosure and operable by a user so that… ; and
said width being less than 40-inches.
This is just a draft…
For all like me who are solo practitioners (with a lot of experience ;-), the most I miss from the past when I worked in an IP firm with several patent agents and lawyers is the possibility to have feedback from a colleague when I draft an application. For free. I can do the same. As long as confidentiality is preserved.
Thank you for the interesting discussions.
Bonus Question:
Discuss the 101 implications of link to mnn.com
Presume that instead of 1982, that the objective physical structure created by the hand of man occurred in 2012, and a patent was quickly filed on that then novel and non-obvious objective physical structure (with all other sections of patent law being met).
Use as many words as you like, but the more concise and inte11ectually honest answers will earn more bonus points.
Thank you. This is an excellent example of the point I have tried to make to Ned several times. If “new” doesn’t mean newly known to man, then nothing, no composition of matter at any rate, is ever patentable, never patentably novel. The age and vastness of the universe require that every composition of matter must occur or have occurred naturally somewhere. On some moon or asteroid somewhere, there are mile wide veins of aspirin marbling mountains of Lipitor, or perhaps there were, before the associated start went Nova. In any event, we can’t know that it hasn’t and cannot say that it is “new” in Ned’s preferred sense of the word.
There are more things in heaven and earth, Ned, than are dreamt of …
You are welcome, and while your gratitude is appreciated, I have to wonder if you are going to take a shot at earning any bonus points.
I thought I had. The “new” is question is the one in 101.
Hasn’t the SC simply ignored “new” in 101? It’s like the word is not even there.
They should, since new is evaluated under 102.
However, either they or commentators have used the “new” in 101 to justify the natural laws and products of nature exceptions. This is the very thing I am arguing is absurd in 25.1.
I have previously shared parts of the Congressional record showing that indeed the “new” of 101 was not a substantive portion of 101 (as it was intended to be covered elsewhere).
The two substantive portions of 101 are:
1) Fit at least one statutory category (See Chakrabarty – this is a loose requirement), and
2) have the correct type of utility (e.g., not be of the Fine Arts). This also was intended to be a rather loose requirement.
It has only been through the legislating from the bench that 101 has been turned into a harsh hurdle.
“I thought I had. The “new” is question is the one in 101.”
You did not apply your comment to the case presented, nor did you indicate any ramifications (other than a remark to your beef with Ned – I can see some credit for that, but I was looking for more)
In particular, I was hoping that Ned would take a swing at the bonus points.
Something else to consider: the universe itself is not static (although most people like to forget that point).
Heck, I even threw in their the stipulation that the claim was written in objective physical structure so that Malcolm might be tempted to attempt to gain the bonus points.
(Not that I expected any real substantive or critical thoughts from him, mind you)
You could be correct.
“How does red yeast rice work? The fermented grain contains a number of compounds called monacolins, including lovastatin—a proven cholesterol-lowering compound that’s sold as the prescription drug Mevacor.”
See: link to prevention.com
By the way, if you’re given the “option” of taking a statin, I recommend doing some research before you do so. Some believe the side effects outweigh the very limited effectiveness of these drugs.
It is interesting that the anti-patent judicial activist and the less well educated seem to think that an Alice argument couldn’t be made. I would image that the lowly likes of Stevens, Sotomayor, Ginsburg, or Breyer would dismiss an Alice argument ’cause those things are physical.
But, information processing is physical. It takes time, space, and energy. In fact, every claim element is going to take space to implement, time to perform, and energy to perform. So, when I look at a claim for sorting numbers, I think of a physical process –the physical world not spirit world.
Also, I could change this claim into a set of equations that describe the chicken coop. So, again, we have that just because the information processing is more amenable to mathematical description that somehow the medieval thinkers decide it is abstract.
The ignorance is astounding and frightening as the Trump storm begins…
You guys should also think about the zeitgeist. Most of the people on here I would classify as post-ethical, post-fact people. The anti-patent judicial activist particularly in academia appear to have no redeeming qualities.
Ask yourself what broke down a country like Germany? What line of defense is there when the intellectual “wars” have degraded to using gas?
People like Lemley should think about this and his role in the rise of Trump.
Think about the implications of presenting intellectually dishonest positions when you are in a position of authority. Where the wheel hits the road is that it gives demagogues an opportunity to explicit the depravity of the situation. How many people, for example, in the US would say now that it would be fine to completely do away with the SCOTUS? My guess is that it is over half. My guess is the source of this is the sense (rightly so) that ethics and morals are lacking at the highest levels.
You should think about your where you stand. Your role.
For example, if there was a movement in Congress to impeach all the liberal judges, who would stand up for them?
You see, I think most people would if they felt the person was basically an honest and moral person. But, when you throw ethics out the window to get the result you want, then the whole social contract breaks. And, we currently have no enforcement of ethical violations.
What a useful case for debating so many of the issues covered in this blog over the past year.
I want to raise one of them, namely the repercussions of switching to a First to File System, for those who draft patent applications. In short, is it enough to describe in exquisite detail the prototype the client brings to you, or is there some work to do, BEFORE you file at the PTO, to identify within the prototype an invention and then announce to the PTO in the application as filed, no later than the filing date, what the Invention is? What technical problem was addressed, and how is it solved by the subject matter of Claim 1?
You see, in the Crunch Claim, all I see is a list of features we can find in the prototype. The features as such we know to be old; all of them.
So where’s the Invention? Is there one? Did the patent attorney ask the Inventor? If so, what was the inventor’s reply?
And if the Applicant can’t find one, and announce it in the application as filed, why should the Office or the Courts be under any obligation to hand out any exclusive rights whatsoever?
Regardless how you tweak the claim wording it remains what it is, an unpatentable listing of (known) features you will need to build a nicely-functioning chicken coop. When it comes to the crunch, you need more than that, to qualify for 20 years of exclusive rights, no matter how many pages of patent specification you file at the PTO.
Your best point here, MaxDrei is true regardless of the switch to First to File.
“So where’s the Invention? Is there one? Did the patent attorney ask the Inventor? If so, what was the inventor’s reply?” are all great questions that should be asked regardless of the change in the AIA to First Inventor to File.
Picture claiming (in exquisite detail) of objective physical structure may be what some here (unthinkingly) fall to as some type of magic default, but our craft typically demands more.
For me the switch to FtF is nevertheless important.
FtF is inherently very unforgiving. America hasn’t learned this yet, but it soon will.
In any FtF jurisdiction, once you have filed, it is too late then to announce what the “Invention” is. MM has pointed out here that the end is in view, of use of post-filing evidence to defeat obviousness objections. I have been urging for a long time that FtF brings with it ever-increasing severity of 112 and WD objections.
With drafting in a FtF jurisdiction, you have to get it “right first time”, for that’s the only chance you get. Your filing date is subject to a Goldilocks Rule. Too early and your disclosure and definition are not sharp enough. Too late and somebody else has filed before you did. By and large, America has not yet grasped this imperative.
The importance (to you) is not associated with the aspect you presented.
While there is no doubt of the importance to you of the timely (and unforgivable) nature of the EPO version of First to File (which is not the same as the US version of First Inventor to File), the logical point that you tried to make is a logical fallacy (as demonstrated).
Your additional point here regarding Malcolm’s complaint is also misplaced, as such actions still apply to US jurisprudence in the post-AIA First Inventor to File system.
I “get” that you want to expound on the EPO Way, but doing so and being logically incorrect in your posts is just not the way to go about it.
The explicit “THIS IS MY INVENTION” that you appear to seek does not happen as you would appear to like it in the US legal system due to patent profanity.
But apart from all that, anon, fact is that in a FtF System, the ONLY way to decide priority between rival applicants for a patent on the same subject matter is strict comparison between what they respectively wrote to the Patent Office on their respective filing dates.
And because it is the only way, strict means “strict and getting ever stricter”. that is because those rival Applicants are served by ever craftier patent drafters. It’s a game of “Gamekeepers v Poachers”
At least, that’s my experience, in multitudious FtF jurisdictions, ever since 1973 when the EPO was no more than a glint in various people’s eye. The advent of the EPC changed nothing.
You continue to strain to generate some logic for your initial position where no logic will suffice.
Question 1. (120 words). Crunch had considered adding an additional limitation that precisely defines the configuration of the pulley system and its components. What are major pros and cons of adding these additional limitations to claim 1 (considering primarily the doctrines of patentability and infringement)?
A: It helps validity defense but additional limitations will narrow the scope of the invention thus not conducive to his infringement claims.
Question 2. (200 words) Are these claims patent eligible subject matter?
A: They might be eligible under 101 and Alice（claim 1 recites an apparatus and does not include any method of how to make this chicken coop and it actually points to certain type of coop, thus not really points to an abstract idea）but not valid under 35 USC 102, 103, 112….
Question 3. (60 words) Provide a concise argument that claim 1 fails for lack of definiteness.
A:
1. Actual size of this poultry is unseen from the limitations of claim 1, as these limitations only mention about a floor having …. an area of at least 21 square feet and a 40-inch wide gate, so what is the actual height of this poultry which is supposed to be defined in limitations?
2. The follow limitations are too broad and would cover most poultry designs（thus some readers believe that it refers to an ineligible concept of how to make a poultry coop）, which requires supplement of additional features by patent specification. For example:
a roof made of a translucent material with at least 50% light transmission…
a floor having a hinged trap door and having an area of at least 21 square feet…
a first side wall that includes a nesting box with an externally hinged door…
a second side wall that includes a vertically sliding door operated via a pulley system; wherein said pulley system is operable by a user standing near said nesting box and wherein said coop is configured with a width of less than 40-inches…
Question 4. (80 words) Should Crunch be concerned that his back-yard prototype constitutes prior art that could be used against his own patent application?
A: It’s not going to be a valid prior art unless the coop already in public use, on sale, or displayed and available to the public before the effective filing date under 102
Question 5. (240 words) Assume the following for this question: (a) the back-yard prototype is not prior art; and (b) Crunch’s expectations are correct that while many of the patented elements are known in the prior art, the combination as a whole is unique. What can we say about the novelty/nonobviousness of the claims.
A: It is likely that it will not survive anticipation or non-obviousness test as most patented features here are easily found among known publications and any skilled artisan might have reasonable motivation to refer to these prior arts in a combined manner. Thus the key question is whether such a motivation to combine prior arts exists and it is for the courts to decide.
Question 6. (25 words) Assuming claim 1 is patented but not claim 2. Does Crunch have an infringement claim against a third party who begins teaching others how to make the coop?
A: Whether claim 2 is patentable and Crunch wants to sell plans and instructions for making his coop is irrelevant as liability of direct infringement under 35 USC 271(a) still not existing except the liability of inducement under 271(b).
BBBRRREE, we should not judge you too harshly. At least you tried.
B, for question 1, review answer 15 below. link to patentlyo.com
BTW: There’s no relationship specified between the elements in your claims, so you’re claims may be invalid under 112(b).
I am not sure about the business model here. Assume that Prof. Crouch has gotten this through the patent office and has his patent on a chicken coop issued. Will the patent protect his business of selling plans for chicken coops?
Question 5, previously answered.
Question 6, Prof. Crunch may have a cause of action for inducement infringement against the provider of instructions provided that the provider of instructions to direct infringers has been notified of the patent and is aware that the construction of the coop according to the instructions is and infringement.
Question for Crunch, what if the instructions were given to a contributory infringer who provided then provided end users all the components necessary to build the coop in a kit.
This is too complicated for me, but the practical answer is that Dennis ends up with a chicken coop, maybe, and his patent attorney ends up with all his money. Is that the A+ answer?
I think there should be another question: Is there any other advice you would give to Crunch, in addition to the answers to the first six questions?
Well for one thing, there is no reason to recite a poultry coup. Someone could use it for raising rabbits say… so, he should claim a structure.
But before that, he should be asked if he wants the patent for bragging rights or because he would actually enforce it. Either way he should plan on spending 20 or 30K just to obtain the patent and then millions if he ever intends to enforce it. And that’s just in the US. If he wants protection in other jurisdictions, he should plan on spending a lot more.
A+ for including these post-obtainment considerations (even if actual costs may be quibbled with).
F- for attempting to perpetrate the myth that those patent attorneys who help protect inventors with the obtainment of legal protection are merely out to “get all the applicant’s money.”
We have enough of that “H@ te the attorney” CRP around here already.
Relax, dude. We are goofing off here, in case you missed the call of the question.
But seriously, your concern should drive the answer to may question as to what other advice one should give to Crunch. What advice would you give a potential client who wants to pay you for an application that will never issue (absent PTO error), or will never be infringed (without an idiot infringer)? Here is what I say: “I don’t want to write this patent for you because in the end, you will have a chicken coup and no patent, and I will have your money. How will you (and I) feel when you realize there was never an chance to get a patent?”
But this is not supposed to be so serious, dude.
You should recognize that the item I point out is nothing to relax about.
There is way too much Kool-Aid out there purporting that most all patent attorneys helping inventors are really only either G-g-grifting themselves or are only concerned with the almighty dollar.
It is just not a matter that I should “relax dude.” You should be more aware of the anti-patent sentiments actually flowing around here.
As to the great “post-obtainment” questions, apparently you missed the A+ that I gave out to Les at 19.1.1.
(20.1.1)
Question 4: The backyard prototype is not prior art because it is within the one-year grace period, constructed in August where the the patent application was filed in December of the same year. It may also be excluded under the experimental use doctrine.
Said experimental use not reasonably available to the public…
anon, ? Really.
I am thinking of development efforts on public streets (and to a lesser extent, “development” of female clothing items, while not being seen, where nonetheless out “in the public”).
The pavement case was necessarily open to the public, but fell under experimental use. Development efforts on public streets can be experimental use.
The corset case was open to the public, because the girlfriend was public, even if others in the public could not see her corset. Very private use can be a public use.
IIRC, the pavement case failed to fall under experimental use… (but I will have to check again)
And yes, the other item I was thinking of was the corset case (wrongly decided IMO, by the by – this was not in an era that corsets or other under garments were worn as to be visible to any of the public.
Question 3, the structure of the pulley system necessary to effect the wherein clause regarding user operability is not set forth in the claim making it indefinite. Structure cannot be claimed in terms of its effects. Also, the requirement for 50% light transmission is infinite because translucence depends on wavelength, and the claim only specifies light.
“Also, the requirement for 50% light transmission is infinite because translucence depends on wavelength, and the claim only specifies light.”
You’re ok with the functional claiming?
Les, functional claiming is OK so long it defines specific structure, step or materials. Thus claiming some well known structure by its name is a form of functional claiming.
Shall we hold Ned’s hand as to the actual law regarding terms sounding in function (and any distinctions this may bring to his “version” of “functional claiming”…?
You are definitely one of the intellectual dishonest people driving this country off the road Ned.
Ned, it never ends with you.
“defines specific structure” ??? We have a way of dealing with functional claiming that has been used for hundreds of years. It has to do with enablement. Functional language is used to express those solutions that a PHOSITA can find without undue experimentation. College textbooks in engineering at the top schools (I have gone to two of the top 5 engineering schools in this country) say expressly that functional language is used for this because there are too many solutions in all the engineering fields to cite “specific structure.”
You know this Ned and get on here and spout unethical intellectually dishonest nonsense day in and day out.
Functional language is used to express those solutions that a PHOSITA can find without undue experimentation. College textbooks in engineering at the top schools (I have gone to two of the top 5 engineering schools in this country) say expressly that functional language is used for this because there are too many solutions in all the engineering fields to cite “specific structure.”
Citation, please.
DanH: I know this is one of the games played on this blog. Just ask for a citation or for the other party to do all the work and then on the next post start the whole process again.
Tell you what, DanH, try picking up a textbook or two and look for it. I have two or three times provided the citation for what I said above. So, rather than your “jeer post”, how about you take some responsibility for your education and look it up.
DanH played the same (losing) game with me awhile back on the discussion of “ladders of abstraction.”
I supplied several texts on the matter, and then asked DanH to do in kind to support his view.
He ran away and never finished that conversation.
“Translucent material” is well known structure?
Then so is “Filter” and so is “processor.”
So is anything made up of protons, neutrons, and electrons…
😉
Question 2: Claim 1 is direct to patentable subject matter. Claim 2 is not. Claim 1 is directed to a mechanical structure, subject matter clearly within the four classes thereby passing Alice step 1. Claim 2 is directed to information per se, subject matter not within the four classes thereby failing Alice step 1. Nothing further in the claim applies the instructions in any otherwise patentable application thereby failing Alice step 2.
You keep on forgetting one of the direct results of the Alice case, Ned: claims NOT at issue for meeting the statutory requirement section of 101 – both sides stipulating that the claim was “directed to” machines – nonetheless were deemed “abstract.”
anon, I know the Court wanted to be vague. But you have to observe what it did and well as what it said.