Are you Smarter than a Law Student? Patent Exam 2019

My patent law course at Mizzou is primarily practice based — the students all write patent claims, reject claims, respond to office actions, and compete in a moot court competition. But, they also take a short exam. Here is the 2019 edition. – DC

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Introduction: Mr. Crunch’s newest venture known as “Pause” is designed to help people relax and take a momentary meditative pause.

The basics: Crunch has designed an App (software program) to be installed an electronic device such as a mobile phone.  At points in time throughout the day, the App will provide a notification “ding” to the user indicating that it is time for a meditative pause.

The notification sound: One special feature of the App is that the notification ding is specially designed to elicit a relaxation response. The default sound is modeled from a Tibetan Singing Bowl. However, App includes a customization process where App can measure a user’s relaxation response to the various sounds using biofeedback (heart rate; skin temperature; sweat gland activity; digestion via breath sensor, etc.) and then automatically select the most effective; alternatively a user can manually select from various sounds.

Timing of the notification: The other feature of the App is timing of the notification dings.  Timing may be a pre-set time (such as 1:00 pm daily) or may be spaced randomly during awake hours.  App may also rely on biofeedback to identify stressful points during the day and target those times for the ding.

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Crunch conceived of the idea during a Kundalini Yoga session in August 2018.  As he moved forward with development of the business, in September 2018 he fully disclosed all aspects of the invention to his banker (seeking a business development loan) and also to two software engineers that he hired on a contract basis to write the code.  He also told everything to his spouse and <18 y.o. children, although not until January 2019.

It is now December 2019 and Crunch is ready to file his patent application.  He understands that he cannot obtain a patent simply on an app that plays a sound. However, he thinks his customization processes are novel features. His proposed claim 1 is listed below.

I claim:

1. A process for customizing an application stored on a mobile electronic device, wherein the application is designed to elicit a relaxation response in a user, the process comprising:

(a) customizing the notification sound:

  1. causing the device to play a plurality of notification sounds for the user;
  2. recording a biofeedback response for each notification sound, wherein the biofeedback response includes user heartrate; and
  3. selecting a preferred notification sound based upon the biofeedback response; and

(b)  customizing the notification timing:

  1. measuring a stress level of the user based upon a biomarker, wherein the biomarker including user heartrate; and
  2. selecting a notification time at a point of relatively higher stress.


Question 1
. Is claim 1 directed toward eligible subject matter?

Question 2. Provide a concise argument why the USPTO should reject claim 1 as indefinite.

Question 3a. Crunch is concerned that his own pre-filing disclosures (as discussed above) might block him from receiving a patent. Do those disclosures qualify as prior art against his own application filing?

Question 3b If Crunch could go back in time, what are two steps he could have taken to better ensure that his pre-filing disclosures were not prior art?

Question 4. Crunch’s patent attorney performed a prior art search and found a publication from March 2019 describing an app that helps users maintain good posture. Key relevant features of the good-posture app publication:

  1. It measures heartrate and provide a signal to users when heartrate slows telling users to improve their posture (apparently slumping typically occurs as heartrate slows);
  2. Users can customize the signal according to their preferences. The publication suggests choosing a signal that the user finds pleasing.

Although the good-posture app is described in the printed publication, there is no evidence that the good-posture app was ever actually created. Will the good-posture publication prevent Crunch from obtaining a patent?

Question 5. The year is now 2021; Crunch’s US patent has issued without any amendment.  An India-based company (Vishraam) has started distributing an app (globally) that is quite similar to Crunch’s proposal. A user has the option of customizing both the notification sound and the notification timing in same way claimed by the patent.  Can Crunch hold Vishraam liable for patent infringement?

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Note – The “Pause Mediation” image above comes from a real company in Westchester.

17 thoughts on “Are you Smarter than a Law Student? Patent Exam 2019

  1. 5

    Question 6. Who is the target infringer of this claim and can you suggest a better target infringer?

  2. 4

    I would add a second claim:

    “…The process in claim 1b) where in the notification time is based on a new topic being opened for comments on one or more blogs where in the blogs include the blog ‘Patently-O’.”

    Then in the summary of the invention you can provide lengthy, unending examples of long sought and utterly unmet needs to reduce the stress of people who post on blogs.

  3. 3

    Maybe it’s just me, but wouldn’t teaching patent law be better if the emphasis was on how to obtain patent protection rather than the various traps (judicially created and otherwise) as to why a “Just say no” mentality may be fostered?

    Maybe you DID teach such (and are looking for that type of answer). From the tenor of the questions though, I am doubting that such is the case.

    1. 3.1

      That being said, would love to see the grading rubric for this exam.

    2. 3.2

      The focus of the class is on obtaining and enforcing patents. It is just a 3 hour class, but the students all write two sets of patent claims (one for a grade); Examine a pending application; and respond to an examiner rejection (for these, I locate pending cases so that the students can later see how the attorney responded). Students also draft briefs and argue in a moot-court. The exam is really designed as a check to make sure that the students understand the law.

      1. 3.2.1

        I have to wonder which version of the law…

        1. 3.2.1.1

          … given as ALL three branches of the government have come out criticizing the current conflicted state of eligibility common law law writing that is going on.

    3. 3.3

      It’s just you. “One must always begin with the end in mind.”

      “Obtaining patent protection” is worthless if one doesn’t fully grasp all the pitfalls of validity and infringement, and deal with all the issues simultaneously in each sentence one writes. That’s what makes (good) prosecution a difficult art — it’s a multi-dimensional chessboard, where each move before a visible examiner has implications before a now-unseen-but-ultimately-far-more-important judge and jury. An issued patent is nothing but a deadweight and costly plaque on a wall if it hasn’t been prosecuted to sustain validity and noninfringement challenges.

      The chapter for a course I used to teach for PLI in NYC, Maximizing Patent Value by Effective Prosecution is at link to papers.ssrn.com

      1. 3.3.1

        Excellent reply Dave -thanks!

        1. 3.3.1.1

          “Excellent reply Dave -thanks!”

          Toady. Snowflake. This is your own designated expert that called you an incredibly sloppy reader, writer, and thinker. Do you not remember? [Sigh]

          1. 3.3.1.1.1

            Nothing “toady” about the reply, Shifty.

            Maybe you should focus more on content and not be so driven by the person providing the content.

            Just a suggestion.

            1. 3.3.1.1.1.1

              [Sigh]. Toady, Snowflake. [Sigh]. I _am_ focusing on the content. I agree that you are an incredibly sloppy reader, writer, and thinker.

              1. 3.3.1.1.1.1.1

                What you apparently are focusing on is pure ad hominem as your “game.”

      1. 3.4.1

        Shifty’s games do not include actually paying attention to (or learning from) content.

        Some of us though DO appreciate the content that you share (even if we do not agree with every single thing ever posted on blogs).

  4. 2

    Dennis, you forgot to ask your students to estimate how long it will be before China takes over the world if the claim is not eligible for patenting.

    What a joyless world it will be when nobody creates devices that alert you to stuff, using prior art technology. Because obviously if you can’t get a 20 year monopoly on it nobody will bother. Look at what happened to the thriving egg timer industry in America: decimated by the Vietnamese.

  5. 1

    My app does all this and selects an ideal food for your pet based on your biorhythm score and other key parameters. In addition, it functions as a mobile alarm in the event that the power fails on your garage door opener.

    Amazingly, this is all achieved with a microprocessor that can fit in your backpack!!

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