Easy Patent law Quiz for 2021:

You should be able to easily answer these questions: 

Prof. Crunch stays fit with his rebounder (a mini-trampoline).  These already exist, but Crunch has designed a new model that includes a handle (for stability) and also a touchscreen control that can be used to stream audio/video instructions.  (These are shown in the figure below). He plans to sell a higher end model that includes displaying the bouncing-tempo on the screen and also energy-exerted (using movement-sensors in the rubber-bands or springs).

Crunch recently filed a utility patent application (February 2021) with the USPTO seeking to patent the following two claims:

1. An exercise apparatus comprising: 
  a mini-trampoline; 
  a support handle secured to the mini-trampoline that includes a grip-bar; and
  a touch-screen electronic device attached to the support handle and configured with software for displaying real-time exercise instructions. 

2. The apparatus of claim 1, further comprising motion sensors attached to the mini-trampoline and configured to provide data to the touch-screen electronic device and wherein the touch-screen electronic device is configured to use the data provided to calculate and display energy-exerted by a user in real-time.

Crunch admits that all of the elements of his invention were individually available in the prior art.  In particular, mini-trampolines with handles were already available, as were touch screens for displaying real-time instructions. Likewise, motion sensors are available, as well as algorithms for calculating energy use while trampolining.  However, he has not seen any prior art that combines everything together in this particular way.

Question 1. (100 words) Are Crunch’s claims directed toward eligible subject matter?

Question 2. (80 words) Provide a concise argument why the USPTO should reject claim 1 as indefinite.

Question 3. (300 words) Based upon what you know so far, do Sections 102 or 103 create any hurdle to patentability?

Question 4. (100 words) Five years later … Crunch has obtained his patent exactly as claimed above and business is booming.  Crunch recently found that GummyBearCo is selling a product that he thinks is infringing his claim 1. The only differences are that (1) it is a large 15-foot trampoline and (2) there is no “handle” per se. Rather, the screen is simply mounted to a pole at the edge of the trampoline. Also, although the GummyBearCo product is sold in the USA, it is actually manufactured in China. Can he prove infringement?

84 thoughts on “Easy Patent law Quiz for 2021:

  1. 16

    My comments awaits moderation for a very long time:
    “Your comment is awaiting moderation.
    December 6, 2021 at 11:23 am”

    1. 16.1

      You are facing any number of “filters” – but most likely (since you are relatively new) a George Carlin “prohibited words” filter.

      Release from such purgatory is sporadic at best.

    2. 16.2

      Let me repeat point #1 of my now no. 12 answer:

      Claim 1 fails §101 as not useful: exercise instructions displayed as described cannot be read in real-time while using a trampoline.

      1. 16.2.1

        Nonsense — there are plenty of conditions in which ambient (and even more deleterious) motion can be compensated for [think of jet fighter cockpits].

        Utility — as intended by the writers of the Legislative patent law — was intended to be a very very low bar.

      2. 16.2.2

        My reply is (oddly) in an older style filter (with notice, newer filters do not even let you see even that).

        Bottom line, is that your ‘view’ on utility is not correct, and reading in real time (even in relative motion situations) is a very real innovation area.

      3. 16.2.3

        If I were a defendant trying to invalidate this claim, I would not waste my time making that argument. There are good arguments for invalidity here, but that is a weak one.

      4. 16.2.4

        Gentlemen, you think in terms of a court, and not in terms of an Easy Patent Quiz, where professor Crouch has put Professor Crunch on a mini-trampoline, rather than a turnstile, purposely for making the invention failing §101 because of not being useful.

        It’s time to go back to school:)

        1. 16.2.4.1

          Clearly my friend, you do not know what you are talking about.

          This is not merely any quiz – this is a law school quiz, so your asserted notion of “in terms of a court” DO have direct bearing.

          Your asserted conclusion does not take the place of reasoning. As is easily verified, there is significant utility in innovations that involve reading a display in a non-stationary context.

          It appears that you are wearing that “pro se” label proudly when you instead should be embarrassed by that label.

          1. 16.2.4.1.1

            Question #1 relates to prosecution, which refers us to MPEP 2107, in which utility is decided by a PHOSITA finding that “the utility is specific, substantial, and credible”.

            Wearing the hat of a PHOSITA, I find that real-time written exercise instructions, which are the specific and substantial utility of the invention, are IMPOSSIBLE TO READ, which renders the specific and substantial utility NOT CREDIBLE.

            1. 16.2.4.1.1.1

              And yet again, YOU are not a PHOSITA (no matter how you try to wear that hat).

              Your statement of ‘impossible’ is simply – and factually – false.

      5. 16.2.5

        Trying to overcome filters, I’ll repeat my just-filtered comment:

        Gentlemen, you think in terms of a court, and not in terms of an Easy Patent Quiz, where professor Crouch has put Professor Crunch on a mini-trampoline, rather than a turnstile, purposely for making the invention failing §101 because of not being useful.

  2. 15

    “Crunch admits that all of the elements of his invention were individually available in the prior art.”

    Is Crunch prosecuting this pro se? That is a frequent faux pas by a pro se applicant. Probably not Crunch’s first mistake but it is a significant one as the Examiner will repeatedly hit on the Applicant admitting that all the claimed subject matter is well-known.

    “However, he has not seen any prior art that combines everything together in this particular way.”

    Just because the Applicant hasn’t seen it, doesn’t mean the Examiner won’t be able to justify combining it in a manner that the PTAB will uphold.

    “Five years later … Crunch has obtained his patent exactly as claimed above and business is booming.”

    Is that after five years of back-and-forth prosecution, including a successful PTAB appeal? Several RCEs? I’m sure the Examiner milked this application for a boatload of counts.

    1. 15.1

      It’s a law school exam type question. There is an inherent suspension of disbelief.

      1. 15.1.1

        hmm, I have my doubts that you have made it through law school.

        1. 15.1.1.1

          Most people here doubt you have a soul, anon. Your post is proof of it. Now shut up before someone drops a house on you too.

          1. 15.1.1.1.1

            I see the tag team is at it here.

            Let’s let MCI (who choose his name in reflection to my posts) answer, eh?

  3. 14

    Following up on a comment below and our earlier discussion regarding the Supreme’s d.o.a. decision in Diehr, it should not have been difficult (at all) even 10 years ago to imagine what an ineligible claim to a “new” trampoline would look like. Example: an old trampoline with non-obvious instructions slapped on the side. The “difficult” part for attorneys dedicated to not understanding anything about eligibility would be their reluctance to admit that the so-called “printed matter doctrine” is plainly an eligibility test (and one which “mysteriously” survived Diehr — go figure!).

    1. 14.1

      I honestly think you need to change your salmon colored face that matches your tie JOHN. You are the reason my Utility Patent went PUFF…. And if you lived with me you would not be here anymore, for reasons that it would have put me in prison like the broken slot machine, that also was a water shed moment protecting me from all of you. I for some reason although constantly punished for having been born,seem to wear a Teflon coating.

    2. 14.2

      Malcolm, Malcolm, Malcolm,

      You and that “printed matter doctrine” line of yours — when you have
      F
      A
      I
      L
      E
      D
      to actually engage on any discussion on the merits of the Printed Matter Doctrine and the important exceptions to that doctrine.

      Shall I once again provide you a hyperlink to the Hricik side of the blog? report (yet again) on this side?

      Or maybe you can add a little bit more about this “mysteriously survived Diehr” notion that you seem to want to rest on….

      As it is, and as of yet, you have no point here.

    3. 14.3

      and our earlier discussion regarding the Supreme’s d.o.a. decision in Diehr,

      Flashback of Malcolm’s predictions that Bilski would be a straight up repudiation of all things Diehr…

      1. 14.3.1

        …and let me add (for the newcomers), that it is important in reviewing the history of the eligibility decisions, one keeps in mind WHO is saying WHAT as the Supreme Court went back and forth in weaving its Gordian Knot.

  4. 13

    Were these questions inspired by the previously-blogged moot court arguments about Judge Gilstrap’s recent patent eligibility decision in Mad Dogg Athletics v. Peloton Interactive (E.D. Tex. Sept. 15, 2021)?
    BTW, just to start an academic legal argument [and ignoring any non-enablements] I find it strange that the claim rejection of “aggregation” claims is now so rejected. That had seemed to me quite appropriate for a claim combining a number of known parts which are obvious to combine for which their combination is not providing anything unobvious or unexpected or synergistic or more than the sum of the parts? Electric Power Group (Fed. Cir. 2016) seemed like it had an “aggregation” claim to me.

    1. 13.1

      But my trampoline has a TV and a holder for your toothbrush.

      1. 13.1.1

        Well, if you draft a claim just right, You would most likely get a patent on that improved trampoline! The invention survives eligibility, is novel, and probably overcomes obviousness. I can think of many reasons that teach away from the combination of a holder for a toothbrush (putting a small plastic rod into your oral cavity while jumping up and down could be quick risk) and TV on a trampoline.

        1. 13.1.1.1

          Please excuse my typing errors.

        2. 13.1.1.2

          You would most likely get a patent on that improved trampoline!… I can think of many reasons that teach away from the combination of a holder for a toothbrush… and TV on a trampoline.

          You are probably right about this. More than a few of our more persuasive colleagues are probably able to talk their way past an obviousness rejection of these hypothetical claims. Pity, that.

          Flannery O’Connor once wrote that

          Everywhere I go I’m asked if I think the universities stifle writers. My opinion is that they don’t stifle enough of them. There’s many a best-seller that could have been prevented by a good teacher.

          Mutatis mutandis, the same applies to the hypothetical claims in discussion. Such claims would collapse in an instant if asserted. They would be literally not worth the paper on which they are printed, and yet they would cost far more than the price of paper to obtain and maintain.

          The lawyer who prosecuted them would be doing the client no favor. Better to “stifle” the client’s vision at the front end, before valuable resources are employed in such a useless task.

          1. 13.1.1.2.1

            The lawyer who prosecuted them would be doing the client no favor

            That very much depends on a number of factors not discussed here.

            As usual, Greg’s too full of himself and his Sport-of-Kings Big Pharma views.

            1. 13.1.1.2.1.1

              I takes Greg’s comments as acerbic sarcasm, particularly when read in context with TP’s comment at 12.

              1. 13.1.1.2.1.1.1

                I would not take Greg’s comments so.

                First, had he wanted to reply (in context) to comment strong 12, he could have done so directly.

                Second, Malcolm (TP, aka toilet paper, aka p00py diaper), is someone that Greg supposedly has on “do not show,” so Greg would not see that context.

                Third, your “take” appears to hand wave away any actually meaning in Greg’s post. Instead, my take is closer to the mark, as Greg is climbing atop his pedestal to denigrate those seeking a patent to something that he does not see value to (and to which, such a decision by the client may have a host of value points — even if not asserted singularly).

          2. 13.1.1.2.2

            “More than a few of our more persuasive colleagues are probably able to talk their way past an obviousness rejection of these hypothetical claims. Pity, that.”

            Pity? Such would be a deliberate result from the way the system was designed. Don’t hate the results if you like the game.

    2. 13.2

      Paul, to your first question, I would hazard a “yes” reply.

      As to “aggregation claims” (as I recall, I believe it was Random that pointed out that the MPEP actually allows such claims — there is no “synergy” requirement — and certainly, such claims do not de facto
      f
      a
      i
      l
      101.

  5. 12

    1. Claim 1 fails §101 as not useful: exercise instruction displayed as described cannot be read in real-time while using a trampoline.
    2. A “mini-trampoline” could be considered indefinite if not properly supported in the specification. Another laundry-list deficiency: the touch-screen device and the mini-trampoline are functionally-unrelated (this deficiency is corrected in claim 2).
    3. Claim 1 fails §102 as it is a mere list of two functionally-unrelated known elements. Claim 2 may survive §102 but may be hit by §103.
    4. GummyBearCo’s trampoline does not read on claim 1 and is therefore not infringed. And its design is useful…
    5. Another requirement, seldom listed by patent attorneys, is that the claim should be essential, i.e. hard to design around. In this case, the “touch” in “touchscreen” is nonessential – “screen” or “electronic display” could do better.

    1. 12.1

      You really have no clue as to what you are talking about, do you?

  6. 11

    1) Yes. See question #4 “Five years later … Crunch has obtained his patent exactly as claimed”

    Unlike questions 2 and 3, Question 1 wasn’t phrased seeking comments as to what could be the rejections under 101. It simply, and unambiguously, asks whether claim 1 is directed toward eligible subject matter. Question 4 answers question 1.

    1. 11.1

      Does it?

      One could argue that the presence and level of statutory presumption of validity has been rent asunder and that merely being granted does NOT mean that the answer to one is “yes” (the courts have tossed cases on the pleadings based on “invalidity due to non-eligibility” of granted patents, so your premise does not hold).

      Whether it should hold is a different matter.

      1. 11.1.1

        I agree in part and disagree in part. The patent is issued and the statutory presumption has not been repealed. 101 can’t be raised at the PTAB. So an issued claim has 1) gotten through the patent office and 2) can’t be invalidated using this reasoning by the PTAB. You are correct it could be shot down by the courts. So this patent is presumed to be 2/3 valid?

        In view of the exam, the question wasn’t whether do you think that the claims would ever be held invalid under 101, and if so, what are the arguments against patentable eligibility. Rather it simply asked whether claims directed toward eligible subject matter. Prof. Crouch’s premise in question #4 answered that question.

        1. 11.1.1.1

          Not so fast – the question is a legal one, and the “in front of the PTAB” is not dispositive of the ‘final’ answer to that question.

          So, NO – just because the claim has made it through (five years later), does NOT give you the answer that you think that you have.

          The question is NOT “does the patent office during its initial examination feel that the claims are directed to eligible subject matter.”

    2. 11.2

      Question 4 asks whether there is infringement. Infringement and validity are separate questions. Commil USA, LLC v. Cisco Systems, 575 U.S. 632 (2015). One cannot infer a favorable answer to question 1 from question 4.

      1. 11.2.1

        Yes – infringement and invalidity are separate issues. I am not getting into the legal issues. I am addressing the format of Prof. Couch’s quiz.

        The premise of question 4 provides the test taker additional facts relevant to question 1. The patent was granted. Question 4 should have been reworded if Prof. Crouch wanted his students to address each question independent of the other questions. Q1 should have had a qualifier in that it should have said ignore any facts provided in the remaining questions when answering Q1.

        Further, Q1 should have been worded to prompt arguments, e.g., what type of arguments are there for and against patent eligibility. The way the question is worded asks the student to predict the finality of prosecution and/or eventual litigation. The question asks the student to be the examiner or judge and determine the outcome. I am not the only one that reads the question this way as others on this thread went off on this tangent too, see e.g. “depends on which CAFC panel…,” etc.

        Furthermore, Prof. Couch, in all likelihood, has an opinion on what the outcome should be. Will students be graded based on how close they come to Prof. Couch’s preferred outcome (confirming his inherit bias) or will they be graded on how the student cited to legal support for the outcome the student predicts? The way Q4 is worded seems more like the former than the latter.

        Law school should teach students to analyze every situation six ways to Sunday and be able to support each of those positions. They should not be direct to a predetermined path.

        1. 11.2.1.1

          xtian,

          I give you the slight edge over Greg in the view of ‘all pertinent facts,’ and that Q4 adds ‘context’ to Q1.

          Greg’s point about infringement and invalidity does miss (he overreads the context, and while true that infringement and invalidity are separate issues, the call of the question is not whether or not they are separate issues).

          That being said, you seem to still be a bit confused as to the answer to Q1. See my reply above.

          Separately, I do note that your reference to my other comment (panel dependence) does appear to make it seem that you are leaning towards my answer.

          Lastly, I could not agree more as to what (and how) law school should be teaching, but will note that law school is very much afflicted with the Academia capture of the Liberal Left, and that most all classes (as I recall – it’s been some time now) geared better grades to how students best parroted back to the instructor that instructor’s philosophical beliefs.

          One only has to look at the vast bulk of advocacy done by law school academia to see that critical thinking has taken a back seat to herd mentality.

          1. 11.2.1.1.1

            Like you have *actually* looked at the “vast bulk” of such advocacy. Don’t pretend. Plenty of great, top-notch lawyers are graduating every year. Sure, there are lots of bad ones too, but not many of those are going to get very far in a career in big time patent litigation.

            1. 11.2.1.1.1.1

              This is about the teachers and not the students — maybe look before you jump…

  7. 10

    When I started in this business we used to come across patents for claims like “Item A attached to (or comprising) item B.” For example “a diaper comprising an absorbent layer attached to a film layer. The claim never got around to saying where the attachment point relative to both layers was so the diaper design needed input from the specification. The patent would issue anyway. The drawing here is clear how the handle and support handle and grip bar are attached. So the claim is guilty of being too broad, but indefinite? Has anything changed in the patent world of indefiniteness? I have known examiners since my diaper days that would reject claim 1 for this reason.

    The claim is clearly a 103 rejection. Especially since KSR. It is a combination of elements that are each used for what they are designed to do outside of the claimed article. Any POSITA could come up with it.

  8. 9

    I’m thinking the fictitious Prof. Crunch is the more-buff version of the author of the question. 112(b): if “mini” is not explained in the spec, it is a relative term and PHOSITA would not know the boundary between a mini-trampoline and a non-mini-trampoline. In regard to people’s comments about 112(f), “software” is not a nonce word as would be, e.g., “module”. Software as I see it does not rebut the presumption that 112(f) is not to be invoked. Just MVHO.

    1. 9.1

      Given that this is an academic exercise, any 112(f) discussion would need be CONCISELY tied to the possible path to 112(a)/(b) that such an optional choice may present (one is allotted all of 80 words there).

  9. 8

    Follow-on question:

    How are your answers changed based on a spectrum of CAFC panel members that may be assigned to an appeal?

  10. 7

    Another potential 112(b) issue that I haven’t seen in the comments so far is the ambiguity in the second limitation. What includes the grip bar, the support handle or the mini-trampoline itself?

  11. 6

    112- The grip bar needs to be included before mentioning ‘secured to’ since it is a part of support handle. Otherwise broad, then narrow since it has an ‘outside the limitation’ gap.

  12. 5

    Q1
    Mini-tramps. with handles were “already available.” (Discl.). Therefore, Steps One and Two of Alice/Mayo disregard the mini-tramp and the handle. Yu v. Apple, Inc (Fed. Cir 2021).

    What is left is a controller that collects, analyzes, and displays exercise data. The collection, analysis, and display of data is an ineligible concept, no matter how “desirable” the data is. Elec. Power Grp. (Fed. Cir. 2016).

    Therefore, the claims fail Steps One and Two.

    Q2
    Disagree that “mini-tramp.” is necessarily indefinite. Depends on whether this is a class of known structures to a POSA. Agree that the controller is indefinite because the discl. does not provide an algorithm. See Comment 1.1.1.

    Q3
    102: No.
    103: Yes.

    Q4.
    Maybe. Depends on whether a “pole” performs the same function as a “handle.” This is a factual question for the jury.

    But this will not get to a jury. By pushing for a broad construction of “handle,” the patentee will lose whatever small chance existed surviving summ. j. on § 101.

    Comment
    The client had a shot of a patent eligible claim on the “higher end” model with sensors located in a particular place and/or with a particular user-interface for displaying synchronized bouncing tempo. McRo (Fed. Cir. 2015). If the attorney neither disclosed this model nor claimed it, then the client should fire the attorney, hire a new attorney, and file a CIP. Hopefully the client hasn’t offered the “higher end” model in the meantime.

    Comment 2
    This is a description of what the law is, not what it should be.

    1. 5.1

      “[M]ini-tramp”[’s]… indefinite[ness d]epends on whether this is a class of known structures to a POSA.

      Fair enough, if you want to try to make that argument. I would despair of convincing the Markman judge that the whole human race is not composed of “PHOSITA”s in the “trampoline arts” (whatever those are). The fact that I could not convincingly argue that there is a specialized class of “trampoline PHOSITAs,” however, does not mean that you cannot.

    2. 5.3

      The collection, analysis, and display of data is an ineligible concept, no matter how “desirable” the data is. Elec. Power Grp. (Fed. Cir. 2016).
      That is a misrepresentation of the holding of Electric Power Group. However, it is not a misrepresentation of how Electric Power Group is being applied.

      1. 5.3.1

        That is a misrepresentation of the holding of Electric Power Group. However, it is not a misrepresentation of how Electric Power Group is being applied.

        I think it is accurate to say that *conventional* analysis is either ineligible subject matter or not significantly more. That being said there isn’t really “analysis” in the instant claimset, it’s just interpretation of the sensor signal, which falls under conventional collection.

        1. 5.3.1.1

          I think it is accurate to say that *conventional* analysis is…

          You need more than merely ‘saying’ it. Given that Berkhemier is still good law, and that the Office protocols remain binding on examiners to do MORE than merely find 102 or 103 type of art (remember, ‘conventional’ is for the entirety of the ordered combination and not just a piece part analysis, AND it requires an APA level showing of being widespread, not merely extant).

          But why let those irritating details bother your views, eh?

        2. 5.3.1.2

          This is from Electric Power Group:
          Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.

          Here is another quote:
          The claims in this case do not even require a new source or type of information, or new techniques for analyzing it. … As a result, they do not require an arguably inventive set of components or methods, such as measurement devices or techniques, that would generate new data.
          They do not invoke any assertedly inventive programming.

          And another:
          The claims at issue do not require any nonconventional computer, network, or display components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed information collection, analysis, and display functions “on a set of generic computer components” and display devices.

          If one reads the ENTIRETY of Electric Power Group (rather than just “the collection, analysis, and display of available information” that is commonly cited), there are plenty of opportunities to argue that the facts of your case are distinguishable over Electric Power Group. However, the PTO and the Courts have mostly ignored these additional considerations that were presented in Electric Power Group. I suspect that this was intentional on the part of the Federal Circuit. They issue a precedential decision that was narrow on its face but subsequently expanded upon it by omitting the narrowing aspects of it.

          This is part of the reason why the Federal Circuit case law is hopelessly irreconcilable. Narrow holdings get broadened over time and overlap holdings that stand for opposite things. This is how Dennis can provide an example of a trampoline and legitimately ask whether it is directed to patent eligible subject matter. Had Dennis asked this question 10 years ago, the answer would have been — “of course it is.” Today, we have an extensive debate over it.

          This is the 21st century. Excluding pharmaceuticals and products with lineage going back a couple hundred years ago, a large portion of patentable products involve computers. The average new car has 100 different computers and high-end vehicles have as many as 200, which run 100s of millions of lines of code. How much of a car is patent eligible?

          Any sophisticated process these days is computer controlled. Does the presence of a computer negate patent eligibility?

          Should the patent system exist to protect staplers and hole punches but not self-driving vehicles?

          1. 5.3.1.2.1

            That you even have to ask these questions bespeaks an illicit propaganda campaign and corruption of the patent system driven by the Tech oligarchs and the mindless lemming crowd.

          2. 5.3.1.2.2

            “Should the patent system exist to protect staplers and hole punches but not self-driving vehicles?”

            That seems to be conform with what’s most important. After all, the patent bar didn’t complain when Iancu increased the time to examiner staplers and decreased the time to examine self driving cars.

            1. 5.3.1.2.2.1

              After all, the patent bar didn’t complain when Iancu increased the time to examiner staplers and decreased the time to examine self driving cars.

              STOP trying to make your internal metrics to be MY problem.

              My clients do NOT pay for ‘x’ amount of examiner time – we pay for examination on the merits regardless of your efficiency or lack thereof.

            2. 5.3.1.2.2.2

              After all, the patent bar didn’t complain when Iancu increased the time to examiner staplers and decreased the time to examine self driving cars.
              Do you think the patent bar is monitoring these specifics?

              1. 5.3.1.2.2.2.1

                You are talking to a disgruntled patent examiner who wants to displace his angst about the lack of his Union supporting him and make that (somehow) a job of the patent bar.

              2. 5.3.1.2.2.2.2

                Perhaps not.

                But your comment helpfully demonstrates the lack of interest that I was referencing.

                1. ..and your comment begs the question as to why in the world would any such interest be pertinent to anything.

          3. 5.3.1.2.3

            If one reads the ENTIRETY of Electric Power Group (rather than just “the collection, analysis, and display of available information” that is commonly cited), there are plenty of opportunities to argue that the facts of your case are distinguishable over Electric Power Group. However, the PTO and the Courts have mostly ignored these additional considerations that were presented in Electric Power Group.

            Yes and no. In a system like this the independent claim almost always claims the functional act of achieving a result rather than the structural feature of applying a particular algorithm. Moreover, when you go into the specification it will likely have no technical teaching as to how to do the act either. Therefore I suspect we recognize the same path for eligibility, but in many specifications that path doesn’t exist. Claiming the functional result of the analysis means you are either relying upon conventional analysis (which moots your eligibility argument) or setting yourself up for an enablement rejection.

            I suspect we both agree that unconventional analysis can be eligible subject matter, but I suspect we disagree as to how many applications assert a claim to unconventional analysis. But so to is it accurate to say (as I say above) that writing code that merely digitizes the otherwise analog analysis that conventionally occurred in the human mind is generally ineligible, unless the act of coding itself requires an inventive leap (see, e.g., McRO’s translation of gut instinct of the shape of a mouth to computerized logic commands).

            But again in this claim there is no analysis. It’s not like the system uses the sensors to monitor your form and offers correction (at least then we’d have a fact question about whether it was conventionally done by a human instructor). The claim is merely interpreting sensor data. That’s not even data analysis. That’s just data collection.

            How much of a car is patent eligible?

            This is rarely the question though. A great many of the applications that I have seen abandoned contained eligible and patentable subject matter, it’s simply that it was of a limited scope that the applicant didn’t want to pay to protect. Most new cars will provide google maps-style driving directions for you, and there are hundreds or thousands of ways of selecting a route and estimating how long it will take to traverse it, but nobody will seek a patent for *their algorithm* (which is the only thing they invented) because it is too easily designed around. Consequently there’s a hundred applications on *the function* of calculating a route and estimating the time. Those aren’t patentable or even eligible.

            Any sophisticated process these days is computer controlled. Does the presence of a computer negate patent eligibility?

            No, but most “sophisticated” processes today are simply automated manual processes of yesteryear, with varying levels of difficulty in the automation. When the automation is difficult, a broad scope is foreclosed by enablement, and when the automation is not, a broad scope is foreclosed by judicial exception. The important thing is that one person who invents one manner of doing something isn’t granted all manners of doing something.

            Should the patent system exist to protect staplers and hole punches but not self-driving vehicles?

            If someone wanted to truly disclose their algorithm for causing a vehicle to self-drive and was content to take a patent on their algorithm, they would assuredly get it. But an inventor today fears that in disclosing their algorithm, someone will come up with a better one, and their scope will not be infringed upon. That’s probably true, because it is unlikely any given person has determined the ideal self-driving algorithm – not everyone in Edison. But a superior algorithm being non-infringing is not a flaw in the patent system, it’s the point of it.

            1. 5.3.1.2.3.1

              ^^^

              Yet again, Random shows his lack of understanding of the Ladders of Abstraction (there are more than a single rung on that Ladder), and also misses the equivalency inherent in Math (the philosophy) as one of the triad of math, applied math and Math.

    3. 5.4

      1) Mini-trampolines with handles were already available and the collection of data is an ineligible as a judicial exception, but the claim, when taken as a whole, amounts to significantly more than a judicial exception, doesn’t it? A mini-trampoline with touch-screen electronic devices were not available previously, so the claims seem to amount to more than a judicial exception. For claim 1, isn’t the data collection merely a functional limitation, which could cause tons and tons of 102(and 103 issues), but would it make a difference from a 101 perspective?

      2) Are mini-trampolines well known in the art? If they aren’t the claims are indefinite. Plus, the functional limitation would definitely cause a 112(f) issue. While a PHOSITA would “probably” understand the specific structure intended by the claim language by considering most reasonable interpretations, the spec doesn’t enable it because the the Law says that the examiner must construe the claim based on the BROADEST reasonable interpretation, not the majority of reasonable interpretations. The Broadest Reasonable Interpretation of that functional language refers to devices that the spec simply does not enable for a PHOSITA.

      3) Yeah, 103 creates significant hurdles to patentability, and 102 could as well. Per the BRI standard, that functional language in claim 1 could be construed so broadly that other inventions anticipate it. However, the 103 issues are far more likely. The elements could be obvious to combine to a PHOSITA, and the results of such a combination would be very predictable. The predictability of the combination to a PHOSITA indicates obviousness.

      4) Probably not. Unless a PHOSITA would construe the “mini-trampoline” of the spec as including a 15-foot trampoline, the inventor or assignee would have to rely on the Doctrine of Equivalents, which is a really low percentage strategy.

    4. 5.5

      Conventional is NOT an out from the Office protocol of prong two.

  13. 4

    Ugh! Have to take the current law and follow the CAFC. There is no eligible subject matter. Stringing together mere ideas or concepts is not an invention. Claims 1 & 2 require lots of ‘skilled in the art’ development to make a useful, nonobvious, definitely disclosed, patentable invention.

    1. 4.1

      follow WHICH panel of the CAFC? See post 6.

      It does not do anyone to ignore the elephant of the Gordian Knot that exists.

  14. 3

    1. Trampolines rely on gravity.

    2. Gravity is abstract.

    3. The alleged “something more” is merely the “same ol’, same ol’.”

    Ineligible.

    Have a nice day.

    — Your Friendly Neighborhood CAFC

    1. 3.1

      There’s clearly a colorable judicial exception argument to be made here though, so…

  15. 2

    Do you take off or give points for construing “configured with software” and configured to use the data” in 112f? Same question about them being a 112b (regardless of being in 112f)? To me Question 2 needs a lot more than 80 words unless you view mini as the only possible 112b problem – maybe the question is so worded that its possible to say that mini is sufficient to reject claim 1 and there may also be other reasons.

  16. 1

    Surely we need more info about the spec, no? Claims must be construed in view of the spec. How can we know how to construe the claims without more info about the content of the written description? Is there, perhaps, a definition of “mini-“? Are any of those “known” algorithms set out in the written description text? This info could be outcome determinative.

    1. 1.1

      Although those are good questions, they doesn’t get you a very good grade without “something more.”

      1. 1.1.1

        Ha! Well, I will make a few assumptions along the way to a more fulsome answer. (Also, the figure does not display on my end, so to the extent that it is important, it is also missing info.)

        1) Yes, the claims are directed to eligible subject matter. The invention, such as it is, appears to consist of the combination of the handle (for safety) with the exercise trampoline. This is an article of manufacture—one of the enumerated categories of eligible subject matter. The claim is clearly not intended to preempt the mere idea of improving safety on an exercise trampoline, but rather claims a particular structural mechanism for achieving that improved safety.

        2) Claim 1 is likely indefinite for two reasons. First, the precise boundary between the subgenus “mini-” trampolines and the broader genus of “trampolines” is not clear (assuming that this distinction is not defined in the spec). Second, although “a touch-screen electronic device… configured with software for displaying real-time exercise instructions,” is not presumptively a §112(f) limitation, under Williamson, a defendant would be entitled to a §112(f) construction if the defendant requests it (the limitation recites a function without also reciting structure sufficient to achieve that function). Assuming that there is no supporting structure in the spec (i.e., a disclosed algorithm), this limitation is indefinite.

        1. 1.1.1.1

          1) I think the judicial eligibility question would turn upon the digitization of the historically analog exercise instructor, don’t you think? i.e. they took exercise instruction and “did it on a computer” using “only conventional computer hardware.” The givens say that mini-trampolines with handles were already available, so that is missearching for what the claims are “directed to” to discuss handles as a means of safety. Then you have to opine upon whether the conventional sensors that provide information that the analog exercise instructor would not normally have make a distinction for Claim 2. I would call them both ineligible, but if there was a tie that varied the instruction based upon the sensed/calculated data Claim 2 would have a eligibility case based on Diamond v. Diehr.

          2) Agree, but also you have to consider if the functional language is definite even outside of 112f, which means you have to run the tripartite analysis of mpep 2173.05g even if you don’t find it to be in means plus.

          1. 1.1.1.1.1

            but also you have to consider if the functional language is definite even outside of 112f,

            …hmm, this seems to acknowledge my own points on the topic.

            As I have noted, see Orthokinetics, Inc. v. Safety Travel Chairs, Inc. 806 F.2d 1565 1986.

          2. 1.1.1.1.2

            [T]he… eligibility question would turn upon the digitization of the historically analog exercise instructor…

            I guess this could be so. That seems to be making the question more complicated than it needs to be, but so much §101 case law seems to be needless complexity for its own sake. You may well be correct that the “right” way to do the analysis here is to force it into an “abstract ideas” frame (along the same line as Chamberlain), and then conclude that the claim as a whole lacks the “something more” to rescue it.

            1. 1.1.1.1.2.1

              Define “something more.”
              Heck, define “abstract.”

            2. 1.1.1.1.2.2

              One more thought: Electric Power Group concerned a method claim, while this hypo concerns a claim to an article of manufacture. I do not mean to argue that EPG is a wholly irrelevant precedent for thinking about how one would characterize and analyze how to think about the “abstract idea” if you believe that there is an abstract idea here at all. I do not think, however, that it is helpful to reach straight for EPG when deciding whether the claim is “directed to” an abstract idea.

              Rather, the most tangibly relevant precedent here is Chamberlain Group, which claims an article of manufacture, but which was held to be directed to the abstract idea of wireless communication. I think that Prof. C’s trampoline is meaningfully distinct from Chamberlain Group’s garage door opener. In that case, the patentee may well have had a non-obvious advance over the prior art, but they were hiding the ball by claiming a garage door opener rather than a method of wireless communication in garage door openers, presumably because they knew that such a method claim would be held ineligible. The Chamberlain Group court was saying, in effect, “we see through your ruse, and will not let you draft around the defect.”

              Here, however, Prof. C. is not hiding the ball. He has “invented” (such as it is) something obvious. He has not made a non-obvious advance over the art in an ineligible category, but rather has made no advance over the art in an eligible category. Therefore, it seems to me that the right way to analyze his claims is to consider them as “directed to” the eligible category of “articles of manufacture,” but then to tank them on obviousness grounds.

              1. 1.1.1.1.2.2.1

                Not buying that load, Greg.

      2. 1.1.2

        I think this is the funniest comment I’ve ever seen on this board.

      3. 1.1.3

        3) The givens tell us that we are not aware of “any prior art that combines everything together in this particular way,” so there are no grounds here for us to suppose a §102 problem. Because the claimed invention merely combines an assortment of known integers, each of which functions exactly the same way that it would function in its prior art context, the claims should not survive challenge on §103 grounds under either Great A&P Tea Co or KSR.

        4) The CN manufacture is not an obstacle to establishing infringement under §271(a) (we are told that the competitor trampoline is “sold in the USA”). However, assuming that the industry does not characterize 15 ft diameter as “mini-,” the competitor trampoline will not literally infringe, as they do not satisfy the “mini-trampoline” limitation. Nor will the competitor infringe on doctrine of equivalents grounds, because it vitiates “mini-” to treat a full size trampoline as if it were a mini-trampoline, so the doctrine of claim vitiation precludes “equivalents” infringement liability. Moreover, for the §103 & §112(b) reasons above, the claim would be held invalid in any event.

      4. 1.1.4

        Those word limitations will impede students keen to provide an analysis that sets out the appropriate test(s) and applies the facts to those tests with more than cursory reasoning.

        I think it would be especially challenging in Question 4 to walk through the jurisdictional question, evidentiary burden, the test for direct infringement, mention the role of claim construction w/r/t whether the “differences” are nonetheless covered by a likely construction, deal with DOE, and circle back to whether it makes strategic/legal/business sense to pursue the issue before the ITC instead of district court and why.

        But I’m also sympathetic to the way word limits and multiplication work when trying to grade exams in a timely manner. It’s also been a while since I’ve been in law school, so maybe things have changed w/r/t what is or isn’t a sufficient answer.

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