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You should be able to answer the following questions easily: 

Professor Crunch stays healthy with his rebounder (mini trampoline). These already exist, but Crunch designed a new model that includes a handle (for stability) and a touch screen control that can be used to stream audio/video commands. (As shown below). He plans to sell a higher-end model that includes the display of bounce speed and energy application (using rubber bands or motion sensors in springs) on the screen.

Crunch recently filed a utility patent application with the U.S. Patent and Trademark Office (February 2021), seeking to patent the following two claims:

Crunch admits that all elements of his invention are individually available in the prior art. In particular, mini trampolines with handles are available, as well as touch screens for displaying real-time instructions. Similarly, motion sensors can be used, as well as algorithms for calculating energy usage when trampoline. However, he has not seen any existing technology that combines everything together in this particular way.

Question 1. (100 words) Does Crunch’s statement address eligible topics?

Question 2. (80 words) Briefly explain why the USPTO should reject claim 1 for an indefinite period.

Question 3. (300 words) Based on what you know so far, does Article 102 or 103 set any barriers to patentability?

Question 4. (100 words) Five years later... Crunch obtained his patent in full accordance with the above requirements, and his business is booming. Crunch recently discovered that GummyBearCo is selling a product that he believes infringes his claim 1. The only difference is (1) it is a large 15-foot trampoline and (2) it does not have a "handle". Instead, the screen is simply mounted on a pole on the edge of the trampoline. In addition, although GummyBearCo products are sold in the United States, it is actually manufactured in China. Can he prove the infringement?

Professor of University of Missouri School of Law. View all posts by Dennis Crouch →

1) Yes. See question #4 "Five years later... Crunch obtained his patent exactly as claimed"

Unlike Questions 2 and 3, the wording of Question 1 does not seek comment on what the refusal under Item 101 might be. It simply and clearly asks whether claim 1 is aimed at eligible subjects. Question 4 Answer question 1.

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Someone might argue that the existence and level of the presumption of legal validity have been divided, and just being granted does not mean that the answer to a person is "yes" (the court threw a case on the petition based on "non-litigation invalidation" -Qualification for granted patent", so your premise does not hold).

Whether it should remain is another matter.

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I partly agree and partly disagree. The patent has been issued, and the statutory presumption has not been abolished. 101 cannot be filed in PTAB. Therefore, the issued claims 1) have passed the Patent Office, and 2) cannot use this reasoning of PTAB and become invalid. You are right, it may be rejected by the court. So this patent is presumed to be 2/3 effective?

In view of the exam, the question is not whether you think the claim will be deemed invalid under 101. If so, what are the arguments against patentability. Instead, it only asks whether the claims are directed to eligible subjects. Professor Crouch answered this question on the premise of question #4.

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Not so fast-this question is a legitimate question, and "in front of the PTAB" does not determine the "final" answer to this question.

So, no-just because the claim has passed (five years later), it doesn't give you the answers you think you have.

The question is not "Whether the Patent Office considers that the claims are aimed at eligible subjects during the initial examination".

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Question 4 asks whether it is infringement. Infringement and validity are different issues. Commil USA, LLC v. Cisco Systems, 575 US 632 (2015). A favorable answer to question 1 cannot be inferred from question 4.

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I think the fictitious Professor Crunch is a more advanced version of the author of the question. 112(b): If "mini" is not explained in the specification, it is a relative term, and PHOSITA does not know the boundary between mini trampolines and non-mini trampolines. Regarding people's comments on 112(f), "software" is not a temporary term like "module". In my opinion, the software does not refute the assumption that 112(f) will not be called. Just MVHO.

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Since this is an academic exercise, any 112(f) discussion needs to be related to the possible path 112(a)/(b), that is, such optional options may appear (in which all 80 words are assigned).

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How does your answer change based on the range of CAFC panel members that may be assigned to the appeal?

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So far, another potential 112(b) problem that I haven't seen in the comments is the ambiguity of the second restriction. What includes the grip, support handle or the mini trampoline itself?

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112- Need to include the grip bar before mentioning "fixed to" because it is part of the support handle. Otherwise wide, then narrow, because it has a gap of "beyond the limit".

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Q1 Mini hobo. The handle is "already available". (CD). Therefore, the first and second steps of Alice/Mayo ignore the mini hobo and handle. Yu v. Apple, Inc (Fed. Cir 2021).

The rest is the controller that collects, analyzes, and displays exercise data. The collection, analysis and presentation of data is an unqualified concept, no matter how "ideal" the data is. Electronic Power Pack (Federal Reserve. Cir. 2016).

Therefore, the claim failed to pass the first and second steps.

Q2 Disagree with "mini hobo". It must be uncertain. It depends on whether this is a known structure of POSA. Agree that the controller is uncertain because of the disc. No algorithm is provided. See comment 1.1.1.

The fourth quarter. maybe. It depends on whether the "stick" performs the same function as the "handle". This is a question of fact for the jury.

But this will not be handed over to the jury. By promoting the extensive construction of the "handle", the patentee will lose any small chance of surviving. j. In Article 101.

The review client photographed the claims that comply with the patent requirements on the "high-end" model, the sensor is located in a specific location and/or has a specific user interface for displaying the synchronized bounce rhythm. Mike Rowe (Fed. Cir. 2015). If the lawyer neither discloses the model nor declares it, the client should fire the lawyer, hire a new lawyer and submit a CIP. Hope that the customer did not provide a "higher-end" model during this period.

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

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"[M]ini-tramp"['s]... Not sure [ness d] depends on whether this is a known structure of POSA.

Quite fair, if you want to try to make this argument. I will desperately convince Judge Markman that the entire human race is not made up of the "PHOSITA" (whatever it is) in "trampoline art." However, I cannot convincingly argue that there is a special kind of "trampoline PHOSITA". The fact that you cannot.

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Do a good job on McRo. Quote t0 bounce temp0...

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The collection, analysis and presentation of data is an unqualified concept, no matter how "ideal" the data is. Electronic Power Pack (Federal Reserve. Cir. 2016). This is a misrepresentation of the power group holdings. However, this is not a misrepresentation of the power group's application methods.

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This is a misrepresentation of the power group holdings. However, this is not a misrepresentation of the power group's application methods.

I think it can be accurately said that *traditional* analysis is a substandard subject or no more. Having said that, there is no real "analysis" in the instant claim collection, it is only the interpretation of the sensor signals, which is a routine collection.

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"I think it can be accurately said that *routine* analysis is..."

You need more than just "speak." Given that Berkhemier is still a good law, and the Office agreement is still binding on examiners, they have to do more than just find 102 or 103 types of art (remember, "regular" is for the entire orderly combination, and It is not just a partial analysis, and it requires an APA level to show its widespread existence, not just existing).

But why let those annoying details interrupt your point of view, eh?

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This is from the Electric Power Group: Although lengthy and numerous, these claims do not go beyond the scope of requiring the collection, analysis and presentation of available information in a specific field, but rather describe these functions in general, rather than restricting them to tasks. Technical means. These functions can be said to be superior to traditional computer and network technology.

Here is another quote: In this case, the claim does not even need a new source or type of information, or new technology to analyze it. ...Therefore, they do not need a set of arguably creative components or methods that can generate new data, such as measuring equipment or technology. They will not invoke any programming that claims to be creative. Another: The disputed claims do not require any unconventional computers, networks or display components, or even "unconventional and uncommon arrangements of known, traditional components", but only require the implementation of the required information collection and analysis And display "on a set of general-purpose computer components" and display the function of the device.

If someone reads the power group as a whole (not just the commonly cited "collection, analysis and display of available information"), there are many opportunities to argue that the facts of your case are different from those of the power group. However, most PTOs and courts Ignore these additional considerations in the Electric Power Group. I suspect this was deliberate by the Federal Circuit. They issued a precedent decision that was narrow on the surface, but then expanded it by omitting its narrow aspects.

This is part of the reason why the case law of the Federal Circuit is hopelessly irreconcilable. Over time, narrow holdings will expand and overlap holdings that represent the opposite. This is how Dennis provides an example of a trampoline and reasonably asks whether it is for a subject that meets the patent conditions. If Dennis asked this question 10 years ago, the answer would be-"Of course it is." Today, we have a wide-ranging debate on this.

This is the 21st century. Excluding drugs and products that date back hundreds of years, most of the patentable products involve computers. A new car has an average of 100 different computers, while high-end cars have as many as 200, and they run millions of lines of code. How many cars can be patented?

Nowadays, any complicated process is controlled by a computer. Will the existence of computers deny patent qualifications?

Should a patent system exist to protect staplers and hole punches instead of self-driving cars?

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You even have to ask these questions, which show that the illegal propaganda and patent system corruption promoted by technological oligarchs and blind lemming groups.

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"Should a patent system exist to protect staplers and hole punches instead of self-driving cars?"

This seems to be consistent with the most important. After all, when Iancu increased the time to check staplers and decreased the time to check self-driving cars, the patent bar did not complain.

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"After all, when Iancu increased the time to check staplers and decreased the time to check self-driving cars, the Patent Office did not complain."

Don't try to make your internal indicators a problem for me.

My client will not pay for "x" times of examiner time-we will pay for the exam based on your score, regardless of your efficiency or lack of efficiency.

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After all, when Iancu increased the time to check staplers and decreased the time to check self-driving cars, the patent bar did not complain. Do you think the patent bar will monitor these details?

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You are talking to a dissatisfied patent examiner who wants to eliminate his anxiety about the lack of alliance support and make it (in some way) the job of the patent office.

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But your comment helps to show the lack of interest in what I quoted.

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.. And your comment begs the question of why there is any such interest in the world related to anything.

If someone reads the power group as a whole (not just the commonly cited "collection, analysis and display of available information"), there are many opportunities to argue that the facts of your case are different from those of the power group. However, most PTOs and courts Ignore these additional considerations in the Electric Power Group.

Yes and no. In such a system, independent claims almost always claim the functional behavior that achieves the result, rather than applying the structural features of a specific algorithm. In addition, when you enter the specification, it may also not have technical guidance on how to perform the operation. Therefore, I suspect that we recognize the same qualification path, but that path does not exist in many specifications. Claiming the functional results of the analysis means that you either rely on traditional analysis (which simulates your eligibility argument) or prepare to enable rejection.

I suspect that we all agree that unconventional analysis can be a qualified subject, but I doubt that we disagree with how many applications claim to require unconventional analysis. But, to be precise (as I said above) writing code that only digitizes other analog analysis that normally occurs in human thinking is usually unqualified, unless the act of coding itself requires a creative leap (see, for example, McRO will shape the mouth The intuition is transformed into computerized logical commands).

But again, there is no analysis in this statement. It's not like the system uses sensors to monitor your form and provide corrections (at least we have a question of fact whether it is usually done by a human coach). The statement only explains the sensor data. This is not even data analysis. That's just data collection.

How many cars can be patented?

But this is rarely a problem. Many of the abandoned applications I have seen contain qualified and patentable subject matter, but the scope for which the applicant does not want to pay the protection fee is limited. Most new cars will provide you with Google Maps-style driving directions, and there are hundreds of ways to choose routes and estimate transit time, but no one will use *their algorithm* (which is the only thing they invented) because It is too easy to design. Therefore, there are a hundred applications on the *function* for calculating routes and estimating time. None of these have patent rights or even qualifications.

Nowadays, any complicated process is controlled by a computer. Will the existence of computers deny patent qualifications?

No, but most "complex" processes today are just automated manual processes of the past, with varying degrees of difficulty in automation. When automation is difficult, a wide range is enabled and excluded, and when automation is not difficult, a wide range is excluded by judicial exceptions. The important thing is that the person who invented a way of doing things is not granted all the ways of doing something.

Should a patent system exist to protect staplers and hole punches instead of self-driving cars?

If someone wants to truly disclose their algorithm for auto-driving vehicles and is content to apply for a patent for its algorithm, they will definitely get it. But today’s inventors worry that when they disclose their algorithm, someone will come up with a better algorithm, and their scope will not be violated. This may be true, because it is unlikely that any particular person has already determined the ideal autonomous driving algorithm-not everyone at Edison. But the advanced algorithm of non-infringement is not a defect of the patent system, but its focus.

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The routine is not the second fork from the office agreement.

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Ah! Must comply with current laws and comply with CAFC. There are no eligible topics. Stringing together simple ideas or concepts is not an invention. Claims 1 and 2 require a lot of "skills in the art" development to make useful, non-obvious, clearly disclosed, and patentable inventions.

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Which group of CAFC to follow? See post 6.

Elephants that ignore the existence of Gordian’s knot are no good to anyone.

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3. The so-called "more" is just "same ol', same ol'".

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However, there is obviously a colorable judicial exception argument here, so...

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Did you take off or give points for your interpretation of "Configure with software" and "Configure usage data" in 112f? The same question about whether they are 112b (whether in 112f or not)? For me, question 2 requires more than 80 words, unless you think mini is the only possible 112b question-maybe the question is worded so much that it can be said that mini is sufficient to reject claim 1, or there may be other reasons.

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Of course we need more information about the specification, don't we? The statement must be interpreted according to the specification. If there is no more information about the content of the written description, how do we know how to interpret the claims? Is there a definition of "mini"? Are any of these "known" algorithms listed in the written description text? This information may be decisive for the result.

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Although these are good questions, they will not give you a good result without "more things".

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what! Well, I will make some assumptions in the process of getting a more complete answer. (In addition, this number is not shown at the end of mine, so to the extent that it is important, it also lacks information.)

1) Yes, the claims are for eligible subject matter. The present invention appears to be composed of a combination of a handle (for safety) and a sports trampoline. This is one of the listed categories of manufactured goods-eligible topics. Obviously, the claim is not to preempt the pure idea of ​​improving the safety of sports trampolines, but to provide a specific structural mechanism to achieve this improved safety.

2) Claim 1 may be uncertain for two reasons. First, the exact boundary between the subgenus "mini" trampoline and the broader "trampoline" genus is unclear (assuming this distinction is not defined in the specification). Secondly, although the “touch screen electronic device with software for displaying real-time exercise instructions” is not presumed to be a §112(f) restriction, according to Williamson, the defendant will be entitled to a §112(f) structure if the defendant requests (restriction) A function is stated, but there is no mention of a structure sufficient for that function). Assuming that there is no supporting structure (that is, an open algorithm) in the specification, this limit is uncertain.

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1) I think the issue of judicial qualifications will depend on the digitization of historical simulation practice coaches, don’t you think? That is, they receive exercise instruction and "do it on a computer" using "only traditional computer hardware." According to the information given, mini trampolines with handles are already available, so this is a false search for content that claims to be "targeted" discussing handles as a safety measure. Then you must consider whether traditional sensors that provide information that simulated sports coaches would not normally provide make a distinction in claim 2. /calculated data Claim 2 will have an eligibility case based on Diamond v. Diehr.

2) Agree, but you have to consider whether the functional language is deterministic outside 112f, which means you must run the tripartite analysis of mpep 2173.05g, even if you don't find it in mean plus.

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"But you must also consider whether functional languages ​​are certain beyond 112f,"

...Well, this seems to admit my own views on this topic.

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

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[T] He... The qualification question will depend on the digitization of analog practice coaches in history...

I think it might be so. This seems to make the problem more complicated than it needs to be, but so much §101 case law itself seems unnecessary complexity. You are probably right. The "correct" way to analyze here is to impose it into the framework of "abstract thought" (same as Chamberlain), and then conclude that the whole proposition lacks "more things" to save it. it.

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I think this is the most interesting comment I have seen on this board.

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3) The information given tells us that we don't know "any existing technology that combines everything together in this specific way", so we have no reason to assume the §102 problem. Since the claimed invention only combines a series of known integers, the function of each integer is exactly the same as its function in the context of the prior art, so the claims should not be made under Great A&P Tea Co or KSR on the grounds of §103 question.

4) The CN manufacturer did not determine the barriers to infringement according to §271(a) (we were told that the competitor’s trampoline was “sold in the United States”). However, assuming that the industry does not qualify the 15-foot diameter as a "mini", competitors' trampolines will not be literally infringing because they do not meet the "mini trampoline" restrictions. Competitors will not infringe the principle of equivalent reasons, because treating a full-size trampoline as a mini trampoline is invalid "mini", so the principle of invalidation of claims excludes the "equivalent" tort liability. In addition, due to the reasons of §103 and §112(b) above, the claim will be deemed invalid under any circumstances.

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These word limits will discourage students from being keen to provide analysis to develop appropriate tests and apply facts to these tests, rather than just rough reasoning.

I think that it is particularly challenging to introduce in detail jurisdiction issues, burden of proof, test of direct infringement, and the role of claim interpretation (w/r/t) in Question 4. Whether the "difference" is still included in the possible interpretation, Deal with the DOE and then go back to the ITC rather than the district court to track down whether the issue has strategic/legal/commercial significance and why.

But I also agree with the way the word limit and multiplication work when trying to score the exam in time. I have been in law school for a while, so maybe things have changed and I don’t know what is a sufficient or inadequate answer.

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Associate Professor Dennis Crouch, University of Missouri School of Law SSRN article Jason Rantanen University of Iowa School of Law Professor SSRN article guest articles occasionally published by intellectual property practitioners and scholars

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