It is one again time to take pause and try and have a little bit of fun patent style. From time to time I like to profile specific patents, so what better way to kill two birds with one stone than to look for holiday themed patents? OK, maybe not your particular cup of tea, but work with me here and get into the spirit (pun intended).
Today is Halloween, as if you didn’t already know or figure out. Wikipedia explains: “Halloween (or Hallowe’en) is an annual holiday observed on October 31, which commonly includes activities such as trick-or-treating, attending costume parties, carving jack-o’-lanterns, bonfires, apple bobbing, visiting haunted attractions, playing pranks, telling scary stories, and watching horror films.”
The holiday patent du jour gives us the opportunity to explore the candy collecting aspects of trick-or-treating. More specifically, U.S. Patent No. 7,594,669 is for a portable container having wheels and a handle. What makes it worthy note on Halloween is that the container itself is either a pumpkin, witch, ghost, goblin, monster, vampire or werewolf. And yes, that is required in the broadest claim, claim 1. The pictures in the patent show a jack-o’-lantern version of the invention.
The exclusive rights granted by a patent are defined by the claims and the claims only, so any discussion of what a patent covers should begin with the claims. Claim 1 says:
1. An apparatus for receiving confections during Halloween guising, comprising:
a frame element including a base portion and a side portion including a first side portion and a second side portion;
a container element including an interior surface defining a receptacle and an exterior surface, wherein said container element is in the form of one from the group of a pumpkin, witch, ghost, goblin, monster, vampire and werewolf;
a securing element, wherein said securing element removeably secures said container element on said base portion between said first side portion and said second side portion of said frame element;
a support element with a first end and a second end, wherein said first end of said support element is attached to said frame element and said second end of said support element is attached to a plurality of wheels; and
a projection element to control said plurality of wheels, said projection element including a proximal end and a distal end attached to said frame element.
Not one to pass up a teaching opportunity, this claim uses a Markush group, so let’s discuss.
The Markush group is indicated by the phrase “contain element is in the form of one from the group of a…” Back in the day there was a prohibition against using the word “or” in a claim. So an applicant named Markush tried to come up with a variable format that was the equivalent of using “or,” only without using the word “or” itself. To do this he recited alternatives in the format: “selected from the group consisting of A, B and C.” See Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1925).
Today many people wishing to claim in the alternative will still use the traditional Markush format, but since the USPTO has to accept this contrived alternative phraseology they also now allow “wherein R is A, B, C, or D.” In fact, the following phrases were each held to be acceptable in In re Gaubert, 524 F.2d 1222, 187 USPQ 664 (CCPA 1975): “made entirely or in part of”; “at least one piece”; and “iron, steel or any other magnetic material.”
The members of the Markush group (A, B, and C in the example above) generally belong to a recognized physical or chemical class, but it is enough for the members of the group to possess at least one property in common. Here the Markush group is used to say that the container itself can be either a pumpkin, witch, ghost, goblin, monster, vampire or werewolf. If you were interested copying this invention without directly infringing all you would have to do is use a different container.
Markush groups are favored in chemical and pharmaceutical claims because of the large number of possible combinations. Claims employing a Markush group are, however, fragile. For example, let’s say that a portable Halloween container was known to exist and the point of novelty was the container configurations. If one of the listed container configurations, say the werewolf, were known in the prior art that would mean that claim 1 would extend to cover the prior art, making the claim invalid. This is not such a big deal when noticed during prosecution because you can amend the claim to narrow it to something that does not overlap with the prior art. After the claim is issued, however, it is a bigger deal because even though only one possible alternative would overlap with the prior art the entire claim would be invalid.
Another teaching moment exists thanks to the claim referring to “a projection element.” Do you know what that is? My guess is that you could probably muddle your way through a definition that isn’t too bad, but claims need to specifically point out the claimed subject matter, so what did the inventor want “projection element” to mean?
The Summary of the Invention explains:
The apparatus further includes a projection element, which may further include a gripping element. The projection element, such as an arm or rod, assists in maneuvering, driving or controlling the apparatus, for example pushing and/or pulling. The projection element can be of any size, shape or configuration as well as manufactured of any material, such as plastic, metal, nylon to sufficiently drive the apparatus.
The projection element may further include a collapsed state and deployed state. For example, the projection element can telescope or pivot between the two states. The projection element may further include a locking element, such as a snap-fit fastener, to secure it into either state. The deployed state allows easy maneuvering of the apparatus while the collapsed state is ideal for storage or display of the apparatus. It is also contemplated that the projection element includes a fulcrum element, such as a pin-socket arrangement or lever, so that the projection element can swivel horizontally and/or vertically to assist in maneuvering, driving or controlling the apparatus.
And the Detailed Description says:
The apparatus 100 includes a projection element 140 that further includes a gripping element 150 . The projection element 140 includes a proximal end 144 and a distal end 146 . The projection element 140 is a telescoping rod 142 shown in the deployed state in FIGS. 1 and 2. The distal end 146 of the projection element 140 is attached to said container element 110 . A locking element 148 secures the rod 142 in the deployed state, and can be positioned anywhere on the projection element 140 . Here, the locking element 148 is shown approximately between the proximal end 144 and the distal end 146. The locking element 148 is disengaged to place the rod 142 in the collapsed state (not shown).
The gripping element 150 , here a knob 151 , is located at the proximal end 144 of the projection element 140 and assists in holding or griping the rod 142 for pushing and/or pulling the apparatus 100 . The projection element 140 further includes a fulcrum element 180 shown in FIG. 2 at the distal end 146 , here a pin-socket arrangement 182 , which allows the rod 142 to swivel horizontally and/or vertically for maneuvering the apparatus 100.
While the claims define the exclusive right, the rest of the patent application provides the disclosure that puts the invention into its full context. The Specification can also define terms, imparting the meaning the applicant wants for certain terms used in the claims.
The Summary of the Invention generally discusses the “projection element,” and the Detailed Description particularly points to an exemplary “projection element” by referring to reference number 140, shown in Figs. 1 and 2. Essentially, the projection element is a telescoping arm that is connected to the container. Some may refer to this as a handle. There is no particular magic to the term “projection element.” When drafting a patent application you just give the various pieces and parts names so that it is clear what you are referring to when you discuss the invention later in the claims.