Obscure Patent: Disposable Rainwear

By Gene Quinn
December 6, 2009

Disposable raincoat

US Patent No. 6,658,665 - Disposable rainwear

Disposable rainwear
US Patent No. 6,658,665
Issued December 9, 2003

I have not been doing as many obscure patents as I once did, but I have been increasingly hearing from inventors that they miss this feature because humorous patents coupled with a story provide a good learning opportunity.  That being the case, I will try and write more about obscure patents and couple them with lessons.

This invention relates to outerwear or rain gear in the form of a cone, which is made of a substantially waterproofed material. Substantially waterproof? Who wants to buy a “substantially waterproof” raincoat? Notwithstanding, the use of that term is fine in patent law as long as it provides some relationship that can be appreciated. I don’t want to get too caught up here with legalities and miss the point that this patent covers a cone shaped garbage bag with arm holes and a face hole. In terms of commercial viability the patent explains that just about anyone would be inclined to have a spare disposable raincoat in their pocket rather than carrying around an umbrella all day long. Again, doesn’t a garbage bag work for this? Furthermore, isn’t everything disposable on some level?

The fact that everything is at least on some level disposable is not something to skim over too quickly. In order to qualify for patent protection an invention must be “useful.” The patent idea of what is useful is very different than any real world understanding of what it means to have utility or be useful. The patent laws are set up so as to encourage the progress of innovation and advancement in technology, but not every invention needs to be an advance. This means that it is possible to obtain a patent on an invention that is not as good as other solutions, what is required is that the invention be useful, new and not obvious. Utility is a pretty low hurdle, and is in fact a threshold inquiry. If an invention is useful on any level then we proceed to ask whether it is new and non-obvious. To be useful it must accomplish what you say it accomplishes, and the utility offered (which can be explicitly or implicitly identified) must coincide with what you say the invention is. For example, you cannot say you have a perpetual motion machine useful as a paper weight. If you say you have a perpetual motion machine the invention must provide perpetual motion, which is scientifically impossible based on our current understanding of science and the laws of physics. Nevertheless, this presents a useful learning opportunity. Your invention needs to provide what you say it is, and if you think you have a perpetual motion machine it is either a paper weight or perhaps an amusement device useful for occupying the minds of those who think perpetual motion machines are possible.

Courts have recognized that the term “useful” used with reference to the utility requirement can be a difficult term to define. Courts have used the labels “practical utility,” “substantial utility,” or “specific utility” to refer to this aspect of the “useful invention” requirement of the patent laws, and at least one court has explained that such terms are “a shorthand way of attributing real-world value to claimed subject matter.” So the focus needs to be on the claimed invention, and there must be a utility that is specific to the invention. So no “throw away” utilities. For example, you cannot say your invention is useful because it is capable of being used as landfill, because everything is capable of being used as landfill.

In this particular obscure patent the invention relates to a disposable raincoat. The disposable feature cannot provide the utility required in order to obtain a patent because everything is disposable. Here, while the invention may be silly, there is more utility than just being disposable. The function is the same as any other raincoat. The fact that you can throw this raincoat away after use is not in and of itself enough utility because you could likewise throw an expensive raincoat away as well, although you probably wouldn’t.

Of course, a disposable aspect to an invention may be desirable and could provide utility. As with many things in life it is all in how you characterize what it is that you have. Focusing on something being disposable doesn’t distinguish an invention really, but something that is not normally single-use could. For example, all razors are disposable eventually, but if you were the first to invent a single use razor that was cheap enough to use once and then throw away that would have utility. The key is to focus on aspects that are not shared with all other inventions, or at least to describe the invention in a way that makes the uniqueness stand out. By doing this you will not only enhance patentability, have a better patent application or issued patent, but you will also enhance marketability.

So what does this particular patent actually claim? Well here is the broadest claim from the patent.

What is claimed is:

1. Rain gear comprising:

a cone-shaped outerwear of substantially waterproof material, having oppositely disposed front and back panels, with bottom edges, a bottom opening, and sealed side edges terminating at said opening; said front panel having:

a first perforated area disposed below where said side edges terminate at a top end point, said first perforated area adapted to be removed from the front panel to provide a face opening, and

at least two elongated perforations disposed below said first perforated area, said two elongated perforations adapted to be opened to provide apertures for the arms of the wearer.

I still have to wonder why a garbage back is not a suitable substitute. One thing that inventors should always ask themselves is whether consumers would be willing to pay a premium for the invention compared with what they might pay for other devices that can accomplish the same task. If consumers would not pay a premium then you really don’t have an invention worth patenting. There will be a cost associated with filing and obtaining a patent, so to make the endeavor worthwhile you will need to recoup that expense plus an additional amount to make the investment worthwhile. I am just not sure that consumers would pay a premium in this case, so I have to wonder whether pursuing a patent was the best strategy.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. Josh S. December 6, 2009 10:37 pm

    I actually think that you have conflated two separate kinds of utility recognized by courts: operability and practical/specific utility. When you are talking in terms of perpetual motion machines, you are actually talking about operability, which requires that an invention do what it is claimed to do. Although you discuss the potential market for the invention here, there is no requirement that the patent be practical (e.g., you could patent the process of turning diamonds to coal).

    Specific utility, on the other hand, focuses on how much the inventor knew at the time of application. The standard is that the utility must be specific, substantial, and credible. To be sufficiently specific, the utility must be related to the invention. To be sufficiently substantial, there must be a significant and present benefit to the public from the invention.

    In some countries there is also a beneficial utility requirement, which is a way of smuggling morality into the patent system (when you’re not trying to smuggle it in through patentable subject matter limits). When America had such a requirement, it usually involved machines for gambling, but beneficial utility is no longer a requirement.

  2. Gene Quinn December 7, 2009 9:53 am

    Josh-

    You write as if I have said something incorrect, which we both know I did not. Why?

    You say: “there is no requirement that the patent be practical…”

    In the article I wrote: “The patent laws are set up so as to encourage the progress of innovation and advancement in technology, but not every invention needs to be an advance. This means that it is possible to obtain a patent on an invention that is not as good as other solutions…”

    Did you even read the article or did you rush to get in a comment to get a link back to your website?

    -Gene

  3. IPBloke December 7, 2009 10:32 am

    “I still have to wonder why a garbage back is not a suitable substitute”.
    Not as simple as it appears…as always the devil is in the details. Certainly garbage bags have/are used as raincoats and certainly everything is disposable.
    Your garbage bag might read 102 if your it was cone-shaped and had perforations as described. Probably could find one that is cone shaped but unlikely to find a garbage bag with perforations (rather goes against the purpose of a garbage bag). Your rejection would thus more than likely have to be a 103. If the base reference were just to a garbage bag you would be hard pressed to find a good reason to add perforations to the garbage bag such that it did not destroy the base reference (MPEP 2143.01 section V). But if your base reference disclosed use a bag as a raincoat (not hard to find, as you say this is common) then you could propose a modification under 103 to add perforations for arm and face holes (again findable IMHO). I suppose you could argue that the cone shaped is a design choice however it appears that it has a function as it keeps the face hole in the proper location relative to the face. Just my 2 cents.

  4. Gene Quinn December 7, 2009 12:26 pm

    Bloke-

    You are probably right. I wasn’t trying to comment on whether this should have been patented, but rather trying to talk about whether an inventor should seek a patent. Just because an invention can be described as different and therefor patentable doesn’t mean that consumers will choose to purchase. I think a lot of inventors fail to consider the business side of things.

    Cheers.

    -Gene

  5. Barry December 8, 2009 10:43 am

    A bit harsh Gene? Josh is clearly just trying to clarify that there are different kinds of utility. I was also left with the impression after your piece that you were complaining about the actual usefulness of the invention.

  6. Gene Quinn December 8, 2009 10:57 am

    Barry-

    I don’t think I was harsh, but certainly you are entitled to your opinion.

    The invention is clearly useful in patent terms. Perhaps I could have made that clearer, but here is what is said in the article:

    “Here, while the invention may be silly, there is more utility than just being disposable. The function is the same as any other raincoat.”

    I tend to think this patent is the exact reason we have to deal with KSR now, and likely the exact type of invention that KSR should prevent from being patented. I also still think the inventor made a bad choice in deciding to obtain patent, unless they were looking for validation by the US government and perhaps to frame and hang the patent on the wall.

    -Gene