[W]hen there is too much focus upon the details [instead of the claimed subject matter as a whole], it might happen that something that is probably unpatentable might be ruled patentable, and something that most likely is patentable might be deemed unworthy of a patent.
Two matters currently pending before the United States Patent and Trademark Office illustrate the consequences of focusing upon details of a claim rather than upon the claimed subject matter as a whole. Looked at superficially, the decisions may be consistent with the law and supported by substantial evidence; but are they, really?
The Mack Safety Knife
In 2018, Sue Mack filed a patent application for a new kind of knife. The patent application was for a “Bladeless Knife Lacking a Handle” (see Fig. 1 below). Mack touted her purported invention as an article of manufacture that achieved light weight, ease of portability, reduced security concerns at airports and other secure facilities, as well as a “dramatic breakthrough” in safety in comparison with prior art knives.
Claim 1 of Mack’s patent recited an article of manufacture comprising a knife, the knife having a length, the length being under 31 centimeters, the knife further lacking a blade 12 and excluding a handle 14.
The examiner rejected the claims under section 101 as “plainly directed to an abstract concept.” This was the only ground for rejection.
On appeal to the Patent Trial and Appeal Board (PTAB), Mack argued that the claimed invention was not abstract because it was directed to an article of manufacture, with no method steps, and the claims recited structure. Mack further argued that, although there was negative claiming of two of the elements, those negative recitations recited sufficient structure. In addition, Mack urged, the recitation of a length limit supported the argument that there was sufficient structure. While stopping short of saying the idea was patentable, the PTAB agreed that the idea was not properly rejected as abstract. The matter was remanded to the Examiner for further examination.
As of this date, the examiner has been unable to find any analogous prior art in which a knife lacked both a blade and a handle. Mack expects her patent to be allowed.
Mack’s lawyer was asked to confirm rumors that, upon allowance of her client’s patent, Mack intended to sue everyone in the United States in a federal class action for patent infringement. The lawyer had no comment.
The Czervik Golf Gadget
Golf gadgets have long been held to be patentable, although there is some judicial analysis suggesting that game-related inventions perhaps ought not to be patent eligible. “While games may enhance our leisure hours, they contribute nothing to the existing body of technological and scientific knowledge. They should therefore be deemed categorically ineligible for patent.” In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1166 (Fed. Cir. 2018) (Judge Mayer, concurring in the judgment).
Golf gadgets have also been questioned as having no utility, in that some golf gadgets have never been shown to improve any skills or lower a single player’s score.
Al Czervik’s latest golf gadget was different. In his patent application, entitled “Improved Golf Tee,” claim 1 originally read as follows:
- An article of manufacture, comprising:
a golf tee, the golf tee comprising a peg portion (102) and a prop portion (106); and
a jumbo jet (108);
wherein the jumbo jet is physically interposed between the peg portion and the prop portion;
and wherein the jumbo jet is physically coupled to the peg portion and the prop portion.
Dependent claims recited additional features of the invention, such as protective artificial turf pad 114 and a range of passenger capacities for the jumbo jet.
The patent application’s detailed description explained the use of the device:
To use the golf tee article 100, the golfer plants the peg portion 102 in a course tee-off area 104 as shown in FIG. 1, and places the golf ball 112 on prop portion 106 as shown in FIG. 2. The golfer may then “tee off” as usual, striking the ball 112 toward the target hole 110. Properly used, the golf tee article 100 may increase the golfer’s chances of a successful tee shot, as depicted in FIG. 1.
Although Czervik’s patent application noted that his invention had not yet been approved for tournament play, it had the potential advantage of lowering scores by several strokes per round, or even per hole. A further noted advantage was that a golfer could use his golf tee article to fly from city to city.
The examiner rejected all of the claims as obvious.
One piece of prior art was an article from a sports-oriented magazine, which included a photograph showing a professional golfer seated inside a jumbo jet with an ordinary golf tee protruding from his shirt pocket. The examiner pointed out that this photograph showed all of the physical elements of claim 1, though the elements in the photograph were not arranged as in the claim.
The examiner cited U.S. Pat No. 5,911,322 to Lombardo et al. for the proposition that it is known that aircraft can be used with golf tees.
The examiner also cited U.S. Pat. No. 9,833,672 to Montejo, noting that Montejo disclosed a golf tee having a peg portion (bottom section 1), a prop portion (top section 3), with a middle section 2 physically interposed between and physically coupled to the peg portion and the prop portion. The examiner observed that the only difference between Montejo and the article of claim 1 is that the middle section 2 is not a jumbo jet, a difference that the examiner ruled was “a matter of design choice.”
Further, as a motivation for arranging the elements in the manner of the claim, the examiner referred to a published article that said: “Many golfers are on a never-ending quest to improve their skills and their scores, and sometimes that quest involves improving the equipment. Sometimes the quest involves re-designing or rearranging pieces of equipment that golfers have used for years.” The examiner further noted that various published patents and patent applications likewise made note of previous efforts to modify existing golf equipment, including tees, so as to improve a player’s skill, accuracy, and score.
Czervik made numerous claim amendments to try to secure allowance, but his efforts were to no avail. Czervik also tried to argue commercial success favored non-obviousness, averring that the President of the United States has already purchased two of his inventions, and even used the invention to score a double-eagle at an unofficial tournament at Bushwood in 2019. The examiner did not buy that argument, dismissing it in the final rejection by saying: “Selling two items is hardly evidence of commercial success.”
The rejections were made final, and Czervik has appealed to the PTAB, but it is unknown when his appeal will be heard.
In a recent interview, Czervik expressed disappointment in the analysis offered by the examiner, saying that his invention was evaluated piecemeal, rather than as an innovative combination of already-existing elements. Calling upon a passerby behind the interviewer for an independent opinion, Czervik demanded: “Hey! You! In the funny hat! Yeah, you! Can you tell me what in the world could possibly be obvious about a combination golf tee and jumbo jet!?”
Lessons That Might Be Learned
Those who have read this far and who have realized the nature of this essay, will (one hopes) have found the exercise entertaining, and perhaps even a tad enlightening. Evaluation of patent claims ought to look at the claimed subject matter as a whole; when there is too much focus upon the details, it might happen that something that is probably unpatentable might foreseeably be ruled patentable, and something that most likely is patentable might foreseeably be deemed unworthy of a patent.
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