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mdm
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patentability question
« on: Feb 20th, 2004, 8:05am »
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Thanks in advance to anyone who can provide some insight into this patentability question.  I am currently an unemployed engineer , over 50 years old with very specialized skills in a shrinking industry.   While this idea may be a break I could really use at this time, I would appreciate some feedback on patentability before I invest significantly more time and money into the idea.  It appears that it will cost me about $700 to $1000 just for an initial assessment by an attorney without a search.  I have done the internet search and  I have read some literature on patents but have not seen any guidance about this type of question.  
 
I will describe a hypothetical idea that has many parallels to the one that I have in mind.
 
Consider the old cassette tapes that became a standard form of carrying around our music after 8 tracks died.  In order to carry or store the tapes,  various devices evolved with multiple storage compartments specifically designed to hold the standard cassette tape case.   These devices were sometimes portable cases or perhaps cassette storage compartments built into center consoles in our cars.    
 
Now consider  that you recognize that one could re-design other useful devices to fit in the storage compartments that were designed for cassette tape storage.  For example one might design an ashtray with “nominal” dimensions that are specified to fit into one of the cassette tape storage slots.  Assume no one has made or patented an ashtray with this specific feature before.   Although  prior art may have shown ashtrays that coincidentally could fit into a cassette storage slot, none were specifically designed for such a purpose and they probably would not fit well or perform as well as one specifically designed for the purpose.  The usefulness  of  and ashtray with such a feature (assume it is considered useful) was apparently not recognized.   Obviously there are many different designs for an ashtray that could provide a wide variety of features while still providing the essential element of having a base with dimensions that would allow it to fit snuggly into one of the slots provided for cassette storage and thereby be securely held in place by the snug fit into that slot.    
 
My question is whether a patent could be obtained with the broad claim that the ashtray must have a base with physical dimensions designed to “snugly” fit into the standard  (x in high by y inch wide by z inch deep) cassette holder slot.  Obviously prior art shows ashtrays with a wide range of size and shapes however, assume that none claim to restrict the dimensions to those necessary to allow the ashtray to fit into as cassette tape slot and be securely held by the relatively close fit of the ashtray with the sides of the tape storage compartment.  The patent would have to cover an almost infinite number of embodiments that provide for various shapes and features of the rest of the ashtray.   Obviously I could not describe all of the possible embodiments in a patent application.  
 
Also I expect that I would need to be somewhat  vague in establishing the  physical dimensions of the ashtray base necessary to “snuggly” fit into the standard cassette slot since specifying an exact range of dimensions might be readily circumvented.    
 
Is  “unobviousness” a problem.  If so, is it addressed if there was a real need for this device (or feature) yet the device was not recognized in over 20 years.
 
Is it possible (or likely) to get a patent on this type of feature of an ashtray?  
 
Can the claim be kept broad enough to include all of the possible embodiments and ramifications that include this feature without actually identifying all of them in order to prevent circumvention?
 
Is there a good reference to help determine what types of devices are patentable?
 
Thanks in advance to anyone willing to help me out.  
 
 
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Re: patentability question
« Reply #1 on: Feb 20th, 2004, 10:30am »
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Dear MDM,
 
You've identified probably the core problem in any patent practice and one that practitioners deal with on a daily basis and where most practitioners earn their income.
 
You've got a wide variety of known articles and a wide variety of possible infringers you want to capture.  You need some way to craft a claim that captures all of the potential infringers, avoids the vast array of known articles in a non-obvious manner, and isn't fatally vague.  That pretty much sums up the job description of every patent practitioner.
 
I would approach this problem in a number of ways.  
 
One would be to look at some of the characteristics of the ashtray relative to the cassette.  You mentioned snugness.  You might consider claiming the permissible tolerances about the perimeter of the cassette.  It's unlikely the examiner would find prior art teaching specific tolerances.  Of course, when you get into the business of claiming numerical ranges, you're asking for trouble and a date with the doctrine of equivalents (ever more elusive under the Federal Circuit).
 
You might consider crafting claims to the manner of manufacture.  While some ashtrays may be made to accomodate a cassette incidentally, using a cassette as a form for making the ashtray could be the target of the claims.
 
You might consider crafting claims to the manner of usage.  While ashtrays might be the right size, it's probably non-obvious to store an audio cassette in an ashtray.  If the ashtray manufacturer sells their ashtrays with matierals suggesting that the purchaser store cassettes in them, they've induced infringement (and you can win in court).
 
You might also consider looking at the claiming problem from the other end.  Consider starting from a cassette holder and how it might be adapted to serve as an ashtray.  The end product might be indistinguishable from the ashtray that fits a cassette, but the claim would look different and force a different type of analysis by the examiner.
 
Any of these approaches have to be supported in the specification.  Like I said, this is were patent practitioners really earn their paychecks.
 
Good luck!
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Re: patentability question
« Reply #2 on: Feb 20th, 2004, 10:38am »
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dear mdm,
 
this is really hard to answer without knowing the details but PLEASE do not post any details here.  
 
in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) the U.S. Supreme Court set out some not very useful principles for  determining obviousness (or unobviousness):
 
1. evaluate the prior art;  
 
2. establish the level of a person of "ordinary skill in the art" in the area of the art at the time of the invention;  
 
3. apply 1 and 2 to determine if the invention is obvious.
 
these are the primary factors (which as guidance is  more or less completely useless), but there are also secondary factors such as commercial success, a long-felt and unmet need, the failure of others to fill the need, unusual, or unexpected results, etc.  
 
Is  “unobviousness” a problem?
 
this is just a more awkward way of asking if obviousness is a problem. the short answer is, yes. obviousness is always a problem. the majority of the communications with the examiner deal with obviousness.  
 
If so, is it addressed if there was a real need for this device (or feature) yet the device was not recognized in over 20 years?
 
a long-felt and unmet need works in your favor. an invention could not have been obvious if it was staring everyone in the face for 20 years and no one thought of it.  
 
Is it possible (or likely) to get a patent on this type of feature of an ashtray?    
 
it is almost always possible to get a patent if you add enough limitations to the claim, the question is how broad your protection may be. a very narrow claim which is easy to design around isn't worth much.  
 
Can the claim be kept broad enough to include all of the possible embodiments and ramifications that include this feature without actually identifying all of them in order to prevent circumvention?  
 
this is the 64,000 dollar question. the answer is, it depends.  
 
Is there a good reference to help determine what types of devices are patentable?  
 
look at other patents. this is the best guide there is.  
 
good luck!  
 
regards,  
 
eric stasik
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Re: patentability question
« Reply #3 on: Feb 21st, 2004, 7:06am »
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Dear mdm,
 
If you can find the potential user of the invention and make a confidential disclosure, there may be justification for the patent IF you have an agreement and reward to you.
 
It is a tough one if you spend to get even a good patent, to be able to realize a reward for you.
 
A patent search may give you a better perspective and leads as to where the market place is.
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