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Klaus Hoegerl
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claimed: goal
« on: Jun 13th, 2005, 8:11am »
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Hello,
 
during the last 2 years I discovered several patents that have main claims in the wording of goals/problems rather than solutions to this problem. In my understanding, this results in the fact that such a patent claims not only the specific solution (described in the description or in a dependent claim) but  all methods being able to achieve the goal.
 
Fictitious example:
 
Claim 1: Bicycle Frame made from steel, with a weight below 1 lb.  
 
In this example, the inventor was able to construct such a frame by using a new (so far unknown) steel composition.
 
 
In my opinion, the inventor should obtain a patent for steel frames made of the "new" steel composition. He should not obtain a patent for "all" light frames made of steel, which e.g. may also be constructed by a special thermal treatment (which is assumed to be invented later!). For a person ordinary skilled it is clear a light frame is desirable and in some aspect the "goal" depends upon the mechanical properties of the steel material.
 
As a fact, the USPTO has granted many patents similar to the example.
 
Does anyone know case law relating this topic?
 
 
 
KH
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eric stasik
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Re: claimed: goal
« Reply #1 on: Jun 13th, 2005, 8:31am »
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Klaus Hoegerl,
 
You wrote "In my understanding, this results in the fact that such a patent claims not only the specific solution (described in the description or in a dependent claim) but all methods being able to achieve the goal."  
 
This is a common misconception. As far back as 1862 in the case of O'Reilly v. Morse, the U.S. Supreme Court denied the inventor of the telegraph, Samuel Morse a patent on the use of “electro magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances.”  
 
Electricity and magnetism are fundamental principles of nature and cannot be patented, but that was not what Morse was trying to claim. Morse's claim was directed towards a specific USE of electricity and magnetism, but the Court’s ruling was very simple. Morse was indeed entitled to a patent on the use of electromagnetism as developed by him and as described in his patent application, but he that was it.  He could not claim patent rights on things not yet invented and not described in his application.  
 
This is a fundamental truth in patent law - you can only get a patent on what you invent and what you disclose to the public in the specification.  
 
The US courts have gone back and forth over the years with regard to the judicial doctrine of equivalents that extends the inventors patent rights beyond what he literally disclosed. Since the Festo ruling the doctrine of equivalents has been substantially reigned in.  
 
While the claims determine the "metes and bounds" of the patent right, the claims cannot be read independent of the specification, the drawings, and the prosecution history.  
 
I hope this helps.  
 
Regards,  
 
Eric Stasik
 
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JimIvey
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Re: claimed: goal
« Reply #2 on: Jun 13th, 2005, 1:55pm »
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Mr. Stasik gave a good and detailed answer, but I think you're asking about a specific rule about not allowing claims directed to "desired results."
 
Yes, there is such a rule, but I believe it's really more of a guideline.  I don't see it discussed much or in terms of rejections from the Patent Office (I try to avoid "desired results" claims precisely since it's not the way you're suppose to do things, so I don't see those rejections).
 
I honestly don't know if the rule/guideline against "desired results" claims is still in force.  However, I think it ought to be, for whatever that's worth.  The desired results are generally obvious -- for example, I'd love to own patent rights in time travel, teleportation, and/or a car that goes from 0 to 60 in under 5 seconds while achieving at least 60 mpg efficiency.  Of course, the law doesn't always conform to what I think it ought to be.
 
Regards.
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