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[smgsmc]

Hi. Assume that a new material (Material A) is invented and patentable.  What about old products manufactured with new Material A?  Would they be patentable, or be rejected under 103?  As an example, consider a polymer material that breathes.  I believe Dupont spent a lot of R&D $$ before coming up with Corfam with the goal of an artificial replacement for leather in shoes.  So, would a "A shoe comprising Material A ...." or a "A catsuit comprising Material A ...." be patentable?  Thanks.

[mk1023]

I don't think there is an examiner in the world that would buy that it is not obvious to use synthetic leather in applications where leather was used previously.

[klaviernista]

I'll respectfully disagree with MK.  There are many, many patents covering "old" articles made with "new" materials.  Just do a quick search in the baseball bat art.  There are literally hundreds of patents for baseball bats made with different materials, be they scandium alloys (e.g., SC777), carbon fiber, fiberglass composite, aluminum, etc.  Another good example is in the magnetic media art, where there are probably over 20,000 patents drawn to magnetic recording media (e.g., hard discs) having recording layers that are made of different materials. 

My experience is that whether or not an old article made with a new material is patentable will depend largely on the novelty and non-obviousness of the new material itself.  I.e., small changes in material would likely not be patentable absent secondary considerations, where large material changes might be patentable.  With respect to the example postulated by the OP, I would say that we know too little about the synthetic leather to determine whether or not a shoe made of that material would or would not be patentable. 

A harder scenario is whether the use of of a known material for a novel use is patentable.  E.g., using ground tires for making the running surface of a track and field stadium; using an anti-flu medication to treat cancer; making dental veneers from a ceramic material known for use in pottery glazing, etc.  In those instances, it is my experience that patentability turns on the novelty and non-obviousness of the combination of material and use, as opposed to simply the material itself.

Last but certainly not least, it all depends on how the combination is claimed.  As MK indicated, it is probably unlikely that claims generally drawn to the use of "synthetic" leather in applications where natural leather was used previously would fly.  But claims drawn to a more specific type of synthetic leather could very well be patentable.

[mmatguy]

I'll respectfully disagree with MK.  There are many, many patents covering "old" articles made with "new" materials.  Just do a quick search in the baseball bat art.  There are literally hundreds of patents for baseball bats made with different materials, be they scandium alloys (e.g., SC777), carbon fiber, fiberglass composite, aluminum, etc.  Another good example is in the magnetic media art, where there are probably over 20,000 patents drawn to magnetic recording media (e.g., hard discs) having recording layers that are made of different materials. 

My experience is that whether or not an old article made with a new material is patentable will depend largely on the novelty and non-obviousness of the new material itself.  I.e., small changes in material would likely not be patentable absent secondary considerations, where large material changes might be patentable.  With respect to the example postulated by the OP, I would say that we know too little about the synthetic leather to determine whether or not a shoe made of that material would or would not be patentable. 

A harder scenario is whether the use of of a known material for a novel use is patentable.  E.g., using ground tires for making the running surface of a track and field stadium; using an anti-flu medication to treat cancer; making dental veneers from a ceramic material known for use in pottery glazing, etc.  In those instances, it is my experience that patentability turns on the novelty and non-obviousness of the combination of material and use, as opposed to simply the material itself.

Last but certainly not least, it all depends on how the combination is claimed.  As MK indicated, it is probably unlikely that claims generally drawn to the use of "synthetic" leather in applications where natural leather was used previously would fly.  But claims drawn to a more specific type of synthetic leather could very well be patentable.

hi, sorry to change the subject a bit but since the issue of "materials" came up I wanted to ask. My degree is materials engineering (no pun intended) and I'll be attending law school this fall, and I am wondering about the applicability of my degree to such examples as given by klaviernista. My specialization is in metal alloys and nanoceramics, so would this qualify me, for example, to take cases such as a new baseball bat material design or ceramic dentures, or would they want someone with a chem eng background? I know this is a pretty loose-ended question and there are many "what if's," but thoughts are appreciated, thanks

[klaviernista]

mmat:  I don't want to derail this thread.  Start a new topic and I will answer your question.  Either that, or send me a PM. 

[mmatguy]

sorry about that and done