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Author Topic: Patenting a machine without revealing it's purpose  (Read 1348 times)

khazzah

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Re: Patenting a machine without revealing it's purpose
« Reply #15 on: 08-06-10 at 11:17 am »

What if it also has an (be it slightly less pronounced than for polymers) effect on the mechanical properties of some metallic materials such as aluminium and copper and their alloys?
 

What's the question you're asking here? Is it "do I have to disclose those uses too?"

I would definitely think long and hard before purposely leaving stuff out of an app. BTW, if your real concern is keeping your invention secret for a while, request for non-publication [mentioned by JimIvey] accomplishes exactly that while avoiding the risk of invalidity under all the scenarios we've talked about here (best mode, enablement, written description, and utility).

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Karen Hazzah
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DogDayPM 9er9er9er

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Re: Patenting a machine without revealing its purpose
« Reply #16 on: 08-06-10 at 12:04 pm »

But to refer back to my earlier post, if my spec teaches a process for heating to certain temp to a certain time, then I *have* enabled. I just haven't told you what you might want to use the process for (ie, hardening plastics). ...Would you have a problem with utility? 

Hi Karen, I get what you're saying but don't think I agree.  If you have to enable one skilled to practice the invention, what does the word practice mean?  In a widget for stiffening [_______] substances, practicing the invention would, to my way of thinking, necessarily include successfully stiffening a substance.  But if you have to cast about trying substance after substance until you find one that is actually stiffened via use of the widget, I have a problem believing that enablement is met.

Utility:  As an engineer :), yes, I'd have a problem with utility since the proposal for this spec is to purposefully hide its utility.  But as a lawyer, I recognize that the legal standard is so low that possibly "useful for stiffening some unspoken substance" may suffice.  But I'd be willing to argue the matter.


(Mixing up posts a bit)
What if it also has an (be it slightly less pronounced than for polymers) effect on the mechanical properties of some metallic materials such as aluminium and copper and their alloys?

To the OP, I read your question as asking, "Well, what if it does work (at least some) for a number of other substances in addition to plastics, would that lessen the arguments around undue experimentation?"
Not sure.  Let's say that it does work well for a number of other substances.  Viewing only the undue experimentation question, I think it does mitigate the problem/assist enablement.  And likely the more types of substances it does work for, the better off you are.

P.S. "Aluminium" - not from US?  If you're not asking about a US patent filing, some (or much) of the commentary above may not be relevant.
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khazzah

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Re: Patenting a machine without revealing its purpose
« Reply #17 on: 08-06-10 at 01:41 pm »

In a widget for stiffening [_______] substances, practicing the invention would, to my way of thinking, necessarily include successfully stiffening a substance

I'll assume for purposes of this discussion that "make or use the invention" refers to the claims. In that case, playing devil's advocate, I'd argue that "for stiffening substances" or even "for stiffening [more specific] substances" is intended use and gets no patentable weight. Thus, I merely have to enable carrying out the steps of my method claims (heating to specific temp for specific time) or putting together the claimed device (machine that heats to specific temp for specific time).

But if you have to cast about trying substance after substance until you find one that is actually stiffened via use of the widget, I have a problem believing that enablement is met.

Agreed that this would be undue experimentation. Just not sure if that's required.

BTW, I haven't researched this area of the law and I'm not strongly attached to one side of the argument or the other.

I get the sense that practitioners in technical areas other than mine (mine=computers and electronics) deal more with the non-prior art requirements -- utility, enablement, written description and best mode -- than I do. So discussions like this one are of particular interest to me, precisely because I don't deal with them every single day like I do prior art rejections.
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Karen Hazzah
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