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[George White]

I thought I knew the answer to this before I gave it more thought and now I'm not so sure. Initial inventor comes up with something. He is working with a team to make it a reality and one of them with a particular expertise in materials says "lets make it out of a particular post-consumer recycled plastic, that will work great."  I would normally say that person is not an inventor. But I have put in a third level dependent claim that has the limitation "comprised of a recycled XYZ plastic"  It may not be earth shattering but it is claimed. Might he be an inventor as long as that claim stays in?

thanks,

--George White

[JimIvey]

Might he be an inventor as long as that claim stays in?

Yes.  I'd strongly recommend naming him.  If you really think that using recycled plastic for the particular part isn't all that new, leave the claim out and don't name him -- unless another of his contributions is recited in a claim.

Regards.

[NJ Patent1]

George:  Almost reads like a law school exam question!  Cool.  As your post IMO implicitly acknowledges, materials of construction rarely (but not never) have patentable weight under 103 (i.e. are prima facie obvious).  But the material of construction - XYZ plastic - is part of the subject matter of that claim and, in principle, could “save” you from a 102 rejection (all elements not disclosed in 1 reference) and thus, potentially has some patentable “weight” for 102.  So my gut reaction would be to leave the “contributor” of this potentially obvious subject matter as an inventor.  Maybe it will prove to be non-obvious? 

So, is the bigger question: “is one who suggests (“contributes”) obvious subject matter, i.e. a limitation with (presumptively) no patentable weight, an inventor?  Can one be an inventor if they “contribute” something that doesn’t contribute to “patentability”?  Hmmmm 

I’d leave the person on and not lose sleep.  With absolutely no authority to support my position, I prefer deleting an inventor over trying to add an inventor (who I need to match-up inventive entity to avoid art ?)

[khazzah]

I thought I knew the answer to this before I gave it more thought and now I'm not so sure. Initial inventor comes up with something. He is working with a team to make it a reality and one of them with a particular expertise in materials says "lets make it out of a particular post-consumer recycled plastic, that will work great."  I would normally say that person is not an inventor. But I have put in a third level dependent claim that has the limitation "comprised of a recycled XYZ plastic"  It may not be earth shattering but it is claimed. Might he be an inventor as long as that claim stays in?

Facts kinda remind me of Nantron v. Schukra. In Nantron, the independent claim included a "lumbar seat adjustor" and the dependent claim added "said lumbar support adjustor includes an extender." A non-named inventor said he provided the idea for the extender, but admitted "the idea of an extender for a lumbar support adjustor in an automobile seat was in the prior art." District court granted SJ on the issue of incorrect inventorship. Fed Cir reversed and remanded because the alleged coinventor "provided only an insignificant contribution to the invention of [dependent] claim 11."

http://scholar.google.com/scholar_case?case=8507528002674281748&q=558+F.3d+1352&hl=en&as_sdt=80003