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[MYK]

A friend asked me to look at an application.  I have serious concern about one part of the claim and its effect on the enforceability of any patent that may result.

As a hypothetical, let's say it's like this:

I claim:
1. A clawfoot bathtub comprising <limitation>, <limitation>, and <limitation>, attached to a floor, the floor having joists spaced at most eight inches apart.

To me, this makes it impossible to claim direct infringement against any manufacturer making the bathtub, because the floor is not part of the product being sold, and there is no way to ensure that the tub will ever be physically attached to a floor, nor whether the floor isn't a concrete slab, nor whether the floor has joists spaced as required.

Am I right?  Valid concern?  Anyone ever seen a patent with claims written in such a way??  What problems are likely to occur during prosecution?  Would an examiner need to find a bathtub patent that recites floor construction, or just a patent reciting floor construction that would then be brought in via a 103 with a bathtub patent?

I have some other concerns with how it was written, but this . . . I just don't know what the drafting attorney was thinking.

[klaviernista]

Valid concern.  Bathtub manufacturer is almost assuredly not going to manufacture the subfloor (much less the joists) to which the bathtub will be mounted.  Most bath manufacturers are not in the home building business.  At least not to my knowledge.

If that is the only independent claim in the application, my opinion would be that a patent resulting from that application would be worthless unless it could be successfully argued (unlikely) that the bathtub manufacturer induced infringement by specifying the joist width in the installation manual for the bathtub.  Divided/joint infringement would also be hard to show, unless there were method claims and certain extenuating circumstances.  See the article linked below for a discussion on the latter point.

http://www.law.com/jsp/cc/PubArticleCC.jsp?id=1202555604674&Divided_Infringement_After_Akamai_and_McKesson

[MYK]

Thank you, kind sir, and thank you for that article.

[JustAnotherExaminer]

I'd give you a 112 2nd for not providing sufficient notice to a potential infringer what the metes and bounds of the claim are that are required for infringement.  It's unclear whether the floor is part of your claim and required for infringement.

Sort of like IPXL v amazon. 

I'd suggest you claim a system comprising both the bathtub and floor.

[MYK]

Fortunately, not my application!  (Either as an inventor or as an attorney/agent.)

I thought about enablement issues, but in the claim as actually written (the above is a hypo, changed to protect whoever), I'd have to say it's enabled -- just nearly impossible to enforce unless you tore holes in the end-user's floor to check the physical construction.

[dab2d]

Would it make a difference if building codes are known require the spacing as claimed?

[klaviernista]

Would it make a difference if building codes are known require the spacing as claimed?

I don't think so.  Who would be the infringer?  Not the bathtub manufacturer.  They don't attach the tub to the floor.  The contractor who installed it?  Nope.  They didn't make the bathtub.  The homeowner?  Still no. 

You could argue the codes support a case for induced infringement (bathtub manufacturer knew of codes, manufactured bathtub to meet those codes, and thus "induced" infringement by contractor when bathtub was installed, but that is a reach.