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[jjcon1]

I have recently come up with an invention, yet when I did a search I found a similar item invented & patented in the 40's. However the old invention is over designed. There are components (ratcheting tooth locks) in the invention that are not only unnecessary but even have the potential to make the invention fail. It seems as though the original inventor might not have ever built and tested the invention as testing it would quickly reveal that the very nature of the material used makes the locks unnecessary. Is it possible for me to patent this even though I am only removing components. Also, the overall design of my version is considerably easier to manufacture and creates much less waste. The old invention creates around 25% waste to used material and mine creates around 1-2%. Thanks for the help.

- JJ

PS: Is Google patent search a reliable source to search for patents or is it incomplete?

[still_studying]

Google uses OCR software to convert the USPTO's patent images to searchable text.  Since their software is not particularly accurate, neither is the text that their software searches.  This is especially noticeable in older patents.

Back when IBM first started Delphion, I heard that they actually hired people to type in the text of every available U.S. patent to create their database.  The results may not be perfect, but the quality is much better than Google's.

[mk1023]

Let's say the core invention is ABC. If the older patent teaches ABCD where D are components that are unnecessary, there is no way you will be able to get a patent on ABC. You would at least have to claim something like ABCE where E is (i) an explicit absence of D or (ii) a new nonobvious feature not taught in the older patent. I'm not a mechanical examiner, but I am pretty sure an examiner would never allow (i).

[jjcon1]

First off, I want to think you both for the advice.

One thing I probably should have said in the original post is that I have read threw the prior patent very carefully and there is absolutely no mention of the effect the material has on the ability of the invention to lock without the ratcheting teeth. So it seems to me that the effect that I found was only accidentally covered by the fact that the prior invention used the right material. Also, considering the simplicity of the invention (simple as a rubber band so probably manufacture not mechanical, right?) & the relative unobviousnesses of the function the material has, it seems unlikely that the inventor would have considered it implicit enough not to mention. Does this mean that patents protect both the accidental components of an invention as well as those explicitly expressed and understood.
     Also, would it be possible to go after a new patent with the claim of creating greater production efficiency and less cost in production even though the new invention improves usefulness as well. Again, thanks for all the help. I'm still learning but "Patent it Yourself" is helping.

- JJ

[pentazole]

I'm confused about whether or not you mean that the extra element doesn't do anything in the old patent, or that it would be unnecessary in your invention.  I don't think you should answer that until you get a professional advice about it.

Anyhow, there's caselaw that says that if you you can eliminate an element from an invention, but retain its function, you have a patentable invention. 

This is from MPEP 2144.04:

B.    Omission of an Element with Retention of the Element"s Function Is an Indicia of Unobviousness
Note that the omission of an element and retention of its function is an indicia of unobviousness. In re Edge, 359 F.2d 896, 149 USPQ 556 (CCPA 1966) (Claims at issue were directed to a printed sheet having a thin layer of erasable metal bonded directly to the sheet wherein said thin layer obscured the original print until removal by erasure. The prior art disclosed a similar printed sheet which further comprised an intermediate transparent and erasure-proof protecting layer which prevented erasure of the printing when the top layer was erased. The claims were found unobvious over the prior art because the although the transparent layer of the prior art was eliminated, the function of the transparent layer was retained since appellant's metal layer could be erased without erasing the printed indicia.).

[CriterionD]

PS: Is Google patent search a reliable source to search for patents or is it incomplete?

Its OCR technology works well but is imperfect.  That said, Google Patents' database is not updated in real time and often does not include recently issued patents, nor does it include published patent applications or access to any foreign patents.

It is good for basic prelim type searching, or to search the text of older patents.  For a more complete search, www.freepatentsonline.com is a decent blend of free and functionality.  www.delphion.com is a best bet but costs money to usefully access (and then to fully expoit efficiciencies you need to become familiar with it).  www.espacenet.com allows you to search most foreign patents, but you have to draw a line somewhere anyway...

Also remember that anything on the market or described in a catalog or publication or what not is also non-patentable.  Of course, Google is decent for such general searching.  You can also go to - www.patentscourge.com - and ths will direct you to a customized Google search engine maintained by Criterion Dynamics.  It is imperfect and not meant to be an authoritative resource but can be useful especially when searching non-patent prior art.

btw, if you haven't, you should check for all US patents that have cited the patent you mention as a reference.  This is just one easy step you can take to help find any other patents which may represent an improvement over what you have located.

[CriterionD]

Also, would it be possible to go after a new patent with the claim of creating greater production efficiency and less cost in production even though the new invention improves usefulness as well.

Thats somewhat besides the point, though I guess it might help you (or possibly hurt you) if arguing unobviousness. If your new invention (or an invention made possible by your invention) has lower production costs than other prior inventions, that just adds to the invention's utility. Novelty and non-obviousness are the main requirements at play, a utility requirement might exist, but utility is largely seen in the eye of the inventor, and there is no real threshold for required utility.  Usefulness is usefulness, pass or fail; the scope of what is protected by your patent is not really affected by the scope of usefulness cited within the patent.

One thing I probably should have said in the original post is that I have read threw the prior patent very carefully and there is absolutely no mention of the effect the material has on the ability of the invention to lock without the ratcheting teeth.

I believe this is whats causing confusion here, did the patent you speak of mention the specific material you have in mind?  Or is the specific material you have in mind part of what makes your invention novel and more useful relative to what is described in the patent you mention?

[Bill Richards]

You question may not be as simple as A, B, C, and D.  If you've been able to eliminate a component, the result may be patentable.  It'll be very fact-specific and would require an analysis of facts that should not be published on this Forum.