Professor David Post
H2O has permission to use this resource.
Patent language can often be difficult to penetrate, and that is nowhere more true than with respect to the critical language of “invention” and related terms.
Patents are granted for new and useful “inventions” which meet all of the relevant statutory requirements. The Morphing Candy Holding Device (MCHD) is such an invention; we may presume it is new and useful and meets the statutory requirements (inasmuch as the PTO reviewed it and granted a patent for it). The patent application must contain a detailed description of the invention – “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” Sec. 112, 1st paragraph; see the material under “Detailed Description” in the MCHD patent.
The difficulties of describing complex technological inventions using words alone (or even words and drawings) are profound, and much of patent law is concerned with dealing with them.
Often . . . words do not exist to describe the invention. The dictionary does not always keep abreast of the inventor. It cannot. Things are not made for the sake of words, but words for things." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (U.S. 2002).Every application must also include, in addition to this written description, “one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” Sec. 112, 2d paragraph (emphasis added).
So look at the first claim in the Morphing Candy Holding Device patent. That’s what the applicant claims is his invention. The applicants are “claiming” that invention – they are asking for exclusive rights with respect to it. The patent claim is precisely equivalent to a real property deed, which also has to describe the thing that is owned:
The parcel encompassed within a line running north from survey marker 45.12.99 for 225 meters, thence northwest (287°45’21” compass reading) for 623.11 meters, thence southeast (101°39’18”) for 134.98 meters, . . .
A real property deed describes the thing (a parcel of land) over which the “owner” possesses exclusive rights; so does the patent claim. In the application stage, during the period patent lawyers call “patent prosecution,” the claim describes the thing (an invention) over which the applicant believes he/she should be granted ownership rights; if and when the patent issues, the claim describes the invention in which the applicant has been granted ownership rights. Regarding the MCHD patent, for example, it’s a device
. . . with a “housing, a primary chamber, and a parallel secondary chamber provided in said housing.” [I don’t really know exactly what any of that means, of course, because I am not a person of skill in this art – but I understand that it is describing the structure of this device] It also has a “primary chamber” that “forms an aperture in which a piece of candy is stored and from which a piece of candy is pushed by an upper end of a lower housing.” And a “lower housing that includes a candy stick holder on an upper end inside the primary chamber.” And a secondary chamber that “includes an electrical circuitry, a power source and a switch which protrudes into the primary chamber for activating the electrical circuitry, which is “. . . activated by pushing said lower housing upwardly which contacts the switch to activate the circuitry.”
Each of those features is called an element of the claimed invention – or, synonymously, a limitation of (or on) the claimed invention.
They’re called “limitations” because each one limits the scope of the property within the claim. The MCHD patent does not include devices with a lower housing including a candy stick holder on the lower end – it is limited to devices with a “lower housing including a candy stick holder on the upper end.” (emphases added) The MCHD patent does not include a device where the piece of candy is pushed by the lower end of an upper housing; it is limited to include only devices where the piece of candy is pushed by the upper end of a lower housing.
The PTO must satisfy itself that that invention – the thing described in the claim – meets the statutory requirements: e.g., that it was not “known or used by others in this country” before the applicant invented it, (the “all elements rule” means that only prior art “references” – devices, or printed publications, or previously- issued patents – that contain all of the claim elements count when we are determining whether “it” was known or used by others in this country, or whether it was described in a printed publication, etc.) that it was not “in public use or on sale in this country” for more than 1 year prior to the application date, that it would not have been “obvious” to a person of ordinary skill in the art to which it pertains at the time the applicant invented it, etc.
And, as we’ll see shortly, once the patent is issued, it then becomes an infringement to “make, use, sell, or offer to sell” it without the patentee’s authorization – it again referring to a device possessing all of the elements of the invention as set forth in the claim.
One final point. Patents frequently contain multiple claims. Suppose I have invented a new process for making disappearing ink. I claim my invention, which comprises:
Claim 1. I claim a. a gallon of water; b. adding an ounce of salt; c. adding 100 grams of vinegar; d. adding 10 grams of powdered aluminum; e. heating the mixture to 600 degrees for 1 hour; f. adding 5 grams of cadmium when the temperature of the mixture cools to 450 degrees.A six-element method claim. That is an invention for which I claim I am entitled to a patent.
As it happens, I have also invented a related invention that I also believe meets the statutory requirements for obtaining a patent – a process for making red disappearing ink. This process comprises:
Claim 2. I claim a. a gallon of water; b. adding an ounce of salt; c. adding 100 grams of vinegar; d. adding 10 grams of powdered aluminum; e. heating to 600 degrees for 1 hour; f. adding 5 grams of cadmium when the temperature of the mixture cools to 450 degrees; and g. adding 2.23 grams of commercially-available Red Dye #40 when the temperature of the mixture has cooled to 81 degrees.
To make the patent application a little more readable, I can draft this second claim, claim 2, to read more simply:
Claim 2. I claim a. The process described in claim 1, and b. adding 2.23 grams of commercially-available Red Dye #40 when the temperature of the mixture has cooled to 81 degrees.”I would like patent rights over that invention, too – and I can get them, but only if this invention also meets all of the statutory requirements for novelty and utility and non- obviousness and all the rest.
And I have a third invention, as well – blue disappearing ink:
Claim 3. I claim a. a gallon of water; b. adding an ounce of salt; c. adding 100 grams of vinegar; d. adding 10 grams of powdered aluminum; e. heating to 600 degrees for 1 hour; f. adding 5 grams of cadmium when the temperature of the mixture cools to 450 degrees; and g. adding 4.8 grams of commercially-available Blue Dye #18 when the temperature of the mixture has cooled to 104 degrees.
Another invention, another claim (Claim 3). These are three separate inventions, for purposes of patent law. Each one must be separately measured against the statutory requirements; any one of them may qualify for patent protection, all of them, some of them, or none of them.