Wednesday, July 23, 2008

The psychotic ad-in-bread patent kills itself by flying into infinity

Here's a gem of a patent and claim language: US Patent 6,421,986 (Method of advertising by distributing targeted promotional materials inside packages of bread) c. placing a packet, which contains one or more pieces of the promotional materials, inside each said package at the bread-making facility based on one or more factors selected FROM THE GROUP CONSISTING OF THE SPECIFIC TYPE OF BREAD TO BE PACKAGED AND A RETAIL DESTINATION OF SAID PACKAGE OF BREAD, is indefinite, and self-limiting, all at the same time: Section 112 of the US Patent Law requires that a patent claim specifically point out and distinctly claim what the applicant regards as the invention. In bygone days, there was jurisprudence supporting the proposition that the word "or" created an ambiguity in the claim that prevented it from being specific and definite. To avoid that infirmity, somebody invented a way to get around the "no-no" of saying red, green, orange, blue, brown, gold, yellow OR purple. Then somebody started writing claims saying: SELECTED FROM THE GROUP CONSISTING OF red, green, orange, blue, brown, gold, yellow AND purple. It means the same thing but avoids using the forbidden word OR. This practice was judicially affirmed in the Ex parte Markush case, a decision by Asst. Patent Commissioner Kinan in 1924. Eventually, wise folks discovered that the word OR really isn't so bad if it is used correctly. See In re Harnisch, 631 F.2d 716 (CCPA 1980). These days most patent examiners and courts won't consider a claim defective merely because it contains a recitation using the term OR. It's sorta like what happened when the CAFC finally came out with the decision in State Street Bank that merely because a claim recites a method of doing business, it isn't automatically outside of the patent statute. But old habits die hard, so even though there are a lot of patent claims issuing that contain the word OR, we're still dutifully taught to write Markush Groups, if only to avoid the possibility of encountering an old examiner who hasn't read Harnisch and would write an "indefiniteness" rejection just because he finds an "or" in the claim. The claim you cite would read a lot simpler if the draftsman had just used an OR to join the two alternatives. Whether either of the two alternatives themselves introduces indefiniteness into the claim is another question, which it is appropriate to raise, regardless of whether the conjunction was the word OR or the Markush litany. The answer would probably be found by looking to the specification and deciding if something specific and definite was described for each of the alternatives. Yes, it is jarring to encounter a claim that includes the "overkill" of a Markush group joining just a pair of alternatives, while it looks to you as if one or both of the alternatives themselves might not survive an inquiry as to their definiteness. Another aspect of Markush claiming, as it relates to chemical practice, is that there is supposed to be a common characteristic among the recited elements so that there is unity of invention. But that's another story. The Markush group in the ad-in-bread claim as being applicable to the class of factors used in selecting the materials to be placed inside the bread packages. I see two classes of selection factors: bread type, and bread destination. The use of "consisting of" closes the set. That seems explicit, even though the domains of possible bread types and destinations are not enumerated. According to the MPEP (Sec 2173.05(h)), "[t]he materials set forth in the Markush group ordinarily must belong to a recognized physical or chemical class or to an art-recognized class." A factor is not a "material", but current practices do not seem to exclude factors from use in Markush groups. A selection factor is probably an "art-recognized class," where "type" and "destination" are each a kind of selection factor. Kindly check out 6,202,053, (Method and apparatus for generating segmentation scorecards for evaluating credit risk of bank card applicants) examiners Stamber and Kazimi. It uses something similar, using the term "factor group" in two places (steps a. and b.): 1. A computer implemented method for evaluating credit risk of bank card applicants comprising the steps of: a) dividing a population of bank card applicants into a plurality of sub-populations using a processing unit, based on a first factor selected from a factor group consisting of length of credit history, number of reported trades, reported delinquency, bank card utilization, and revolving balance acceleration; b) dividing at least one of said sub-populations into additional sub-populations based on a second factor selected from the factor group, the second factor being different from the first factor selected from the factor group; c) developing a scorecard for each of said plurality of sub-populations and additional sub-populations; d) applying one of said scorecards to a bank card application; and e) scoring said application, based on said applied scorecard. Thus in the 986 bread promotional material distribution method patent, the kinds of selection factors are fixed and explicit (bread type or bread destination), although, yes, the range of outcomes (type may be white, wheat, rye, 2-grain, ..., n-grain, ... ; destination may be Kroger, Meijer, Wal-Mart, ...) is much larger. In this case, I don't think that enumerating each bread type and each destination into two Markush groups is as enabling as defining the classes of factors. I like the term "factor group" better than just "factor." As you pointed out, this is further complicated by claiming "one or more" of such factors. I read this to mean that the selection path may be by bread type, bread destination, or both. Some materials my go into 3-grain bread, regardless of destination. Some materials may go to all Kroger stores, regardless of bread type. Some packets may go only into 5-grain bread packages destined for Wal-Mart. From an enabling point of view (have not read the patent), I could build something from the 986 language in Claim 1. No novelty and all obviousness. No comment. Maybe some comment: The Markush part appears OK, but the claim is unclear. I don't have a problem with this type of Markush either, since it is the "factors" that are being delineated and not the type of bread of destination. There is no need for further detail. As you've pointed out, however, the claim is vague in describing "one or more factors". Hopefully, it is defined in the specification. Another problem is that the claim is unclear in what the phrase "based on one or more..." is referring to. There are at least three meanings that I could think of: 1. Does it mean that the act of "placing a packet" depends on the type of bread or its destination? So, if the bread is whole wheat, then no placing of a packet occurs? If its going to Miami, then they get a packet? 2. Or, does it mean the promotional materials themselves are different depending on the type or destination of the bread? Raisin bread gets scratch-and-sniff cards? Rye bread gets coupons for fiber supplements? 3. Or, does it mean the number of pieces of promotional materials depend on the type or destination of the bread? Loafs headed to Alaska get multiple mail-order catalogs? Those to New York get a single copy? No comment on the above confusion. I am sure, though, that it is completely explained in the specification, but not enjoying the protection of corresponding claims.

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