On November 11, 1856, U.S. Patent Np. 16082 issued to Henry Bessemer on the Manufacture of Iron and Steel:
Bessemer’s steel-making process was the most important technique for making steel in the nineteenth century. Bessemer system involved blowing air through molten pig iron to remove the impurities, make steel easier, quicker and cheaper to manufacture. Bessemer also made at least 128 other inventions in the fields of iron, steel and glass. He was knighted for his contribution to science in 1879, and in the same year was made a fellow of the Royal Society.
On November 10, 1964, U.S. Patent No. 3,156,177 on Food Preheating, Cooking and Warming Device issued to Harlan Sanders:
A few years later, the Colonel received a second patent, U.S. Patent No. 3,245,800 on a Process of Producing Fried Chicken Under Pressure:
Interestingly, in the Process of Producing Fried Chicken Under Pressure it is the chicken that is under pressure, not the poor cook behind the counter.
On November 8, 1910, U.S. Patent No. 974785 on an Electric Insect Destroyer issued to William M. Frost:
However electric bug zappers go back even further. 20 years earlier, on April 1, 1890, Francois Scherer received U.S. Patent No. 424729 on an Electric Trap:
On November 2, 2004, U.S. Patent No. 6,812,392 issued to Marlon Brando — yes, THAT Marlon Brando — on a Drumhead Tensioning Device and Method:
This was actually the fourth patent Brando received on this improvement in tuning conga drums, following U.S. Patent Nos. 6,410,833, 6,441,286, and 6,667,432. While his invention made it easier to tune conga drums, it would make the drums more expensive, and unfortunately it didn’t have a chance to catch on before his death in 2004.
On November 1, 1988, Claude G. Coots received U.S. Patent No. 4,780,985 on an Electric Mouse Exterminator
The metaphor “Build a better mousetrap, and the world will beat a path to your door” originated in a different form with Ralph Waldo Emerson, who in 1855 wrote:
If a man has good corn or wood, or boards, or pigs, to sell, or can make better chairs or knives, crucibles or church organs, than anybody else, you will find a broad hard-beaten road to his house, though it be in the woods.
In 1882, a month after his death, the following quotation was attributed to Emerson by The Cincinnati Enquirer:
If a man can write a better book, preach a better sermon or make a better mouse-trap than his neighbors, though he builds his house in the woods, the world will make a beaten path to his door. If a man has good corn or wood, or boards, or pigs, to sell, or can make better chairs or knives, crucibles or church organs, than anybody else, you will find a broad hard-beaten road to his house, though it be in the woods.
Whoever edited Emerson to add “mouse trap” knew what he was doing — the USPTO has issued more that 4400 patents, on mouse traps, the most recent being U.S. Patent No. 12,446,567, on a Rodent Disposal Device, which electrocutes the rodent and projects the rodent out with a spring:
On October 2, 1888, U.S. Patent No. 390311 issued to C.A. Pinckney and C.J. Hamilton on a Spring Air Gun:
In 1882 Hamilton, along with some investors, started the Plymouth Iron Windmill Company to produce a vaneless windmill that Hamilton had invented a few years earlier. In 1886, Hamilton began designing a steel air rifle to compete with the popular Markam Air Rifle that was also made in Plymouth, Michigan. Hamilton partnered with Cyrus Pinkney, and the air founded the Plymouth Air Rifle Company in 1888. Unfortunately, in 1894 Plymouth Air Rifle Co. suffered a catastrophic fire, and didn’t have the money to rebuild.
Hamilton did not give up, and brought one of their air rifles to the Plymouth Iron Windmill Company, demonstrating the gun to the Board of Directors. After General Manager Lewis Hough test fired the gun he exclaimed “Boy, It’s a Daisy!” The windmill company put the gun into production, and renamed it the “Daisy” air rifle. A year later the company was making more money selling Daisy rifles than windmills, so the company was renamed the Daisy Air Rifle Company.
In 1897 Lewis Hough bought Hamilton out, so that Hamilton could pursue firearm designs he had been working on. The next year Hamilton and his con Coello started the Hamilton Rifle Company, designing, producing, and selling inexpensive .22 rifles. The company patented serveral of their designs:
After the senior Hamilton’s death in 1902, Coello continued the business, and continued patenting new rifle designs:
The Company’s most popular rifle, the Model 27, was introduced in 1907, and remained in the market for 23 years:
On October 1, 2002, Carl E. Hanson received U.S. Patent No. 6,457,474 on a Method of Treating Chest Pain:
Hanson’s medical breakthrough, apparently based upon a clinical study of one, is to administer lime juice instead of nitroglycerin to treat chest pain:
The patent expired July 31, 2017, removing the threat of contributory infringement or inducement of infringement of bartenders everywhere, who no longer have to make sure their patrons are not suffering from chest pains before serving that gimlet, Moscow mule, or Margarita.
Captain Kirk’s alter ego, William Shatner, applied for a patent on a Smart Phone Organization System and Application. His idea, which does not sound so abstract, is to automatically characterize the content of files when saving, thereby allowing easy retrieval by matching the context of the retrieval request with the content of the file. Unfortunately, his patent application was rejected under 35 USC 101, and last month the PTAB affirmed that rejection.
But Kirk need not feel bad, in today’s crazy climate, where the courts created an exception to patentability without properly defining it, and the Patent Bar and the Congress have failed for more than a decade to provide the definition, meritorious inventions are routinely denied protection. In the Star Trek universe, the transporter was invented in the early 22nd century by Dr. Emory Erickson, who also became the first human to be successfully transported. If we don’t get some clarity on patentable subject matter, consider how Dr. Erickson’s patent application might be treated:
In In re Erickson, (Fed. Cir. 2225), the Federal Circuit issued a Rule 36 affirmance of the decision of the PTAB affirming the Examiner’s rejection of all of the pending claims of Emory Erickson’s application 31/239484 entitled “Teleportation System and Methods.” The PTAB opinion explained that the claimed invention, which Mr. Erickson calls a “Transporter,” is directed to a teleportation apparatus and a method for “nearly instantaneously” moving an object from one location to another. Mr. Erickson apparently provided a practical demonstration of his invention during a recent outage of the USPTO’s EFS system, delivering his Applicant’s Brief on Appeal to the USPTO via his “Transporter,” together with the $50,000 fee (37 CFR 1.17(zz)) for non-electronic filings.
Transporting Goods is an Abstract Idea
The Board began its analysis with the familiar two-step test from the classic Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014), which requires at step one a determination whether the claims are directed to an abstract idea, and if so, at step two to a determination whether the claim is directed to “something more.” The Board noted that the Examiner found that the claims were directed to the abstract idea of “transporting goods,” and the Board agreed, citing GT Nexus, Inc. v. Inttra, Inc., 2015 WL 6747142 (N.D.Cal. 2015)(“the shipping of goods is a conventional business practice ‘long prevalent in our system of commerce.’”)
Operation in the Real World Does not Make Idea Less Abstract
While Erickson argued that the Transporter would “result in life altering consequences,” the Board said that while laudable, it does not render the system or method any less abstract, citingUniversity of Florida Research Foundation, Inc. v. General Electric Company, 916 F.3d 1363 (Fed. Cir. 2019). The Board considered the case to be similar to Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 124 U.S.P.Q.2d 1441 (Fed. Cir. 2017), where the patent owner’s arguments that the invention operated “in the tangible world” and satisfied “a public demand for more convenient travel that did not exist in the prior art” did not save the claims from being directed to an abstract idea.
Novelty of Components Does Not Make Ideas Less Abstract
The Board also rejected the arguments that the Transporter, and in particular its Heisenberg compensator, had never before existed, citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)(“We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete. In any event, any novelty in implementation of the idea is a factor to be considered only in the second step of the Alice analysis.”). “It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea.” TLI Communications LLC v. AV Automotive, L.L.C., 823 F.3d 607, 118 U.S.P.Q.2d 1744 (Fed. Cir. 2016).
Lack of Preemtion Does not Make Idea Less Abstract
The Board also dismissed Erickson’s argument that the claimed invention did not preempt all methods of transporting goods, citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.Cir.2014) (collecting cases). A narrow claim directed to an abstract idea, however, is not necessarily patent-eligible, for “[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
The Groundbreaking, Innovative, and Brilliant Can Still Be Abstract
While the Board found Erickson’s practical demonstrations of teleportation were “impressive,” but said that even accepting that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” that is not enough for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013); accord, buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor was it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness).
The Board concluded that no matter how much of an advance in the field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature is ineligible for patenting. SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 126 U.S.P.Q.2d 1638 (Fed. Cir. 2018).
At Alice Step II, the Board found that most of the components were conventional off-the-shelf electronic and computer components, and thus there was no “something more” to save the claims.
So, sorry Captain Kirk, we may understand space before we understand what is and what is not patentable subject matter.
On September 30, 1862, U.S. patent No. 36,593 to Theodore Ruggles Timby for a revolving Gun Turret.
When Swedish-born architect John Ericsson built an ironclad warship — the Monitor — for the Union Navy, he incorporated Timby’s gun turret. The Monitor cost $195,000 to build, and the Union Navy paid $270,000. Timby received a 5 percent commission of $13,500 for his turret design.
