Patent It Yourself - PDF Archive

ChaPter 9 | Now for the LEGALESE—The CLAIMS | 229
rather than “providing a memory,” the examiner in the
PTO would object to it as an improper hybrid claim because
it recited both hardware and method steps. More on this
later. Finally, note that the end of this claim also contains a
“whereby” clause which states the internal function of the
claimed method, and an overall, external, and meaningful
result or function of the method. The whereby clause is not
considered when the examiner determines novelty but helps
sell the method to the examiner, as well as to any judge who
has to decide on the validity or infringement of this claim.
c. Business Method
For the business method, assume that you’ve just invented
a procedure for checking the “creditworthiness” of a
customer. Now you want to write a claim to this as a
business method. Here’s how you might write a suitable
claim for a credit-checking process.
A method of passing on the creditworthiness of a customer
comprising:
a. providing a form for said customer to complete, said
form having spaces in which said customer must
indicate a plurality of credit accounts and a plurality
of credit references,
b. investigating each of said credit accounts and credit
references and compiling a score from 1 to 100, for
each account and reference, with 1 indicating a
minimal credit rating and 100 indicating a maximal
or excellent credit rating,
c. averaging all of said scores to compile an overall
average,
d. rejecting said customer if said overall average is below
a predetermined value and accepting said customer
if said overall average is above said pre determined
value.
This claim would almost certainly be rejected as drawn
to nonstatutory subject matter under the Bilski decision
(see Section G13, below) since (1) it isn’t tied in a substantial
way to a particular machine or apparatus, or (2) it doesn’t
transform an article into a different state or thing. However
I provide it here to illustrate a true business method claim
in case Bilski is legislatively overruled or broadened. (To
make this claim statutory you would add a “providing
a computer” to the claim and recite that the computer
performs the steps.)
d. Manual Methods
A golfer invented a new way of putting that emphasizes
the golfer’s dominant hand and claimed this as a manual
process (U.S. Pat. No. 5,616,089). Here’s how he did it.
A method of gripping a putter comprising the steps:
a. gripping a putter grip with a dominant hand;
b. placing a non-dominant hand over an interior wrist
portion of the dominant hand behind a thumb of the
dominant hand;
c. resting a middle finger of the non-dominant hand on
the styloid process of the dominant hand;
d. pressing a ring finger and a little finger of the nondominant
hand against the back of the dominant
hand;
e. pressing the palm of the non-dominant hand against
a forward surface of the putter grip as the nondominant
hand squeezes the dominant hand.
A cat owner invented a new way of exercising a cat using
a laser. Some opined that this invention is ridiculous and
obvious. Evidently the examiner didn’t think so (U.S. Pat.
No. 5,443,036). Here’s the main claim.
A method of inducing aerobic exercise in an unrestrained cat,
comprising:
a. directing an intense coherent beam of invisible
light produced by a hand-held laser apparatus to
produce a bright, highly focused pattern of light at the
intersection of the beam and an opaque surface, said
pattern being of visual interest to a cat; and
b. selectively redirecting said beam out of said cat’s
immediate reach to induce said cat to run and chase
said beam and pattern of light around an exercise
area.
2. Machine Claims—Conventional
and Software Machines
Here are examples of two machine claims, one to a conventional
machine and one to a software-based machine. Note
that both claims recite a series of hardware elements, rather
than a series of steps as in the process claims. Note also that
both claims are similar in construction, indicating again
that a software machine is generally claimed the same way
as any other machine.
a. Conventional Machine
For the conventional machine, assume now that you’ve just
invented the automobile. Here’s how to claim it.
A self-propelled vehicle, comprising:
a. a body carriage having rotatable wheels mounted
thereunder for enabling said body carriage to roll
along a surface,
b. an engine mounted in said carriage for producing
rotational energy, and