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Originally Posted by aznpoopy
i have a question for you.
this came up in a hypothetical in our textbook. the hypothetical is a trade secret hypothetical, but it has a little patent question tacked on at the end.
facts: guy owns a bakery with a proprietary recipe for chocolate chip cookies. the recipe substitutes many common ingredients for not-so-common ones and then has a special cooking formula that involves cooking the cookie at various temperatures for various times. the result is a cookie that is hard on the outside, soft on the inside, and has 200 less calories than other commonly chocolate chip cookies on the market. nobody else in the world has this recipe.
question: is the recipe eligible for patent protection?
i suppose they could seek protection as a new 'process' or perhaps a new 'composition of matter?' i do not know if a new recipe for chocolate chip cookies could be considered 'useful.' finally, i don't really see recipes as innovation in the 'technical arts,' not to offend anyone who is into cooking.
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Good question!
At the very least, all patent-eligible subject matter must pass the 3 requirements I said above: novel, nonobvious, and statutory. Let's break it down.
If you want to give them a smart-ass answer, tell them it all really depends on how the invention is claimed. I can't really say without seeing the claims because the inventor can claim it all kinds of different ways.
At the very least, all patentable subject matter must comply with 35 U.S.C. 101, 102, 103, and 112. There are more, as you know.
The 101 analysis is very very difficult. 101's interpretation will change as pending court cases get resolved.
First, go back and tell your professors that they are all wrong. Patent law is a living and breathing thing. By the time it makes it into the books it's obselete.
Read this:
http://www.uspto.gov/web/offices/pac...1_20051026.pdf
Then print it out and give it to your professor. Pay attention to the appendices which address obselete tests ("not in technological art" is one of them).
The check for 101 compliance varies greatly from person to person. Conceptually, 101 has 2 distinct requirements.
1 - Statutory category of invention - process, machine, manufacture, composition of matter. If your claim is not one of those, then you look towards judicial exception (abstract idea class of invention). Check the link for complete description.
2 - Utility - credible, specific, substantial, etc. Must produce physical transformation, perform concrete, useful (substantial, specific, credible), tangible result, etc. Again consult the link for description.
Assuming you're claiming the cookie, it could be an apparatus claim or composition of matter claim. You can also claim the baking process, which would be a process claim, or product-by-process claim. You could also claim a method of baking and serving, which would be a business method claim.
Assume the utility is easily established because it produces something that's a concrete, useful, tangible result.
Usually food falls under compositions of matter. Useful = utility. It's not useful as what you think it means. Useful = is it credible? Time machines are not useful because they lack utility, i.e. lacks concrete, useful, tangible results. Although time machines would be incredibly useful if you could build one, they have no utility under 101.
Rose-colored toilet paper is absolutely useless, but has utility according to 101.
I know it's confusing as hell, and even experienced examiners do not understand. It follows that your professors will lack understanding as well. It's normal and is par for the course. Also, every technology has different standards for 101 requirements. You need to have experience in your field of invention.
102 and 103 are pretty standard.
102 addresses the novelty aspect. Paragraphs a, b, and e are the relevant ones. Typically as long as every element of the claims has not been on sale, used, published, or applied for patent before your priority date, you're good to go. The bar for 102 is high because every element must be anticipated from the reference.
103 is a little more complicated. You test for nonobviousness by looking at the 4-prong Graham v. Deere analysis:
http://en.wikipedia.org/wiki/Graham_...sas_City_et_al.
Find the closest reference. This is your primary reference. Analyze what the primary reference teaches and what it's lacking.
Then go find analogous art from the same field of invention, or from class of inventions that solve the same problem. Identify the missing features from the primary reference and how it's taught in the secondary reference(s).
Resolve the level of ordinary skill in the art by analyzing why Mr. Person of Ordinary Skill in the Art (Mr. POOSITA) would know, and why they would combine the references.
Then resolve secondary considerations, such as commercial success, long-felt needs, etc. There are some errors in the wiki so don't rely on that.
Finally, you need to comply with 112. There are 2 important sections:
1st paragraph - enablement, best mode, written description. There are tests for each criteria:
enablement - Mr. POOSITA must know how to make and use your invention from the disclosure w/o undue experimentation
best mode - must not be concealed. You have to tell them the best mode to make and use the invention in the spec. This rejection is rare.
written description - spec must provide support for claimed invention. This is very important. New matter objections will stop your prosecution dead in its track even if you have patentable subject matter.
Make sure you understand the difference between enablement and written description. Most attorneys do not understand. Enablement means you talked about it, but didn't tell us how to build it. Written description means you didn't talk about it at all. There is a difference, and you overcome the 2 types of rejection differently.
Finally, the most important one and the one most overlooked by attorney is 112 2nd paragraph. Your claim interpretation must be definite, free from ambiguity, no indefinite language, has proper antecedent basis, so on and so forth.
You can tell how sloppy the attorney is by how many 112 2nd issues they have.
So the short answer is that the recipe may be eligible for patent protection. It depends on how the claim is structured (process, product, product-by-process, etc.).
Confused yet?
