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	<title>Comments on: Q) Velcro (MPEP 700, Trademarks in Claims)</title>
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	<description>Patent Bar Review and Study Guide</description>
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		<title>By: AnExaminer</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1229</link>
		<dc:creator>AnExaminer</dc:creator>
		<pubDate>Wed, 13 Jan 2010 04:06:50 +0000</pubDate>
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		<description>For the patent bar exam if the question deals with trademarks or trade names in the claim the answer will always be that it is indefinite under 112 2nd and citing to 2173.05(d).

That being said, in practice it is more nuanced. Claims are considered to be definite, as required by the second paragraph of 35 U.S.C. § 112, when they define the metes and bounds of a claimed invention with a reasonable degree of precision and particularity.  See In re Venezia, 530 F.2d 956,958, 189 USPQ 149, 151 (CCPA 1976). The issue then becomes whether a PHOSITA would have understood, as of the time of the filing of the application, what the scope of the claim was and what the trademark stood for.

For example, say you have the following claim:
A method comprising: sending an email to a computer, wherein said computer is running Windows. (poorly drafted just to show point).

This is clearly indefinite because there are a large number of goods that sell under the umbrella of the Windows trademark (95, 98, Me, XP, Vista, 7) and likely includes future unknown and undefined versions of Windows.

Now what distingishes good practitioners/examiners is how they argue the harder question of when the claim is for Windows 7.</description>
		<content:encoded><![CDATA[<p>For the patent bar exam if the question deals with trademarks or trade names in the claim the answer will always be that it is indefinite under 112 2nd and citing to 2173.05(d).</p>
<p>That being said, in practice it is more nuanced. Claims are considered to be definite, as required by the second paragraph of 35 U.S.C. § 112, when they define the metes and bounds of a claimed invention with a reasonable degree of precision and particularity.  See In re Venezia, 530 F.2d 956,958, 189 USPQ 149, 151 (CCPA 1976). The issue then becomes whether a PHOSITA would have understood, as of the time of the filing of the application, what the scope of the claim was and what the trademark stood for.</p>
<p>For example, say you have the following claim:<br />
A method comprising: sending an email to a computer, wherein said computer is running Windows. (poorly drafted just to show point).</p>
<p>This is clearly indefinite because there are a large number of goods that sell under the umbrella of the Windows trademark (95, 98, Me, XP, Vista, 7) and likely includes future unknown and undefined versions of Windows.</p>
<p>Now what distingishes good practitioners/examiners is how they argue the harder question of when the claim is for Windows 7.</p>
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		<title>By: GoJackets</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1228</link>
		<dc:creator>GoJackets</dc:creator>
		<pubDate>Wed, 16 Dec 2009 15:15:17 +0000</pubDate>
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		<description>Let&#039;s run this up the flag pole and see who salutes it:

Assume Shell gasoline is, as of today, composed of chemicals A, B, and C.  Assume further that today I claim a new type of engine that runs on &quot;Shell Gasoline,&quot; and that using trademarks in claims is OK (again, just for explanation&#039;s sake).

What I&#039;ve really invented is an engine that runs on a gasoline made of A, B, and C, and that&#039;s all I should be entitled to in a patent.  But I haven&#039;t claimed an engine that runs on ABC gasoline, I&#039;ve claimed an engine that runs on &quot;Shell&quot; gasoline.  So what if, two years from now, Shell changes their formula to A, B, C, and D.  Assuming my engine also runs on the new ABCD Shell Gasoline, I will have become entitled to a broader invention than I actually conceived of by virtue of Shell changing its product.  When I filed my app, all I had invented was a machine that ran on ABC Shell gasoline, but now my invention covers other types of gas because I described it in the claims as &quot;Shell Gasoline,&quot; which would theoretically cover ABC Shell gasoline and also ABCD gasoline.

I think that&#039;s why they don&#039;t let you use trademarks in claims.  They only identify the producer and not the particular product.  The producer can change the product, so when you claim &quot;Shell gasoline,&quot; it is indefinite under 112, 2nd as to what you are claiming.</description>
		<content:encoded><![CDATA[<p>Let&#8217;s run this up the flag pole and see who salutes it:</p>
<p>Assume Shell gasoline is, as of today, composed of chemicals A, B, and C.  Assume further that today I claim a new type of engine that runs on &#8220;Shell Gasoline,&#8221; and that using trademarks in claims is OK (again, just for explanation&#8217;s sake).</p>
<p>What I&#8217;ve really invented is an engine that runs on a gasoline made of A, B, and C, and that&#8217;s all I should be entitled to in a patent.  But I haven&#8217;t claimed an engine that runs on ABC gasoline, I&#8217;ve claimed an engine that runs on &#8220;Shell&#8221; gasoline.  So what if, two years from now, Shell changes their formula to A, B, C, and D.  Assuming my engine also runs on the new ABCD Shell Gasoline, I will have become entitled to a broader invention than I actually conceived of by virtue of Shell changing its product.  When I filed my app, all I had invented was a machine that ran on ABC Shell gasoline, but now my invention covers other types of gas because I described it in the claims as &#8220;Shell Gasoline,&#8221; which would theoretically cover ABC Shell gasoline and also ABCD gasoline.</p>
<p>I think that&#8217;s why they don&#8217;t let you use trademarks in claims.  They only identify the producer and not the particular product.  The producer can change the product, so when you claim &#8220;Shell gasoline,&#8221; it is indefinite under 112, 2nd as to what you are claiming.</p>
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		<title>By: Chad</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1227</link>
		<dc:creator>Chad</dc:creator>
		<pubDate>Sat, 24 Oct 2009 16:00:56 +0000</pubDate>
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		<description>Re #6 above - Reciting &quot;a detergent such as TIDE&quot; in the claims may not proper.

2173.05(d) Exemplary Claim Language (&quot;for example,&quot; &quot;such as&quot;) [R-1]

Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences &gt;may&lt; lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112, second paragraph should be made.</description>
		<content:encoded><![CDATA[<p>Re #6 above &#8211; Reciting &#8220;a detergent such as TIDE&#8221; in the claims may not proper.</p>
<p>2173.05(d) Exemplary Claim Language (&#8220;for example,&#8221; &#8220;such as&#8221;) [R-1]</p>
<p>Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences &gt;may&lt; lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112, second paragraph should be made.</p>
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		<title>By: matt30</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1226</link>
		<dc:creator>matt30</dc:creator>
		<pubDate>Sun, 10 May 2009 15:47:25 +0000</pubDate>
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		<description>I got this question yesterday on my exam... I chose rejected under 112 second paragraph.</description>
		<content:encoded><![CDATA[<p>I got this question yesterday on my exam&#8230; I chose rejected under 112 second paragraph.</p>
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		<title>By: chrismcneit</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1225</link>
		<dc:creator>chrismcneit</dc:creator>
		<pubDate>Fri, 08 Aug 2008 00:48:08 +0000</pubDate>
		<guid isPermaLink="false">http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1225</guid>
		<description>True.  I think we have the issue under control now and will be prepared when and if we see it on the exam...</description>
		<content:encoded><![CDATA[<p>True.  I think we have the issue under control now and will be prepared when and if we see it on the exam&#8230;</p>
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		<title>By: dgspambot</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1224</link>
		<dc:creator>dgspambot</dc:creator>
		<pubDate>Fri, 08 Aug 2008 00:13:15 +0000</pubDate>
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		<description>I&#039;ll agree with you that my example is perhaps on the borderline of definite. The point remains that a claim can contain a trademark, it just can&#039;t be &quot;integral&quot; to describing the structure or composition or method of the claim. In other words you should be able to take it out without losing meaning. In which case, why is there in the first place:)</description>
		<content:encoded><![CDATA[<p>I&#8217;ll agree with you that my example is perhaps on the borderline of definite. The point remains that a claim can contain a trademark, it just can&#8217;t be &#8220;integral&#8221; to describing the structure or composition or method of the claim. In other words you should be able to take it out without losing meaning. In which case, why is there in the first place:)</p>
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		<title>By: chrismcneit</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1223</link>
		<dc:creator>chrismcneit</dc:creator>
		<pubDate>Thu, 07 Aug 2008 00:27:35 +0000</pubDate>
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		<description>Perhaps I am incorrect:
Trademarks or Trade Names in a Claim MPEP 2173.05(u)

The presence of a trademark or trade name in a claim is not, per se, improper under 35 U.S.C. §112, second paragraph.
2100-29 If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. §112, second paragraph.

Still, I believe something like &quot;a phosphate based synthetic surfactant detergent&quot; is needed to make it definite.</description>
		<content:encoded><![CDATA[<p>Perhaps I am incorrect:<br />
Trademarks or Trade Names in a Claim MPEP 2173.05(u)</p>
<p>The presence of a trademark or trade name in a claim is not, per se, improper under 35 U.S.C. §112, second paragraph.<br />
2100-29 If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. §112, second paragraph.</p>
<p>Still, I believe something like &#8220;a phosphate based synthetic surfactant detergent&#8221; is needed to make it definite.</p>
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		<title>By: chrismcneit</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1222</link>
		<dc:creator>chrismcneit</dc:creator>
		<pubDate>Thu, 07 Aug 2008 00:14:11 +0000</pubDate>
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		<description>Dgspambot is partly correct; however, I do not believe:

&quot;Claim 5. The method of claim 1, wherein clothes are washed with a detergent such as Tide. Would not be rejected.&quot;

is correct.

796.03(d):
Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.

The example dgspambot uses is applicable to the specification.  Here one needs to add info to make the trademark ref enabling.

That said, I think something more definite like &quot;a phosphate based synthetic surfactant detergent, such as Tide&quot; would be more appropriate for the specification.</description>
		<content:encoded><![CDATA[<p>Dgspambot is partly correct; however, I do not believe:</p>
<p>&#8220;Claim 5. The method of claim 1, wherein clothes are washed with a detergent such as Tide. Would not be rejected.&#8221;</p>
<p>is correct.</p>
<p>796.03(d):<br />
Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.</p>
<p>The example dgspambot uses is applicable to the specification.  Here one needs to add info to make the trademark ref enabling.</p>
<p>That said, I think something more definite like &#8220;a phosphate based synthetic surfactant detergent, such as Tide&#8221; would be more appropriate for the specification.</p>
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		<title>By: dgspambot</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1221</link>
		<dc:creator>dgspambot</dc:creator>
		<pubDate>Fri, 01 Aug 2008 02:00:06 +0000</pubDate>
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		<description>Velcro could legally and practically change in any way imaginable. A company has no obligation to assign a trademark name to a specific structure, compound, or article of manufacture. Whoever owns the trademark velcro could stop fashioning the &quot;hooks&quot; of polystyrene and begin using polyacrylate for example. The key to this exact question (apparently there are variations so watch out) is that the claim &quot;doesn’t describe the structure of such a fastener&quot;. In that case, the only description is the trademark name Velcro, which as discussed is not a static object. If the claim had mentioned velcro, but then gone ahead and described a specific structure, then it would not be rejected.</description>
		<content:encoded><![CDATA[<p>Velcro could legally and practically change in any way imaginable. A company has no obligation to assign a trademark name to a specific structure, compound, or article of manufacture. Whoever owns the trademark velcro could stop fashioning the &#8220;hooks&#8221; of polystyrene and begin using polyacrylate for example. The key to this exact question (apparently there are variations so watch out) is that the claim &#8220;doesn’t describe the structure of such a fastener&#8221;. In that case, the only description is the trademark name Velcro, which as discussed is not a static object. If the claim had mentioned velcro, but then gone ahead and described a specific structure, then it would not be rejected.</p>
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		<title>By: infantej</title>
		<link>http://mypatentbar.com/2007/12/13/q25-velcro-trademark/#comment-1220</link>
		<dc:creator>infantej</dc:creator>
		<pubDate>Thu, 31 Jul 2008 19:40:52 +0000</pubDate>
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		<description>I&#039;m not sure I agree.  Your example seems okay because the formula for Tide might change, but how would Velcro change?</description>
		<content:encoded><![CDATA[<p>I&#8217;m not sure I agree.  Your example seems okay because the formula for Tide might change, but how would Velcro change?</p>
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