It may be beneficial to include suboptimal embodiments (i.e., versions of the invention that are not what the inventor understands to be its best mode) in the patent application along with alternative embodiments of the invention that are not central to the inventor’s vision, at least to the extent that they relate to the point of novelty. If the mechanical pencil’s point of novelty is the mechanism that pushes the lead forward through the pencil (i.e., the mechanical clicker), the mechanical clicker’s optimal positioning, and best mode, may be near the user’s index finger. However, indicating that the mechanical clicker can be positioned at different, less convenient areas (e.g., upper part near the eraser) of the pencil body may also be beneficial. Less optimal embodiments may not be as advantageous those of the best mode of the mechanical pencil, but can nevertheless be considered a minimally viable product that could compete with the invention. Hence, the minimally viable product or embodiment should be included in the patent application with the claims directed to the shared point of novelty to secure proper patent protection (in this case, a mechanical clicker positioned on the body of the mechanical pencil regardless of its position). Including these alternative embodiments also provides a buffer zone around the preferred embodiments of the invention by preventing others from obtaining a patent on these alternative embodiments. For example, including multiple, though less convenient, positions of the mechanical clicker system in the patent application would prevent others from patenting a mechanical pencil that is only slightly different such as a mechanical pencil with a clicker system on a different position away from the index finger on the pencil body.
As a case in point for including suboptimal embodiments, Kennametal (patent owner) sued Ingersoll (accused infringer) for patent infringement on its patented cutting tool containing ruthenium as a binder, which was coated onto the tool using a physical vapor deposition (PVD) process.46 Ingersoll attacked the patent’s validity, citing a prior art reference in a another company’s (Grab) patent in which the application of the ruthenium coating by way of physical vapor disposition was not the primary way of applying the coating. However, it had been included as a passing comment and appears to have been an afterthought during the preparation of the patent application.47 The court ruled Kennametal’s patent invalid and that the teaching or disclosure found in the Grab prior art reference prevented other companies from securing a patent for the process of applying ruthenium as a binder via PVD.
Based on Kennametal, use of the phrase, “other ways or means or components are also contemplated including but not limited to [insert list of alternatives],” may be used to broaden the scope of patent protection. This case also demonstrates the advantages of including alternative embodiments to prevent others from securing a patent on similar, yet distinct (and perhaps less effective), methods. At the time of filing, the inventor may consider them less favorable, but one may later become the preferred embodiment, or at least a competitive alternative.
By including these alternative embodiments in the application, prior art is created that can be used against the patents and patent applications of competitors. Moreover, by including them in the specification, the inventor is able to later claim these alternative embodiments for him or herself.
47. Ingersoll (Defendant) petitioned the USPTO to reexamine Kennametal’s patent in light of the Grab prior art patent reference, which expressly disclosed all of the limitations of Kennametal’s claimed invention except for the method of applying the ruthenium binder via PVD process. The prior art reference mentioned ruthenium being applied with the PVD method but only as a side note (“However, applicants also contemplate that one or more layers of a coating scheme may be applied by physical vapor deposition (PVD).”) Kennametal argued that Grab did not disclose the PVD method. The examples in the Grab reference only focused on two other unrelated, preferred methods of ruthenium application, mentioning PVD only as a “contemplated” method. Kennametal argued that, according to the Grab reference, one could not “immediately envisage” ruthenium being applied by PVD and it could not therefore be characterized as disclosing such information in order to invalidate Kennametal’s patent. The Grab reference disclosed many different base materials and combinations thereof as well as three different methods of applying those materials. According to Kennametal, a total of 10,881 different combinations of binder materials and processes for applying them existed within the disclosure of the Grab reference. Kennametal asserted that the large number of possibilities negated the disclosure of any one specific combination except those “immediately envisaged” according to the description of the Grab reference. The specific examples highlighted in the specification are immediately envisaged and disclosed in the specification. But what about the other combinations? The Federal Circuit reasoned that since Claim 5 of the Grab reference recited five different materials (including ruthenium), and the patent disclosed only three different coating methods (including PVD), the Grab patent disclosed only fifteen, not 10,881 combinations. Grab’s explicit “contemplation” of PVD was sufficient evidence that a reader would immediately envisage applying ruthenium as a binder using PVD