Archive for the “Patent Prosecution” Category

It may seem obvious in hindsight, but a regular utility application is a continuation or CIP of any earlier filed provisional application. If you add material to the provisional, as most often is the case, then any claims directed to that new material do not get the priority date of the provisional. See Finnegan’s blog post: Getting Priorities Straight: Patents Have No Presumptive Entitlement to Priority Date of Provisional Applications

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“Indicate precisely what you mean to say…”

Good advice for letting someone know you’ll still need them when they’re 64. And also good advice when writing up patent specifications. Consider what happened to Clyde Nason when he tried to patent a miniature pump. The heart of the device is a loop of shape memory alloy (SMA) that engages one tooth of a “gear”, as shown in the figure below.  As the SMA is cycled back and forth through it’s transition temperature the loop alternately pulls on the engaged tooth, rotating the “gear”, and extends to engage the next tooth.


SMA motor

So what went wrong?

The examiner went searching for pumps that were driven by SMA material and for rotary gears driven by SMA material and was able to find prior art in both those areas. Voila – Nason’s invention is “obvious” since you can combine these two to get an SMA-driven-gear driven pump, right? Wrong, since, among other reasons, the gear driven by SMA in the prior art was actually a linear rack that rotated a pinion gear…not really applicable to using SMA to directly rotate a gear.

Happily, the Patent Board of Appeals ultimately threw out the examiner’s rejection but could Nason have avoided the extra expense of a appeal?

It’s always hard to predict what motivates an examiner to go off the deep end and make obviousness rejections that make no sense, but the one thing I always like to keep in mind is that YOU are the expert in your particular invention and the EXAMINER doesn’t have the time to dig deeply into your invention…and, frankly, is likely to be a POSITA (Person of Ordinary Skill In The Art) at best. Thus, it is incumbent on you, the expert, to teach the ordinarily skilled examiner about your invention. And the best way to do that is, IMHO, is to be as precise and unambiguous as you can in preparing your patent specification.

In Nason’s case, his choice of the word “gear” to describe the round item with teeth in his pump was a mistake. It is not a gear, it is a ratchet or cogwheel. And the loop of SMA is acting as the pawl to ratchet the wheel around. Had Nason called it a cogwheel and described the action of the SMA as a pawl I expect the examiner would not have searched for gears driven by SMA material. Of course, the real problem here is the appalling (no aural pun intended) lack of mechanical understanding of the examiner, but nevertheless your goal is to get your patent allowed and that is best accomplished by realizing that YOU should lead the patent examiner by the nose, if necessary, to the proper understanding of your invention vis-a-vis the prior art.

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Is “shape” claimable?

Every so often a client wants to get a patent that includes “shape” as at least one of the claims. In one case the item in question was a printed circuit card shaped to fit the non-rectangular boundaries of his equipment’s housing. At the other extreme, consider a surgical or dental tool shaped to perform a specialized function. How about you – is everything you make a simple rectangular solid or is there a [claimable] shape in your future?

Of course, no one knows for sure what the patent examiner will or will not allow, but from experience we can make some good guesses. We all know that an invention must be novel and non-obvious to be patentable. In addition, many people seem to forget, an invention must be useful. So the first question to ask about your “shape” claim is whether the particular shape is needed to make your invention work – if not, maybe you should think about filing a design patent, which covers purely ornamental aspects of an invention. Think about a Mickey Mouse watch or clock, where the hands of the clock are Mickey’s arms and hands. Do the shapes of the watch hands make a difference for telling the time? No. So getting a utility patent on the shape of the watch hands would be hard to imagine.

Well then, how about the printed circuit card shaped to fit the non-rectangular boundaries of the equipment housing. It’s not ornamental. But again, the circuit card is identical to millions of other circuit cards, except for its outer periphery. So again, probably no allowable claim. In this case the examiner would probably reject the claim as an obvious design choice (to shape the circuit board to fit the space available).

At the other end of the “shape-claim” spectrum are those inventions wherein the “shape” is what is new and is what makes the invention perform its function; for example, in a new dental tool the shape of the tool is what make the tool novel and non-obvious. In these cases the “shape” in question can usually be defined very precisely: a probe made from 1 millimeter stainless steel wire, having a first 45 degree bend 4 millimeters from its distal end, etc. etc.

Finally, there are the inventions that are based on shape, but only loosely. Patent claims are supposed to “particularly point[ing] out and distinctly claim[ing] the subject matter which the applicant regards as his or her invention.” Claims that are fuzzy are rejected as indefinite. So what happens when you invention depends on its shape…but not in a hard and fast way. Assuming you can develop a mathematical formula describing the ideal shape, how do you describe how closely a competitor’s product must match that ideal shape to still be infringing; after all, you can’t claim the entire world. If you write a broad claim it may/will be rejected as indefinite; if you write a narrow claim your competitors can easily avoid infringement.

So shape up! Consult with your IP professionals to figure out if your shape-based claims are worth pursuing.

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I know we are just past the holiday period – you know, peace on earth and good will toward men – but a couple of recent office actions have me convinced that patent examiners are anything but men of good will. How do they annoy me… let me count the ways I’ve seen in blogs etc.:

1) rejecting a claim with a “bouyant” flap because a similar flap in the prior art was a hydrofoil and therefor rose toward the surface [uh…only when moved through the water!]

2) rejecting a claim with a “translationally stationary” scanning element because a prior art scanner, which moved across the surface of an object, disclosed “a translational stationary scan mechanism with respect to said surface” – wait for it now – “in the vertical direction”. [Emphasis added]

3) rejecting a claim with a remote [microwave] imaging element because “as a radar guy” he thought the system doing the imaging OF the remote element.

4) rejecting an invention with removable legs because, the examiner stated,“the legs of [the prior art reference] are capable of being removed, even if it requires a blow torch.” [Emphasis added.]

5) Rejection of an invention that involved flexible padding because, again, with enough force even a steel plate is flexible. [Emphasis added.]

6) Rejection of a processing system that used a browser applet because the examiner equated the client-server relationship to a terminal on a mainframe.

The good news is that these dumb rejections are (generally) overcome

The bad news is that overcoming them costs you, the inventor, money. Either in extended examination costs (i.e., having to have your attorney file an “RCE”, a request for continued examination) or by going before the patent office’s board of appeals.

In any case, these stupid examiner tricks are the result of bad management at the PTO, where examiners are not judged by the quality of their examinations (as measured at least in part by the validity of their office actions).

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