Anticipate This!™ | Patent and Trademark Law Blog

Text Searchable BPAI Opinions.

Posted in Practice Commentary by Jake Ward on August 31, 2007

In the USPTO news today:

Board of Patent Appeals and Interferences Final Decisions

Board of Patent Appeals and Interferences Final Decisions Now Text Searchable.

A text searching capability is now available for searching publicly available final decisions of the Board of Patent Appeals and Interferences that are posted on the Board’s Final Decision FOIA web page, http://des.uspto.gov/Foia/BPAIReadingRoom.jsp. This web page is accessible via the Board’s web page on the USPTO’s web site.

Specifically, the database of final Board decisions that are posted on the Final Decision FOIA web page will be searched for a text string entered into a text search field and the identity of any decision(s) containing the string will be returned. . . .

They Invented What? (No. 62)

Posted in They Invented What? by Jake Ward on August 29, 2007

U.S. Pat. No. 6,629,793:  Emoticon keyboard.

JW Note:  :-) . . . I guess I’m old-fashioned.

 smileyboard

What is claimed is:

1. A keyboard system for interfacing with an information processing system, comprising:

a keyboard including keys representing emoticons;
a keyboard processor in the keyboard, wherein the keyboard processor produces an enhanced scan code when a key representing an emoticon is pressed in the keyboard:
a keyboard driver on a computer system for interfacing with the keyboard, wherein the keyboard driver receives the enhanced scan code and determines at least one character that corresponds to the enhanced scan code; and
an application on the computer system for interfacing with the keyboard driver, therein the application receives the at least one character determined by the keyboard driver and displays an image corresponding to the at least one character.

(more…)

They Invented What? (No. 61)

Posted in They Invented What? by Jake Ward on August 22, 2007

U.S. Pat. No. 6,233,866:  Plant attachment device for killing obnoxious plants.

 plantkiller

What is claimed is:

1. A plant attachment device for chemically killing an individual plant comprising:

a herbicide carrier, said herbicide carrier including a housing having a chamber therein for encompassing a portion of a cut stem of a deeply rooted cut plant, said herbicide carrier having a first closed end and a second end;
a herbicide for killing a plant, said herbicide located in said chamber, said herbicide maintainable in said chamber;
a plant engagement member, said plant engagement member engaging the cut stem of the deeply rooted cut plant to maintain the herbicide carrier in position thereon to enable the herbicide to penetrate and kill the cut plant.

(more…)

USPTO Guidance on New Claims and Continuations Rules.

Posted in Practice Commentary by Jake Ward on August 22, 2007

Summaries, presentations, charts, and general guidelines related to the new claims and continuations rules have graciously been provided by the USPTO, and may be found here.

A USPTO summary highlighting the rules is reproduced below:

Final Rule: Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications

Highlights of the Changes in this Final Rule:

Claims:

The applicant must submit an examination support document (ESD) if an application contains more than five independent claims or more than twenty-five total claims (five/twenty-five claim threshold), counting all of the claims in any other copending application having a patentably indistinct claim.

For applications that exceed five/twenty-five claim threshold because they contain claims to more than one invention, the applicant has the option of submitting a suggested restriction requirement (SRR) and election of an invention to which there are no more than five independent claims or twenty-five total claims.

If an application exceeds the five/twenty-five claim threshold and does not contain a SRR or ESD, the USPTO will issue a notice giving the applicant time to provide an ESD or amend the application to be within the five/twenty-five claim threshold.

The change is applicable to all applications in which a first action on the merits has not been mailed by November 1, 2007. The USPTO will issue a notice in applications pending before November 1, 2007 giving the applicant time to provide an ESD or an SRR, or to amend the application to be within the five/twenty-five claim threshold.

Continued examination filings:

An application or chain of continuing applications may include two continuing applications (continuation or continuation-in-part applications), and a single request for continued examination (RCE) in any one of these three applications (the initial or two continuing applications), without justification.

The applicant may file divisional applications to the non-elected invention(s) only if the USPTO issues a restriction requirement in the prior application.

The applicant must identify the claims in a continuation-in-part application that the applicant believes are entitled to the parent application’s filing date. The USPTO will permit an applicant to have “one more” continuing application after August 21, 2007, regardless of the number of continuing applications filed before November 1, 2007.

Related applications and double patenting:

The applicant must identify other commonly owned pending applications or patents that: (1) have a claimed filing or priority date within two months of the claimed filing or priority date of the application; and (2) name at least one inventor in common with the application.

In addition, the applicant must also file a terminal disclaimer or explain how the applications (or application and patent) contain only patentably distinct claims if the applications also have the same claimed filing or priority date and contain substantial overlapping disclosure.

The USPTO may require the applicant to put all of the patentably indistinct claims in a single application unless there is good reason for multiple copending applications having patentably indistinct claims.

Remember, the effective date for the changes is November 1st, 2007.

§ 1.78(f) Applications and patents naming at least one inventor in common.

Posted in Practice Commentary by Jake Ward on August 21, 2007

The new claims and continuations rules are certain to receive a good deal of treatment in the IP blogosphere over the next several days. That being said, the following is a brief summary of just one of the new rules, § 1.78(f), promulgated as part of the rules package published in the Federal Register today.  

Rule § 1.78(f) appears to require identification in a separate paper (possibly an IDS? JW Note 8/24/07:  See comments) of a serial number of a co-pending application that is filed within 2 months (before and after?), shares a common inventor, and is owned or assigned to a same person.  The paper identifiying the co-pending application must be filed within a prescribed time period (e.g., four months from filing date). 

Notably, if the applications have the same filing date and a “substantial overlapping disclosure,” a rebuttable presumption is now made that the applications contain at least one claim that is not patentably distinct (double patenting rejection).  Thus, an applicant must rebut the presumption by:  1) establishing that the claims of the applications are patentably distinct, or 2) filing a terminal disclaimer, within a prescribed time period (e.g., four months from the filing date).  The rule also states that, absent good and sufficient reason for the two or more applications having patentably indistinct claims, the Office may require elimination of the indistinct claims from all but one of the applications.

The new Rule § 1.78(f) is repeated in its entirety below.

§ 1.78 Claiming benefit of earlier filing date and cross-references to other applications. 

(f) Applications and patents naming at least one inventor in common. 

(1)(i)  The applicant in a nonprovisional application that has not been allowed (§ 1.311) must identify by application number (i.e., series code and serial number) and patent number (if applicable) each other pending or patented nonprovisional application, in a separate paper, for which the following conditions are met:
 (A) The nonprovisional application has a filing date that is the same as or within two months of the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;           
 (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application; and           
 (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application.            

(ii) The identification of such one or more other pending or patented nonprovisional applications if required by paragraph (f)(1)(i) of this section must be submitted within the later of:            
 (A) Four months from the actual filing date in a nonprovisional application filed under 35 U.S.C. 111(a);
 (B) Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371; or
 (C) Two months from the mailing date of the initial filing receipt in such other nonprovisional application for which identification is required by paragraph(f)(1)(i) of this section.

(2)(i) A rebuttable presumption shall exist that a nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in another pending or patented nonprovisional application if the following conditions are met:
 (A) The nonprovisional application has a filing date that is the same as the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
 (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application;
 (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application; and
 (D) The nonprovisional application and the other pending or patented nonprovisional application contain substantial overlapping disclosure. Substantial overlapping disclosure exists if the other pending or patented nonprovisional application has written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the nonprovisional application.           

(ii) If the conditions specified in paragraph (f)(2)(i) of this section exist, the applicant in the nonprovisional application must, unless the nonprovisional application has been allowed (§ 1.311), take one of the following actions within the time period specified in paragraph (f)(2)(iii) of this section:
 (A) Rebut this presumption by explaining how the application contains only claims that are patentably distinct from the claims in each of such other pending nonprovisional applications or patents; or
 (B) Submit a terminal disclaimer in accordance with § 1.321(c). In addition,where one or more other pending nonprovisional applications have been identified, the applicant must explain why there are two or more pending nonprovisional applications naming at least one inventor in common and owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims.

(iii) If the conditions specified in paragraph (f)(2)(i) of this section exist,the applicant in the nonprovisional application must, unless the nonprovisional application has been allowed (§ 1.311), take one of the actions specified in paragraph (f)(2)(ii) of this section within the later of:
 (A) Four months from the actual filing date of a nonprovisional applicationfiled under 35 U.S.C. 111(a);
 (B) Four months from the date on which the national stage commencedunder 35 U.S.C. 371(b) or (f) in a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371;
 (C) The date on which a claim that is not patentably distinct from at least oneof the claims in the one or more other pending or patented nonprovisional applications is presented; or
 (D) Two months from the mailing date of the initial filing receipt in the one ormore other pending or patented nonprovisional applications.

(3) In the absence of good and sufficient reason for there being two or more pending nonprovisional applications owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims, the Office may require elimination of the patentably indistinct claims from all but one of the applications.

Our initial thoughts are related to the practicality of complying with this rule, particularly for large companies that may spread patent preparation and prosecution between more than one firm? 

Any thoughts on this rule among our AT! readers?  Feel free to leave a comment.

New Claims and Continuations Rules to Publish August 21, 2007.

Posted in Practice Commentary by Jake Ward on August 20, 2007

JMW Update: The rules as published in the Federal Register may be found here. (August 21, 2007)

In today’s USPTO news:

USPTO to Publish Measures to Improve Patent Quality
Claims and Continuations Rules will improve effectiveness and efficiency of patent examination

The Department of Commerce’s United States Patent and Trademark Office (USPTO) will publish tomorrow in the Federal Register new rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater precision in describing the scope of their inventions.  The new rules will be effective on November 1, 2007. . . .

The new rules have been modified, relative to the rules that were originally proposed early last year, in response to the extensive comments the USPTO received from the public.  Under the new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right.  Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant.  Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims. . . .

The new rules are available today to anyone who visits the Federal Register office and will be available tomorrow, August 21, 2007, no later than noon, in the Federal Register column on our News & Notices page .   In the coming weeks, the USPTO will be conducting outreach on these new rules to better inform external stakeholders of their content and to answer questions.  A webinar on the new rules is scheduled for Thursday, August 23, 2007.  More information on this webinar and other upcoming information sessions will be published on Rule Changes to Focus the Patent Process in the 21st Century.

They Invented What? (No. 60)

Posted in They Invented What? by Jake Ward on August 15, 2007

U.S. Pat. No. 3,142,424:  Gun holder for bicycles.

 bike gun

What is claimed as new is as follows:

A gun holder for attachment to a bicycle, comprising an integral sheet of material folded in half about its longitudinal axis so as to form an aperture tapered in cross-section from its widest portion adjacent the fold to its narrowest portion adjacent the meeting edges thereof so as to snugly receive a gun, means securing the meeting edges together, second means closing on end of the gun holder adjacent the meeting edge near the closed end, and an elongated tying means having extending ends and a center section thereof secured to the sheet of material by insertion through aligned holes in one of the sides of said sheet forming the tapered aperture, said gun holder being positionable on the rear wheel of a bicycle with the axle of the wheel extending through the aligned apertures and the holder oriented so as to project upwardly and rearwardly therefrom, said holder being of a length so as to position the upper end thereof above the fender of the wheel for ease of access thereto for removal and replacement of a gun by a rider on the bicycle, the center of the tying means being located at approximately the top of the fender.

Proposed Rules Regarding Claims Containing Alternative Language.

Posted in Practice Commentary by Jake Ward on August 10, 2007

In today’s patent news, the USPTO is proposing new rules to “improve an examiner’s ability to focus the examination process for claims that contain more than one independent and distinct invention.”

Specifically, the proposed rules would limit “the practice of listing multiple inventions in the alternative in a single claim.”  These “multi-invention alternative” claims are know as Markush claims in the patent practice.  A Markush claim recites alternatives in a format such as “selected from the group consisting of A, B and C,” and is currently an acceptable form of alternative expression at the Patent Office.  See also the previous AT! post, titled Alternative Expressions in Claims.

In general, the proposed rules would limit each claim to a single invention and define” acceptable” formats for claims that set forth alternatives. 

The proposal of limiting each claim to a single invention includes the following language: 

[W]hen subject matter that reads on multiple species is defined in a single claim using alternative language, the claim is limited to a single invention when at least one of the following two conditions is met: (1) All of the species encompassed by the claim share a substantial feature essential for a common utility, or (2) all of the species are prima facie obvious over each other.

Among the proposed acceptable formats are the following:

1)  The number and presentation of alternatives in the claim should not make the claim difficult to construe;
2)  Each alternative within a list of alternatives must be substitutable one for another;
3)  No alternative may itself be defined as a set of further alternatives; and
4)  No alternative may be encompassed by any other alternative within a list of alternatives, unless there is no other practical way to define the invention.

These proposed rules appear to be designed to both facilitate examination AND shut down a potential loophole in the proposed rules that would restrict initial examination to a limited number of claims.  As the proposal states:

The search and examination of such claims often consume a disproportionate amount of Office resources as compared to other types of claims, because determining the patentability of these claims often requires a separate examination of each of the alternatives within the claims. . . .  Applicants should [also] not be permitted to circumvent the proposed claims rules by presenting a single claim that sets forth multiple independent and distinct inventions in the alternative.

The proposed rules are published in the Federal Register, found here.  Written comments and suggestions must be received on or before October 9, 2007, and may be sent to markush.comments@uspto.gov.  No public hearing will be held.    

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