Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 133)

Posted in They Invented What? by Jake Ward on March 30, 2009

U.S. Pat. No. 7,488,244: Apparatus for skinning squirrels.

JW Note: We noticed this at the new 12:01 Tuesday patent law blog. Looks like a great new patent blog.  Check it out!

 squirrelskinner

What is claimed is:

1. An apparatus that aids in the skinning and cleaning of a squirrel comprising: (A) a base plate comprising a solid metal form with a bend at an angle to form a bent end and a non-bent end; (B) a toggle clamp comprising a base, a stationary arm, a pivoting arm, a metal plate and a handle wherein said stationary arm and pivoting arm are connected to said base using screws so as to form a 90 degree angle; and wherein said pivoting arm is connected to said metal plate using screws on one end and said handle is molded to said pivoting arm on the other end; (C) a first metal tube; (D) a second metal tube; (E) a first fastening device; (F) a second fastening device; wherein said base plate is connected at said bent end to a stationary object using said first fastening device; and wherein said toggle clamp is connected to said base using said second fastening device; and wherein said first metal tube is connected to the end of said pivoting arm that is not already connected to said base of said toggle clamp using a bolt and said second metal tube is welded to said base plate at said non-bent end in order to form a gap between said first metal tube and said second metal tube; and wherein said toggle clamp is engaged by moving said handle in a downward motion until said handle is parallel to said base plate thereby pressing said metal plate against said stationary arm to move said stationary arm towards said base plate; and wherein upon engaging said toggle clamp the said first metal tube and said second metal tube are pressed tightly together.

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Tafas v. Doll.

Posted in Opinion Commentary by Jake Ward on March 21, 2009

CAFC Finds the USPTO Final Rules Limiting Continuations to Conflict With 35 USC 120, But Final Rules Limiting Claims, RCEs, and ESDs are Within USPTO’s Rulemaking Authority.

(Fed. Cir. 2009, 08-1352)

Triantafyllos Tafas, SmithKline Beecham Corporation, and Glaxo Group Limited (collectively “Appellees”) originally filed suit against the USPTO in relation to Final Rules published by the USPTO that placed new limits on the claims and continuations.  On October 31, 2007, the district court preliminarily enjoined enforcement of the Final Rules.  Appellees then moved for summary judgment that the Final Rules are invalid and sought a permanent injunction against their enforcement.  Appellees’ summary judgment motions alleged that the Final Rules were impermissibly substantive, inconsistent with law, arbitrary and capricious, incomprehensibly vague, impermissibly retroactive, and procedurally defective.  The district court agreed with Appellees that the Final Rules were substantive rules that change existing law and alter the rights of applicants under the Patent Act.   Accordingly, the district court granted Appellees’ motion for summary judgment that the Final Rules are invalid and granted a permanent injunction.  The USPTO appealed to the CAFC. 

Four of the Final Rules 75, 78, 114, and 265 were at issue in the appeal.  Final Rule 75 requires an applicant who submits either more than five independent claims or twenty-five total claims to provide the examiner with information in an examination support document (“ESD”).  Final Rule 78 governs the availability of continuation and continuation-in-part applications.  Under the rule, an applicant is entitled to file two continuation applications as a matter of right.  If an applicant wishes to pursue more than two continuation applications, the applicant must file a petition “showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application.”  If the applicant cannot make the requisite showing, the USPTO will accept the application  for examination but will “refuse to enter, or will delete if present, any specific reference to a prior-filed application.”  Final Rule 114 provides for similar treatment of RCEs, stating that the applicant must file a petition “showing that the amendment, argument, or evidence sought to be entered could not have been submitted prior to the close of prosecution in the application.”  The requirements for ESDs are set forth in Final Rule 265.  To comply with Final Rule 265, an applicant must conduct a preexamination prior art search, provide a list of the most relevant references, identify which limitations are disclosed by each reference, explain how each independent claim is patentable over the references, and show where in the specification each limitation is disclosed.

On appeal, the CAFC (majority of panel including Judges Prost and Bryson, with dissent by Judge Rader) concluded that the following USPTO Final Rules are procedural and within the scope of the USPTO’s rulemaking authority.

  • Final Rule 75 – Claims – requiring an applicant who submits either more than five independent claims or twenty-five total claims to provide the examiner with information in an examination support document (“ESD”);
  • Final Rule 78 – Continuations – requiring a “showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application” for more than two continuations;
  • Final Rule 114 – RCEs – requiring a “showing that the amendment, argument, or evidence sought to be entered could not have been submitted prior to the close of prosecution in the application” for more than one RCE; and 
  • Final Rule 265 – ESDs – this rule setting forth the specific requirements for ESDs.

However, the CAFC further found that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid.  Section 120 states, in part, that “[a]n application for patent . . . filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application”.  Final Rule 78 would allow the USPTO to accept a continuation application without the requisite showing, but the USPTO would “refuse to enter, or will delete if present, any specific reference to a prior-filed application.”  Accordingly, the effect of Final Rule 78 would be to impermissably remove the application from the scope of 35 U.S.C. § 120, which would otherwise entitle the application to the filing date of the prior-filed application.

The CAFC affirmed the district court’s grant of summary judgment that Final Rule 78 is invalid, vacated the grant of summary judgment with respect to Final Rules 75, 114, and 265, and remanded for further proceedings.

Leaving the door open to further mischief, the CAFC concluded:

Because of the complexity of this case and the numerous arguments presented on appeal and before the district court, we think it is important to expressly summarize what we believe remains for the district court on remand. This opinion does not decide any of the following issues: whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive.

Judge Rader notably dissented, stating:

. . .  I would affirm the district court’s conclusion that the PTO exceeded its statutory rulemaking authority in promulgating these rules. For that reason, I concur in part with this court’s ultimate conclusion regarding Final Rule 78, but dissent in part with respect to Final Rules 114, 75, and 265.

This case presents a threshold question about the nature of these rules—substantive or procedural . . . .  Because the Final Rules drastically change the existing law and alter an inventor’s rights and obligations under the Patent Act, they are substantive and the PTO exceeded its statutory rulemaking authority under 35 U.S.C. § 2(b)(2).

JW Note:  See also our previous posts relating to the USPTO Claims and Continuations Rules here.  The saga continues . . . .

They Invented What? (No. 132)

Posted in They Invented What? by Jake Ward on March 19, 2009

U.S. Pat. No. 6,688,105: Iceberg utilization process improvement.

 icebergmover

What is claimed is:

1. An improved method for the process of utilizing icebergs for supplying fresh water to arid geographical areas comprising the steps of selecting an iceberg, insulating the iceberg, moving the iceberg to its destination, and capturing melt water for distribution wherein improvements comprise:
          selecting a tabular iceberg up to 2 kilometers in length,
          growing buoyant and thermally insulating mats of seaweed in a sea bed,
          insulating said tabular iceberg with said mats by towing said mats under said iceberg and allowing the mats to float against the bottom and sides of said iceberg,
          providing a propulsion device fitted with large pusher plates for contacting said iceberg,
          pushing said iceberg with said propulsion device such that the resultant force vector is directed through the center of gravity of the iceberg, and
          providing a channel for receiving said icebergs at a destination site.

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They Invented What? (No. 131)

Posted in They Invented What? by Jake Ward on March 12, 2009

U.S. Pub. Appl. No. 2008/0172175: Funny/humorous/abusive GPS system or navigation system.

BACKGROUND OF THE INVENTION

GPS or navigation system is a gadget which with the help of a satellite guides you when you are driving a vehicle and gets you to your desired destination. When this gadget is turned on, it can locate where you are. When the address of the destination is entered in this little, computer operated machine, the driver can either look at the street map shown on its screen or can also turn on voice (audio) guided directions in addition. These directions are usually given very politely in a woman’s voice, some cases could be a man’s voice too. With my invention, there will be an extra feature added to the existing GPS systems. The drivers will be able to turn on or off this feature. Funny phrases like “YOU STUPID” OR “YOU SILLY” OR “YOU DUMMY” will be added in the audio system while giving directions. The voice will gently scold or admonish the driver in case the driver was unable to follow directions. It will also appreciate the driver for being able to follow directions given by the voice. This feature can be added to all the navigation devices throughout the world and in all different languages. This kind of feature can act as a mood enhancer or mood up-lifter for drivers and passengers in a vehicle and can add a little spice to the journey.

CLAIMS:

1. I claim that the funny features I am proposing for the voice generated directions, can be added to the existing GPS or navigation systems world-wide. A stand-alone machine can also be built with these funny features. The spicy funny phrases as described in the detailed description of the invention can be added in hundreds of different languages for use in various countries. My invention will certainly enhance the existing navigation systems. The features I am proposing are not part of any existing GPS or navigation system at present. These features will bring into life NEW AND IMPROVED GPS SYSTEM. Listening to funny or gentle admonishes will certainly add a little spice in the life of travelers, drivers and passengers and the navigation system can act as a mood enhancer. In the ABUSIVE GPS feature, the travelers could also have fun listening to harsh admonishes or abusive phrases like four letter words.

Patent Reform Act of 2009.

Posted in General Commentary by Jake Ward on March 3, 2009

As anticipated earlier today by Promote the Progress, new patent reform legislation was introduced today in both the Senate and the House of Representatives.  A copy of the Senate bill may be viewed here.  An identical bill (here) was introduced in the House.

The following list of sources provides some coverage and commentary related to this new legislation.  Enjoy!

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Methinks Thou Doth Protest Too Little: Providing Relevant References to the USPTO.

Posted in Practice Commentary by Mike Dockins on March 3, 2009

How many patent practitioners are aware of the various methods of submitting art to the USPTO that may invalidate a patent or result in §102 or §103 rejections of pending applications?  Many are aware, of course, of the methods of bringing new art to the USPTO’s attention with respect to issued patents, for example:  Ex Parte Reexaminations (see MPEP 2200 et seq.); and Inter Partes Reexaminations (see MPEP 2600 et seq.).

The relative successes of Ex Parte Reexamination and Inter Partes Reexaminations are well documented.  In fact, we documented one recent study here.

But what about submitting art during the prosecution of pending applications?  There are at least two methods of submitting art during the prosecution of patent applications that may be employed, namely:  Protests (see 37 CFR 1.291; MPEP 1900 et seq.); and Third Party Submissions (see 37 CFR 1.99; MPEP 1134-1134.01).  While statistical data regarding the frequency of Protest and Third Party Submission filings was not readily located, the following is some general information concerning these strategies.

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