Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 2)

Posted in They Invented What? by Jake Ward on May 31, 2006

U.S. Pat. No. 6,368,227: Method of swinging on a swing

 US6368227 FIG 1

I claim:

1. A method of swinging on a swing, the method comprising the steps of:

     a) suspending a seat for supporting a user between only two chains that are hung from a tree branch;

     b) positioning a user on the seat so that the user is facing a direction perpendicular to the tree branch;

     c) having the user pull alternately on one chain to induce movement of the user and the swing toward one side, and then on the other chain to induce movement of the user and the swing toward the other side; and

     d) repeating step

     c) to create side-to-side swinging motion, relative to the user, that is parallel to the tree branch.

2. The method of claim 1, wherein the method is practiced independently by the user to create the side-to-side motion from an initial dead stop.

3. The method of claim 1, wherein the method further comprises the step of:

     e) inducing a component of forward and back motion into the swinging motion, resulting in a swinging path that is generally shaped as an oval.

4. The method of claim 3, wherein the magnitude of the component of forward and back motion is less than the component of side-to-side motion.

Uncle Sam PTO Wants You (Or at Least Your Email Address)!

Posted in General Commentary, Practice Commentary by Jake Ward on May 30, 2006

According to a recent Notice, the USPTO is undertaking to collect the email addresses of each and every patent agent or attorney.   The PTO plans to implement “automated notifications” to registered practitioners of notices and IT system alerts, send invitations to attend conferences and other events facilitated by the PTO, and communicate other information of a “non-confidential nature.”

To enable the PTO to join the ranks of those who clutter your inbox daily, the PTO is implementing 37 CFR § 11.11, under which each “registered practitioner must notify the OED Director of up to three e-mail addresses where he or she receives e-mail.”

Thus, a practitioner is first required to send an e-mail addressed to PractitionerE-mailAddresses@USPTO.GOV with the practitioner’s last name, first name and middle name; the practitioner’s registration number; and up to three e-mail addresses. Secondly, a practitioner must send a confirmation letter addressed to Mail Stop OED with the same information as sent by email (isn’t there a hint of irony here?).

As the PTO states in the Notice, practitioner’s email addresses will not be disseminated to the public.  Therefore, there is no need to worry about spam and unwanted electronic communications . . . other than from your friendly neighborhood USPTO of course. 

A Species of the Anticipation Genus.

Posted in Practice Commentary by Jake Ward on May 26, 2006

We have generally considered (and would wager than most practitioners also consider) anticipation to be a rather black-and-white issue.  This is especially true when compared to the subjective obviousness analysis.  The anticipation analysis is simply whether a cited prior art reference discloses each and every limitation of the claimed invention, explicitly or inherently?  Therefore, aside from inherency issues, the test for anticipation is fairly objective, i.e. are all the elements disclosed or not?

However, under a particular set of circumstances the analysis can turn very subjective.  These circumstances are known as genus-species situations. See MPEP 2131.02.  In genus-species situations, a prior art species will always anticipate a genus.  In stark contrast, however, a genus does not always anticipate a species within a genus. 

The latter situation can arise, in particular, in chemical cases where one or more R groups are disclosed for a genus compound in the prior art, and the claimed invention is a particular sub-genus or species of the prior art genus.The modern standard for whether such a genus anticipates a claimed species was described more than 40 years ago in the CCPA decision of In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962). In this case, the prior art disclosed a chemical genus having a limited number of substituent groups that represented either hydrogen or alkyl radicals, and an R group containing an OH group.  The reference also disclosed a subgenus with preferred substituents for each group.  The court held that the subgenus, containing only 20 compounds and a limited number of variations in the generic chemical formula, inherently anticipated a claimed species within the genus because “one skilled in [the] art would… envisage each member” of the genus.  Thus, a genus anticipates a species if one of ordinary skill in the art is able to “at once envisage” the species compound within the chemical formula of the genus compound. 

Under these particular circumstances, the anticipation analysis becomes significantly more subjective than pracitioners are used to.  First, there is the injection of patent law’s “reasonably prudent person” analog, “the person having ordinary skill in the art,” into the standard.  Second, the question of whether this person is able to “at once envisage” the species is no less subjective.  For these reasons, this species of anticipation is distinguishable from conventional questions of anticipation, and practitioners should be aware that the analysis is very different indeed.

SARPABR – Should it be added to your patent vocabulary?

Posted in Practice Commentary by Jake Ward on May 25, 2006

The Pre-Appeal Brief Conference (the “Conference” ) is a relatively new tool available to applicants and their representatives.  Started as a pilot program on July 12, 2005, the Conference procedure has since been extended indefinitely, or “until further notice.”

The procedure provides applicants an opportunity to request that a Panel of Examiners formally review the legal and factual basis of rejections before filing an Appeal Brief.  The panel includes the Examiner of record, his or her supervisor, and other Examiners experienced in the particular art. 

To initiate the Conference procedure, one must file a Request for Pre-Appeal Brief Review (the “Request”) along with a Notice of Appeal.  Amazingly, a fee separate from the Notice of Appeal fee is not required.  Additionally, a Statement Accompanying the Request for Pre-Appeal Brief Review (the “Statement” or “SARPABR” . . . yes folks, you heard it here first) must be submitted along with the Request. The Statement must be 5 pages or less in length and specify either:

1.) clear errors in the Examiner’s rejections; or

2.) the Examiner’s omissions of an essential element needed for a prima facie rejection.

Upon review by the panel, which the PTO states should occur within 45 days of receipt of the Request, the panel will issue 1 of 4 decisions.  These decisions include the following:

1.) The application remains under appeal because there is at
     least one actual issue for appeal;

2)  Prosecution on the merits is reopened and an appropriate Office communication will follow in due course.  In appropriate circumstances, a proposed amendment may accompany the panel’s decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s);

3.)  The application is allowed on the existing claims and prosecution remains closed; or

4.)  The request fails to comply with the submission requirements and is dismissed.

The early results from the pilot program (at approximately 1000 Requests filed) indicate that the PTO has decided not to proceed with the appeal process 57% of the time!  However, the results also show that, early in the program, fewer than 20% of Notices of Appeal filed included a Request for Pre-Appeal Brief Review.

One might be apprehensive that panel members will support or give more weight to a fellow Examiner’s decisions (especially since he/she sits on the panel).  However, I believe the early statistics paint a different picture.  I believe stats support an argument that the Panels are objectively looking at the evidence and not being overly influenced by the Examiner of record. 

The PTO cautions that this procedure should not be used as a substitute for the Appeal process, and is particulary not suitable for resolution of issues lacking factual basis (interpretations and claim scope).  However, a practitioner should strongly consider using the Conference procedure when it is believed that the Examiner has made a clear error in facts, and in particular where it is stongly believed that a prima facie case has not been established.  

They Invented What? (No. 1)

Posted in They Invented What? by Jake Ward on May 24, 2006

U.S. Pat. No. 3,963,275Method of breaking free-standing rock boulders


What is claimed is:

1.)  The method of fragmenting a free-standing boulder comprising

determining the average diameter of said boulder to determine the time required for sound to traverse said average diameter,

determining the compressive strength of said boulder,

selecting a projectile having a mass which will establish an impact stress within said boulder greater than the compressive strength of the boulder, when impacted upon said boulder with a velocity which causes an energy transfer to said boulder within a time less than said determined time,

loading said cannon with said selected projectile,

loading said cannon with a charge which when detonated will cause said projectile to impact upon said boulder with said velocity,

aiming said cannon at said boulder, and

detonating said charge.

“They Invented What?” Who? When? Where?

Posted in General Commentary by Jake Ward on May 24, 2006

I hereby proclaim every Wednesday on as "They Invented What?" (TIW?) Day.  Every Wednesday I plan to post patents or other printed publications, sans extensive comment, that I find amusing, hilarious, and/or downright odd.  I have at least a few in mind already, but I am also willing to take suggestions.  Enjoy!

Are You Sure You Want Six Paragraphs?

Posted in Statute Commentary by Jake Ward on May 23, 2006

For a variety of reasons, many practitioners don’t.  35 U.S.C. § 112, sixth paragraph, has been a subject of contentious debate in patent practice.  The AIPLA has previously passed a Resolution to amend Section 112, sixth paragraph.  See AIPLA Bulletin, October-November-December 1994, 137-138.  Additionally, the ABA had previously considered a Resolution to delete the paragraph altogether.  See ABA Intellectual Property Law Section Proposed Resolution 152-3, Deletion of Sixth Paragraph of 35 U.S.C. Sect. 112. 

Why, you may ask?  Well let me explain. 

The sixth paragraph of Section 112 states:  “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

The PTO, in making a determination of patentability used to interpret a “means or step plus function” limitation by giving it the “broadest reasonable interpretation.” Under the former practice, a limitation was interpreted as reading on any prior art means or step which performed the function specified in the claim without regard for whether the prior art means or step was equivalent to the corresponding structure, material or acts described in the specification. 

Those days are long gone, however, and the PTO currently interprets means-plus-function language in accordance with the CAFC rulings in In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994) and In re Dossel, 115 F.3d 942 (Fed. Cir. 1997).  According to the guidelines at MPEP 2181, the PTO interprets means-plus-function claims in accordance with the corresponding structures, materials, or acts describe in the specification, and equivalents thereof.  Means-plus-function elements are therefore limited to what is disclosed in the written description and equivalents.

Well, you many notice that the PTO guidelines for interpreting means-plus-function language can result in some interesting and problematic situations.  For instance, it is technically possible for patents covering different inventions to issue with identical claims, since the claims are distinguished during prosecution through incorporation of “corresponding structures” from the specification! Furthermore, these guidelines can constrain the scope of the claims to no more than the preferred embodiment regardless of the actual scope of the invention!  There is also serious risk of indefiniteness related to the questions of what disclosure and how much of the disclosure should be incorporated.

As far as I am aware, these issues continue to be relevant. Although I am not in favor of completely removing the paragraph, since the section could be very useful in providing the true scope of an applicant’s invention (without the need for listing a multitude of alternatives in the specification), the paragraph needs some well-planned revising to avoid the aforementioned problems.   

As a potential topic for discussion or future posts, I’m curious whether the proposed Patent Reform Act of 2005 or other patent legislation affects this issue?

Arbitrary and Capricious.

Posted in Science and Technology by Jake Ward on May 22, 2006

How many patent practitioners out there rely on Wikipedia articles for general background information on science and technology?  I admit to it.  In fact, I have found Wikipedia to be a very useful source of general information.   Some studies have claimed that the online encyclopedia is nearly as accurate in covering scientific topics as Encylopedia Britannica.  See   However, to what extent do the courts think such articles should actually be relied upon?

A colleague recently brought the case of Campbell v. Sec'y of Health and Human Servs. to my attention.  See  Although not an IP case, I found the court's ruling with respect to Wikipedia use very interesting. 

In this case, Campbell sought review of a decision rejecting their vaccine injury claims under the Vaccine Act.  The USCFC found that the procedures employed by the Special Master in the original decision were fundamentally unfair and that the rulings were either inadequately explained or arbitrary and capricious.  In particular, the court found the reliance on Wikipedia "medical" articles to be an "extraordinary risk."   "A review of the Wikipedia website reveals a pervasive and, for our purposes, disturbing series of disclaimers, among them, that: (i) any given Wikipedia article 'may be, at any given moment, in a bad state: for example it could be in the middle of a large edit or it could have been recently vandalized;" (ii) Wikipedia articles are "also subject to remarkable oversights and omissions;' (iii) 'Wikipedia articles (or series of related articles) are liable to be incomplete in ways that would be less usual in a more tightly controlled reference work;' (iv) 'another problem with a lot of content on Wikipedia is that many contributors do not cite their sources, something that makes it hard for the reader to judge the credibility of what is written;' and (v) 'many articles commence their lives as partisan drafts" and may be 'caught up in a heavily unbalanced viewpoint.'"  The Wikipdia articles did not – at least on their face – "remotely meet [the] reliability requirement."

I think this case may serve as fair warning on the use of Wikipedia articles in any legal practice, including IP or patent practice.  In light of this case, and the strong language regarding reliability of Wikipedia, a practitioner should carefully consider corroborating Wikipedia information when it is used.