Anticipate This!™ | Patent and Trademark Law Blog

All Aboard the USPTO Express?

Posted in Practice Commentary by Jake Ward on June 30, 2006

The USPTO has recently announced the publication of procedures for a 12-month “accelerated examination” program.  Under this program, a decision on patentability by an Examiner will be made within 12 months of filing, and upon granting of a petition to make special under the new procedures. 

In exchange, Applicant must submit an “accelerated examination support document.”  This document includes a prior art search (encompassing all the features of the claims, under their broadest reasonable interpretation) with analysis of the closest art.  A search report from a foreign patent office will not suffice.  Applicant must also provide an explanation of the usefulness of the invention and a showing of where the claims are supported in the specification. 

In addition to the burden associated with the support document, Applicant is limited to 20 claims and a one month period of Reply to Office Actions, with no extensions available. 

Further requirements and features of the program may be viewed at this notice in the Federal Register, and include:


They Invented What? (No. 6)

Posted in They Invented What? by Jake Ward on June 28, 2006

U.S. Pat. No. 6,865,843:  Portable Electrical Mouse Trap. 


What is claimed is:

1. A portable electrical mouse trap for capturing and killing a mouse, comprising: a housing in the shape of a cat having a head with a pair of eyes and a mouth defining an interior cavity, the mouth forming an entrance to the interior cavity; a primary motion sensor near the entrance to the interior cavity for selectively closing the mouth; a retractable primary gate in electrical communication with the primary motion sensor; a collection chamber within the interior cavity for holding a plurality of captured mice; a reservoir of a mouse-attracting fragrance that automatically dispenses within the interior cavity; a secondary motion sensor near an entrance to the collection chamber; a retractable secondary gate in electrical communication with the secondary motion sensor; and a vacuum source in communication with the collection chamber, wherein the primary motion sensor and secondary motion sensor detect the presence of a mouse inside the interior cavity and activate the vacuum source to draw the mouse into the collection chamber and close the secondary gate.

2. The portable electrical mouse trap as recited in claim 1, wherein the primary motion sensor closes the mouth when the mouse enters the interior cavity and the mouth opens when the mouse enters the collection chamber.

3. The portable electrical mouse trap as recited in claim 2, wherein the eyes automatically illuminate when the mouse enters the collection chamber.

4. The portable electrical mouse trap as recited in claim 3, wherein the vacuum source sucks the mouse fully into the collection chamber where it suffocates.

5. The portable electrical mouse trap as recited in claim 4, wherein the interior cavity further contains a speaker from which a purring noise emanates when the collection chamber is full of dead mice.

Writ of Certiorari Dismissed: Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc.

Posted in Opinion Commentary by Jake Ward on June 26, 2006

Last week, the Supreme Court dismissed a writ of certiorari with respect to LabCorp v. Metabolite as improvidently granted.  The petition for certiorari from LabCorp was originally granted to resolve the question of whether a method patent directing a party simply to correlate test results could validly claim a monopoly over a basic scientific relationship?  In other words, were the claims invalid in light of the "law of nature" principle, which provides that laws of nature and mathematical relationships are not patentable?

With news of this dismissal, many in the world of patent practice breathed a sigh of relief, as evidenced by the reactions of the IP blogosphere (see commentary at Patently-O, The Patent Prospector, PHOSITA, and IP Litigation Blog).  This case could have resulted in some significant changes to what is deemed patentable subject matter under U.S. law . . . especially with respect to business method patents.
For further reading and light entertainment, check out the 15-page dissenting opinion here.

Gemmy Industries Corp. v. Chrisha Creations Limited, et al.

Posted in Opinion Commentary by Jake Ward on June 25, 2006

Christmas is Too Commercialized These Days, Don't You Think?

(Fed. Cir. 2006, 05-1110)

The CAFC vacated a summary judgment of invalidity by the district court (S.D.N.Y.), based on the on-sale bar, of Gemmy's U.S. Pat. No. 6,644,833.  Gemmy and Chrisha are competitors in the business of holiday decorations.  The technology at issue is inflatable decorative holiday figures, e.g. large inflatable Santas.

The basic standard, since patents bear a presumption of validity, is that "invalidity based on the on-sale bar must be established by clear and convincing evidence."  Chrisha argued that the accused product was on sale by Gemmy more than one year prior to the application of the patent.  Gemmy argued that the accused products were incompletely developed at that time and that the burden was on Chrisha to show that the product was "ready for patenting" and "the subject of a commercial offer for sale" before the critical date.

Chrisha pointed out an affidavit of Gemmy's president (later modified by declaration), which stated that the product was on sale since before the critical date.  The court disregarded this argument, as they found that the product "offered for sale" before the critical date was not the same as the product claimed in the patent.  Additionally, the court held that evidence of a commercial offer of sale was not met by the "quote sheets" distributed by Gemmy.  As Gemmy argued, there is "not an offer for sale where the communication lacked quantities, time of delivery, place of delivery, or product specifications. . . ."

Honeywell International, Inc., et al. v. ITT Industries, Inc., et al.

Posted in Opinion Commentary by Jake Ward on June 25, 2006

The phrase "this invention" in the Written Description Limited the Scope of the Claims. 

(Fed. Cir. 2006, 05-1407)

The CAFC affirmed the district court's grant of a summary judgment of noninfringment of Honeywell's U.S. Pat. No. 5,164,879 (the "879 patent") in favor of ITT.

The 879 patent addressed the "arcing" problem associated with polymeric fuel filter housings which causes microscopic holes to form, leading to breakdowns and fuel leakage.  Honeywell claimed a system comprising an electrically conductive pathway, e.g. electrically conductive fibers, between the filter and the frame of a vehicle to prevent "arcing."  The accused product produced by ITT are quick connects for joining fuel lines to a fuel filter, said quick connects having a polymer housing interlaced with carbon fibers.

Honeywell argued that the court improperly limited the scope of the claims to the specification's preferred embodiment (a fuel filter), even thought the claim language recited a "fuel injection system component."  However, the CAFC disagreed with Honeywell that the construction was improper.  The court pointed to at least four instances where Honeywell referred to the fuel filter as "this invention" or "the present invention" in the specification.  Accordingly, "[t]he public is entitled to take the patentee at his word and the word was that the invention is a fuel filter."

The court further disregarded statements from prosecution that might suggest broader scope as being inconsistent with the written description.  "Where . . . the written edescription clearly identifies what [the] invention is, an expression by a patentee during prosecution that he intends his claims to cover more than what his specification discloses is entitled to little weight."

To add further insult to injury, the CAFC provided separate grounds for affirming the ruling of the lower court by concluding that Honeywell also disavowed carbon fiber from the scope of the claims.  In particular, the specification provided reasons why carbon fibers would not be suitable for the invention . . . effectively saying "Do not use carbon fibers."

Abbott Laboratories v. Andrx Pharmaceuticals, Inc., et al.

Posted in Opinion Commentary by Jake Ward on June 25, 2006

CAFC Majority Vacates Preliminary Injunction, with Scathing Dissent

(Fed. Cir. 2006, 05-1433

The CAFC vacated a preliminary injunction granted by the district court (N.D. Ill.), finding that there was a substantially issue raised as to the validity of each of the asserted claims relied upon by the district court for the preliminary injunction.

At issue was Abbott’s patents claiming an extended release formulation of the broad spectrum antibiotic, clarithromycin.   Abbott sued Teva for infringement of the patents upon Teva’s filing of an Abbreviated New Drug Application (ANDA) for a similar extended release form of clarithromycin.  The majority panel stated the four fact test for granting a preliminary injunction, namely that the party seeking the preliminary injunction must show:

1)      the movant has some likelihood of success on the merits of the underlying litigation;

2)      immediate irreparable harm will result if the relief is not granted;

3)      the balance of hardship s to the parties weights in the movant’s favor; and

4)      the public interest is best served by granting the injunctive relief.

The court also stated that, in accordance with eBay, Inc. v. MercExchange, the decision to grant or deny permanent injunctive relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion; a showing of which may be made by showing the court made a clear error of judgment in weighting relevant factors or exercised its discretion based upon an error of law or clearly erroneous findings.


Extreme Makeover: USPTO Edition.

Posted in General Commentary, Practice Commentary by Jake Ward on June 22, 2006

The USPTO website ( now has a new look!  Although the changes appear to be superficial at this time (most of the underlying pages and functionality do not appear to have been changed), the USPTO is apparently planning to extend the "makeover" over the coming months and "redesign the entire website."

I applaud the USPTO for attempting to improve their website.  Previously, as a general information source, I had found that the site could be very cumbersome to use.  Comments on your experiences with the old site are welcomed, either here or at

They Invented What? (No. 5)

Posted in They Invented What? by Jake Ward on June 21, 2006

U.S. Pat. No. 4,022,227:  Method of concealing partial baldness


I claim:

1. A method for styling hair to cover bald areas using only the individual's own hair, comprising separating the hair on the head into several substantially equal sections, taking the hair on one section and placing it over the bald area, then taking the hair on another section and placing it over the first section, and finally taking the hair on the remaining sections and placing it over the other sections whereby the bald area will be completely covered.

2. A method as in claim 1 wherein the hair on a person's head is folded over the bald area beginning with the hair from the back of the head, and then from first one side and then the other.

3. A method as in claim 2 wherein after the hair from the back of the head is folded over the bald area, an object is placed over the hair and hair from a first of the sides is brushed over the object, and after the hair from said first side is folded into place the object is placed over the hair and the hair from the second side is folded over the object.

4. A method as in claim 3, wherein said object is a person's hand the hair spray is applied after the hair from said first side is folded into place and again after said second side being folded into place.

5. A method as in claim 3 wherein the hair from said first side and said second side is given a final styling.