Anticipate This!™ | Patent and Trademark Law Blog

Happy Holidays from Anticipate This!

Posted in General Commentary by Jake Ward on December 23, 2006

U.S. Design Pat. No. D428,199:  Christmas tree soap.

  christmas soap

JW Note:  Wishing all a Merry Christmas and a Happy New Year!  See you in 2007!

Subscribe to Anticipate This! by email.

Posted in General Commentary by Jake Ward on December 23, 2006

It appears that I’m becoming more blog savvy.  Now located on the right-hand margin of this blog is a link allowing you to receive posts from by email.  Check it out, and happy reading!

USPTO Announces Drop in Patents Approved.

Posted in General Commentary by Jake Ward on December 22, 2006

According to this Marketplace article from American Public Media, the USPTO in 2006 approved the lowest percentage of patents in its recorded history.  Apparently, about 54% of all U.S. patent applications (filed in 2006? 2005?) were approved this year.  To put this in perspective, in 2003 the number of approved patents was about 70%.  For those without their calculators handy, that is roughly a 22% drop in the number of patents issued relative to the number of patent applications filed three years ago. 

I would think one would normally consider this to be postive news.  However, the article proceeds to paint a fairly negative picture of the present patent system, particulary with respect to the state of the obviousness standard (the old “flash of genius” test was actually mentioned).  Quotes from Professors Samuelson (Berkley) and Lerner (Harvard), as well as from Director Jon Dudas are included.  An interesting read, if you have a few minutes. 

JW Note: With the percentage of issued patents dropping, why is there such a clamoring to change the present obviousness standard?  Isn’t this evidence that the present system is correcting itself and that the standards, if applied appropriately, can be effective?  Any thoughts? 

Addendum:  Per the wonderful folks at Rethink(IP), the full results of the agency’s progress can be found in USPTO’s FY 2006 Performance and Accountability Report at

They Invented What? (No. 28)

Posted in They Invented What? by Jake Ward on December 20, 2006

U.S. Pat. No. 4,681,244:  Portable bar.



The present invention relates to an improved portable bar, that is a portable device that is used for mixing cocktails or the like. The portable bar of the present invention is adapted to be worn by a person as a hat and is intended to be both useful and entertaining.  


Google Patent Search, Does No Evil?

Posted in General Commentary by Jake Ward on December 14, 2006

Google has now released a Patent Search service, located at  We’ve had a few minutes to run the service through the gauntlet, and here are our thoughts.

This service is free, and free is always good.  The default screen also allows a simple keyword search of over 7 million patents (or so they say).  The keyword search appears to look at both titles and the text of the specification, which is a nice feature.  The interface is the standard Google search interface, and appears to be very user-friendly. 

Digging a little deeper, the advanced service allows a search of patent numbers, titles, inventors, assignees, U.S. classifications, international classifications, issue dates (in a range), and filing dates (in a range).  We would have liked to have seen, however, the advanced service allow selective searching of claims, abstracts, and specifications. 

When a search is performed, a patent summary is provided allowing a view (non-pdf) of each page and also a view of all drawings.  In more recently filed cases, the claims and a list of patents referenced by is also provided.  Another notable feature we’ve seen in our brief review is a text searching function that pinpoints particular pages in the document where a term or phrase can be found.

Unfortunately, there does not appear to be a function that allows one to download a pdf or print a patent.   Also, the database appears to be limited to U.S. patents, and not U.S. publications or foreign patents and publications.  These are my primary gripes about the service, and maybe they’ll be added in subsequent versions. 

At the end of the day, it is certainly nice to drop a new patent tool in the toolbox.  We may try it out a few times in upcoming matters to see if it is worth using on a more regular basis, and we will post further on the subject if we have any further thoughts. 

A New Resources Page.

Posted in General Commentary by Jake Ward on December 14, 2006

As a service to you, the faithful readers of, I’ve now added a compilation of online resources relating to patent prosecution topics and intellectual property law in general.  Check it out at the above “Resources” tab. 

I find a number of these resources quite useful in my daily practice, and I hope you will find them useful as well.  Enjoy!

Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc.

Posted in Opinion Commentary by Jake Ward on December 14, 2006

Proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.

(Fed. Cir. 2006, 05-1313


Impax had originally filed an ANDA with the FDA seeking approval to market generic riluzole (6-trifluoromethoxy-2-benzothiazolamine) tablets for the treatment of ALS and prompting a suit for a declaratory judgment that Impax did not infringe, induce infringement of, or contribute to the infringement of Aventis’ U.S. Patent No. 5,527,814 (“the ’814 patent”).   Prior to this appeal, the district court had found that no inequitable conduct and that the ‘814 was not anticipated.

The claimed technology of the ‘814 patent comprises “[a] method for treating a mammal with [ALS], comprising the step of administering to said mammal in recognized need of said treatment an effective amount of [riluzole] or a pharmaceutically acceptable salt thereof.”  On appeal, the CAFC considered the district court’s determination that Impax failed to prove (1) that the ’814 patent is unenforceable due to inequitable conduct and (2) that the ’814 patent is invalid as anticipated.  As the CAFC found that the district court did not clearly err in its materiality and intent findings in relation to inequitable conduct, only the anticipation issue will be discussed here. 

The ‘624 application and the ’940 patent that matured therefrom (also owned by Aventis) were cited as prior art references against the ‘814 patent.  These references are directed to a class of compounds that literally encompass riluzole.  The ‘624 application does not identify riluzole by name, but riluzole is a species of the genus disclosed in ‘624.  The ‘940 patent, on the other hand, explicitly excludes riluzole from the class of claimed compounds. 

The district court had concluded that the ’814 patent was not anticipated by either reference because it did not disclose riluzole as being effective in treating ALS.  Also, the district court explained that the ’624 application, from which the ’940 patent claims priority, contained a disclosure similar to the ’940 patent and that there were no material differences between the two references.  Thus, neither reference was deemed to anticipate.  However, the issue according to the CAFC should be whether the ’940 or ‘624 references were enabling in the sense that they describe the claimed invention sufficiently to enable a person of ordinary skill in the art to carry out the invention?

Prior art is not enabling so as to be anticipating if it does not enable a person of ordinary skill in the art to carry out the invention.  Significantly, anticipation does not require actual performance of suggestions in a disclosure. Rather, anticipation only requires that those suggestions be enabled to one of skill in the art.  Proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.

The CAFC also acknowledged the species-genus situation of In re Petering.  When a reference discloses a class of compounds, i.e., a genus, a person of ordinary skill in the art should be able to “at once envisage each member of th[e] . . . class” for the individual compounds, i.e., species, to be enabled.  A described genus does not necessarily anticipate a species within the genus. 

The ‘924 reference included riluzole as a compound and suggested that it may be used to treat ALS, but did not provide evidence that it would be effective.  However, the effectiveness of the prior art is not relevant, and therefore the use of this reason to find that the reference does not anticipate was improper.  On the other hand, the decision that the ‘624 reference does not anticipate, where riluzole is just one of hundreds of compounds included in formula I, was proper because the ‘624 does not enable treatment of ALS with riluzole (a particular species) under the standards discussed above. 

The decision of the district court was therefore vacated-in-part and the case remanded as to the issue of anticipation.

Notably, Judge Rader (in a concurring opinion) would find that when the disclosure leaves “substantial uncertainty” as to enablement, a finding of anticipation should be improper.  As read by Judge Rader, the ‘940 disclosure did not put one of skill in the art in possession of the invention at all. 

JW Note:  For more commentary on Genus-Species anticipation, see my previous post: A Species of the Anticipation Genus.

They Invented What? (No. 27)

Posted in They Invented What? by Jake Ward on December 13, 2006

JW Note:  One would likely find the “resetting” feature to be most useful.

U.S. Pat. No. 5,031,161:  Life expectancy timepiece.



Life expectancy has been a major concern of people throughout the ages . . . .   Heretofore, there has been no way of automatically monitoring one’s own life expectancy, based on factors such as actuarial tables, contemporaneous events and heredity. . . .   It would also be advantageous to provide a timepiece that would allow one to be apprised of the probable time remaining in one’s life.  It would also be advantageous to monitor the probable remaining time left in one’s life on a yearly, hourly, and even seconds basis.  It would also be advantageous to provide a lifetime monitoring timepiece that could be resettable by the user.


1. A time monitoring apparatus for monitoring and displaying an approximate time remaining in a lifespan of an individual, said monitoring apparatus programmed to decrement time units from an actuarially determined lifespan and to shift a projected lifespan value as the individual grows older, said time monitoring apparatus comprising:

(a) processing means for monitoring the passage of time, and programmed with an actuarial table algorithm for projecting a lifespan value for an individual, said program further shifting said lifespan value as the individual grows older and said time is monitored;

(b) a resettable memory operatively connected to said processing means for storing data representative of years, days, hours, minutes, and seconds;

(c) display means operatively connected to said processing means for displaying data stored in said resettable memory; and

(d) means operatively connected to said processing means for entering and changing said stored data based upon characteristics specific to said individual, whereby an approximate time remaining in the lifespan of said individual can be reset by said individual.