Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 33)

Posted in They Invented What? by Jake Ward on January 31, 2007

U.S. Pat. No. 4,656,770:  Bird repelling means.



This invention is a combination of visual and aural devices to create panic in selected bird species. This is accomplished in part through a body simulating a Tiger Cat which is weathervane mounted. The body includes bright orange stripes and has predatory eyes. Streamers depicting paniced birds are attached to the tiger’s tail and an internal wind driven flute produces a variety of the noises. Additionally, reflectors are used on a propeller to simulate light reflection from a gun barrel. Further, random or scheduled explosions from an automatic acetylene exploder and bird warning and distress calls are broadcast over loud speakers for the species of birds being repelled.


1. A bird repelling means comprising: predator simulating means; a wind driven flute mounted within said predator simulating means; means for mechanically altering the tone of said wind driven flute; means for periodically broadcasting prerecorded bird warning and panic calls; and means for periodically creating explosion-type noises whereby the simulated predator will act as a visual bird repelling means while the wind flute, periodic broadcast and explosions will act as an aural means of repelling said birds.


Fraser Clemens Martin & Miller LLC.

Posted in General Commentary by Jake Ward on January 31, 2007

Per this recent post at Miller’s Small Business Blog, William J. Clemens, Esq. has announced his intent to join the firm of Fraser Martin & Miller.  Effective February 1, 2007,  the firm will be renamed as Fraser Clemens Martin & Miller LLC. 

Mr. Clemens is an electrical engineer and attorney, and has over 30 years of experience counseling and representing clients in connection with U.S. and foreign patents, trademarks and copyrights; intellectual property licensing; contracts for developing, purchasing and licensing computer hardware and software; infringement; and other technology-related legal matters.

Alternative Expressions in Claims.

Posted in Practice Commentary by Jake Ward on January 30, 2007

In an older (and now-defunct) U.S. patent practice, the use of the terms “or” and “either” in a patent claims was considered an improper use of an alternative expression.   According to the present MPEP § 2173.05(h), however, alternative expressions are now permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims.  For example, a claim reciting “wherein R is A, B, C or D” is perfectly acceptable in modern practice.

One form of alternative expression is commonly referred to as a Markush group, named after Eugene Markush, the first inventor (1920’s) to use the claim form successfully in a patent.  Markush language recites members as being ‘‘selected from the group consisting of A, B, and C.’’  Thus, the Markush group language can be used to claim elements in the alternative without resorting to the the term “or.”  Markush claims are typically employed in the chemical, pharmaceutical, biotech and material arts, but the language is equally acceptable (and useful) in the mechanical and electrical patents.  

JW Note:  Although accepted by the USPTO, many practitoners (including yours truly) typically try to avoid using the term “or” and especially “and/or” in drafting claims.  We will instead rely on the more traditional Markush language, or other creative verbiage, e.g., “wherein R is one of A, B, and a combination thereof.” 

Caffeinated Doughnuts . . . Hmmm.

Posted in Science and Technology by Jake Ward on January 26, 2007


According to this recent Associated Press article, a Dr. Robert Bohannon of Durham, NC has recently developed a method for adding caffeine to baked goods.  Importantly, the baked goods do not have the bitter taste of caffeine.  Using his method, each pastry also has the equivalent of about two cups of coffee.  Brilliant!

Expect to see caffeinated doughnuts soon at a Starbucks or Dunkin’ Donuts near you! 

They Invented What? (No. 32)

Posted in They Invented What? by Jake Ward on January 24, 2007

U.S. Pat. No. 2,801,929:  Method of making canned chinese food.


Having thus described my invention, what I claim is: 

A method of preparing a Chinese food package which comprises, placing substantially raw, unseasoned Chinese food vegetables in a can, sealing the can while the vegetables are in the unseasoned and substantially raw state, sterilizing the can containing the vegetables which are unseasoned and substantially raw whereby they maintain their individual crispness and taste, preparing a separate, cooked sauce for the Chinese food vegetables, seasoning the sauce to an extent to provide substantially all the seasoning for both the sauce and the vegetables when the two are admixed, canning and sterilizing the sauce, and then packaging the sauce and vegetables together for sale as a single unit.

An Appearance of Quality over Quantity.

Posted in General Commentary by Jake Ward on January 23, 2007

In this press release yesterday, the USPTO declared that it will no longer release an annual list of top 10 organizations receiving the most U.S. patents.  According to the USPTO, this information will no longer be published because of the agency’s desire to emphasize patent quality over quantity.  In an unusual bit of reasoning, the USPTO believes it will be discouraging any perception that the agency believes “more is better” by ceasing to publish the annual list.

The press release further noted that patent quality last year was the best in over 20 years (how measured?), and the agency also had the lowest rate of patents approved in more than 30 years. As examples of progress, the USPTO points to a variety of programs, including:

•  rigorous in-process and end-process reviews of examiners’ work and written certification and recertification examinations to ensure examiners remain up-to-speed on patent law, practice and procedure;

•  increasing the number of “second-pair-of-eyes” reviews of initial decisions to grant patents;

•  implementing eight-month university-style training programs to teach patent examination coursework to new examiners in a collegial and collaborative environment;

•  establishing a unit of patent examiners solely devoted to reexamining patents for which evidence raising a substantial new question of patentability is found after the patent is granted;

•  improving the quality of USPTO work life to attract the best pool of new patent examiners by offering opportunities to work from home; and

•  implementing electronic processing of patent applications to make the patent examination process more efficient and effective.

Welcome Mike Dockins to Anticipate This!

Posted in General Commentary by Jake Ward on January 23, 2007

We are pleased to welcome Mike Dockins as a contributing author at Anticipate This!

Mr. Dockins is an attorney with the law firm of Fraser Martin & Miller LLC, and practices law in the area of intellectual property and technology law.  Mr. Dockins  has a B.S. in Chemical Engineering with course work in polymer sciences, magna cum laude, from the Rose-Hulman Institute of Technology.  He received his Juris Doctor from the University of Toledo.  While at the University of Toledo, Mr. Dockins was the Technical Editor of the Toledo Law Review, and author of ”Internet Links:  The Good, the Bad, the Tortious, and a Two-Part Test.”

We look forward to reading Mike’s thought-provoking commentary on all things IP.  Enjoy!

Ortho-McNeil Pharmaceutical, Inc. v. Caraco Pharmaceutical Laboratories, Ltd.

Posted in Opinion Commentary by Jake Ward on January 22, 2007

Intrinsic Evidence Pointing to a Criticality of a Claimed Ratio Used to Construe the Term “About.” 

(Fed. Cir. 2007, 06-1102)


Caraco filed an ANDA with the intent to make and sell a pharmaceutical composition containing tramadol and acetaminophen with an average weight ratio of tramadol to acetaminophen of 1:8.67, and no less than a ratio of 1:7.5.  In response,  Ortho filed suit and argued infringement of Claim 6 of Ortho’s U.S. Pat. No. 5,336,691 (“the ’691 patent”).  The district court (E.D. Mich.) granted Caraco’s motion for summary judgement and Ortho appealed to the CAFC.

Claim 6 of the ‘691 patent recites, effectively:

“[A pharmaceutical composition comprising a tramadol material and acetaminophen], wherein the ratio of the tramadol material to acetaminophen is a weight ratio of about 1:5.”

The district court construed the “about 1:5” limitation of claim 6 to mean “approximately 1:5, encompassing a range of ratios no greater than 1:3.6 to 1:7.1.”  In reaching this construction, the court relied on intrinsic evidence (specification), extrinisic evidence (expert testimony), and evidence related to Ortho’s application to reissue the ‘691 patent (Claim 6 rewritten to use the transitional phrase “consisting essentially of” instead of “comprising”).   

Under its construction, the district court concluded that Caraco’s ANDA-defined product did not literally infringe the ’691 patent.  Under the doctrine of claim vitiation, the court further concluded that finding infringement by Caraco’s formulation would render meaningless the “about 1:5” limitation, and thus rejected Ortho’s DOE arguments.  The CAFC agrees.

On appeal, the central issue was whether the district court properly construed the claim phrase “about 1:5, ” and particularly the term “about?”  The CAFC reiterated that the word “about” does not have a universal meaning in patent claims . . . the meaning depends upon the technological facts of the particular case.  Additionally, the intrinsic evidence in this case points to a meaning for the term “about 1:5” that is narrow because the 1:5 weight ratio was distinctly claimed and distinguished from other broader weight ratio ranges in the claims patent.  Other intrinsic evidence supporting the narrow construction includes paragraphs in the specification and the described experiments.  The intrinsic evidence points to the desirability, and thus the criticality, of the 1:5 ratio versus other ratios.

The product described by Caraco’s ANDA application did not literally infringe.  Also, because the intrinsic evidence points to the desirability, and thus the criticality, of the 1:5 ratio versus other ratios, Ortho could not argue that the parameter is broad enough to encompass, through the DOE, ratios outside of the confidence intervals expressly identified in the patent.