Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 49)

Posted in They Invented What? by Jake Ward on May 30, 2007

U.S. Pat. No. 5,216,979:  Toilet bowl mountable trap door litter box.


What is claimed is:

1. An animal litter box, with a trap door, mountable on a toiled bowl comprising: a generally elongate animal litter box having sidewall means and a bottom; mounting means for mounting of the animal litter box on top of a toilet bowl; a sidewalled well opening with significantly smaller cross sectional area than the bottom of said litter box depending from the animal litter box for holding litter and waste from an animal using the litter box; an opening and closing trap door means on said sidewalled well opening mounted with hinge means to the bottom of said animal litter box; and single trap door opening and closing means mounted on said animal litter box and connected to said trap door means for opening and closing of the trap door means to dump litter and animal waste from said sidewalled well opening directly into the toiled bowl when opened and to retain litter placed in said sidewalled well opening when said trap door means is closed; wherein said sidewalled well opening and said trap door opening and closing means are mounted under a forward portion of said animal litter box; said trap door opening and closing means includes a manual pull member extending from said trap door means to beneath a forward portion of said animal litter box; wherein said manual pull member is a trap door bracket lever moveable from an inner trap door means closed position to an outer trap door means opening position; said sidewalled well opening is a rectangular opening with parallel opposite side walls and parallel front and back walls; said trap door means includes a hinge mounted rectangular trap door member which is wider than, and extends beyond, said parallel opposite side walls; said trap door bracket lever has a transversly widened head with a forward transverse edge and upwardly extended brackets on opposite sides thereof, and short inwardly extended pins mounted on said brackets that together with said transverse edge act as a guide for said trap door through a range of opening and closing movement; said opposite side upwardly extended brackets mounting outwardly extended cam following pins; and opposite side cam slot means engaged by said cam following pins for guiding said bracket lever and said trap door through its range of opening and closing movement.


Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., et al.

Posted in Opinion Commentary by Jake Ward on May 30, 2007

 Substantial Evidence of Secondary Considerations Were Not Sufficient to Overcome a Strong Prima Facie Showing of Obviousness.

(Fed. Cir. 2007, 06-1402)


On appeal to the CAFC, Leapfrog contested the holding of the District Court (D. Del.) that Claim 25 of Leapfrog’s U.S. Patent 5,813,861 (“the ’861 patent”) was invalid as obvious.  Specifically, the court concluded that Claim 25 was invalid as obvious in view of the combination of U.S. Pat. No. 3,748,748 to Bevan, a Texas Instruments Super Speak & Read (“SSR”) device, and the knowledge of one of ordinary skill in the art as represented by the testimony of Fisher-Price’s technical expert. The CAFC affirmed.

The technology of the ’861 patent relates to a learning device to help young children read phonetically.  Claim 25 recites:

An interactive learning device, comprising: a housing including a plurality of switches; a sound production device in communication with the switches and including a processor and a memory; at least one depiction of a sequence of letters, each letter being associable with a switch; and a reader configured to communicate the identity of the depiction to the processor, wherein selection of a depicted letter activates an associated switch to communicate with the processor, causing the sound production device to generate a signal corresponding to a sound associated with the selected letter, the sound being determined by a position of the letter in the sequence of letters.

The accused PowerTouch device by Fisher-Price consists of a hinged plastic housing containing electronics and a speaker that opens to lie flat.   In phonics mode, when the user touches one of the words on the page of the PowerTouch device, the device pronounces the word.

Among the arguments presented by Leapfrog were:  1) improper hindsight in reaching a conclusion of obviousness; 2) a clearly erroneous finding that the Bevan device has the same functionality as claim 25, because the components of Bevan’s device are mechanical and not electrical; 3) inadequate evidence in the record to support a motivation to combine Bevan, the Texas Instruments SSR, and a reader to arrive at the invention of claim 25; and 4) lack of proper consideration of strong evidence of secondary considerations of nonobviousness.  The CAFC disagreed with all points, first by stating: 

An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. __, 2007 WL 1237837, at *12 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). . . .  Accommodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices.  Applying modern electronics to older mechanical devices has been commonplace in recent years.

The CAFC also found motivation to combine the references, stating that one of ordinary skill in the art “would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost.”

The CAFC noted that the combination of the SSR device and Bevan did lack the “reader” element of Claim 25.  However, “readers were well-known in the art at the time of the invention.”  This conclusion was not rebutted because Leapfrog did not present evidence that the inclusion of a reader “was uniquely challenging or difficult for one of ordinary skill in the art. See KSR, 2007 WL 1237837, at *15.”  Nor did Leapfrog “present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art.” (Emphasis mine).

Finally, with respect to consideration of secondary considerations, the CAFC stated:

The district court explicitly stated in its opinion that Leapfrog had provided substantial evidence of commercial success, praise, and long-felt need, but that, given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that claim 25 would have been obvious. We have no basis to disagree with the district court’s conclusion.

Affirmed in favor of Fisher-Price.

JW Note:  This opinion was apparently the first CAFC opinion to cite KSR v. Teleflex.  Notably, the finding of obviousness was affirmed.

KSR Aftermath: Not One Iota of Change at the CAFC?

Posted in Practice Commentary by Jake Ward on May 25, 2007

According to this article at Intellectual Asset Magazine, as first pointed out over at Patently-O and the Patent Prospector, CAFC Justice Rader has apparently “revealed that he believed the recent KSR v. Teleflex decision handed down by the Supreme Court would not lead to “great changes” in the way the Federal Circuit looks at obviousness.”  In fact, he told delegates of the recent CIP Forum in Sweden that “the judgment in the first CAFC decision [LeapFrog Enterprises Inc v Fisher-Price Inc] on obviousness post-KSR had actually been written before the Supreme Court’s decision was handed down and ‘did not require one iota of change’.”

JW Note:  Is the CAFC apparently unconcerned about the effects of KSR because the CAFC had already adjusted their framework for obviousness analyses in anticipation of the ruling (See, e.g., Dystar Textilfarben GMBH & Co Deutschland KG v. C.H. Patrick, Co., et al.Alza Corporation v. Mylan Laboratories, Inc., et al., and Ormco Corporation, et al. v. Align Technology, Inc. etc)?

CAMBIA’s Patent Lens.

Posted in General Commentary, Practice Commentary by Jake Ward on May 25, 2007

Some time back, Michael Gorman of the Tech LawForum had notified AT! about a company called CAMBIA, located in Canberra, Australia.  CAMBIA has established the “Patent Lens” project; a free, searchable patent database designed primarily for bio-tech patent searching. 

According to CAMBIA, the Patent Lens resource comprises a fully text-searchable patents database, and contains over 5,500,000 patents and patent applications from the PCT, US, and EPO databases.  Patent Lens includes the life sciences collections from these jurisdictions and has recently added all patent classifications from the US applications and granted patents.

We’ve had an opportunity to try out the Patent Lens search engine, and found it fairly useful.  The service allows keyword searching of the full text, as well as specific sections of patents and patent applications. It also provides easy access to INPADOC family and legal status data.  From a biotech and life sciences standpoint, the service now appears to include a search function for protein and DNA sequences.

Further notable features are: 1) a “predicted expiry date” function (although the function admittedly does not take into account features such as terminal disclaimers, term adjustments, etc.) that allows searching for patents that are in-force versus expired; and 2) RSS alerts for automatic updates on patent search queries. 

Geographical Patent Trends (Redux + 1 Year).

Posted in General Commentary by Jake Ward on May 24, 2007

An astute reader of AT! had pointed out that our previous post on Geographical Patent Trends used 2005 as an endpoint, but that 2005 appears to be somewhat of an abberration in terms of the overall number of patents issued in that year. 

Well, we have now readjusted some of our figures to examine trends from 2000 to 2006 instead (as the 2006 data appears to be more in line with the longterm trends for patents overall).  Again, these figures are admittedly non-scientific in nature, but we believe are “thought-provoking,” to say the least.


Interestingly, the figure appears fairly well balanced between states seeing an increase in patents granted and states seeing a decrease.  From this simple analysis, it appears that Washington, Oregon, and California (the Left Coast) had the largest percentage increase in patents granted over the six (6) year period analyzed.  In a notable fourth place was Kansas (the Sunflower State).  By way of contrast, Mississippi, Arkansas, and Louisiana (the South) apparently experienced the largest percentage decrease in patents granted over that time period.


The top states for increases in patents granted, on a per capita basis, were substantially the same as the top states in the above percentage analysis.  Interestingly, however, were the states with the largest per capita decreases: namely, New Jersey, Delaware, and Pennsylvania.  Although a number of the bottom states have a relatively small population and therefore would be more greatly impacted on a per capita basis by a change in patents granted, we note that Pennsylvania (6th most populous state) was 3rd to last, having a drop of almost 7 patents granted per 100,000 residents in the six year period examined.

JW Note:  Some interesting figures, and obviously of debatable significance.  However, as general food-for-thought for commenting – What do these trends show, if anything?  Are Oregon, Washington, California, and Kansas doing anything different to foster innovation in their respective states?  What is Pennsylvania doing wrong, if anything?  Comment as you may!

KSR Aftermath: New § 103 Arguments for Practitioners?

Posted in Practice Commentary by Jake Ward on May 24, 2007

Most practitioners will recognize that there is no cookie-cutter set of arguments that may be used for any and all obviousness rejections by the USPTO.  Patent prosecution is much like most other areas of law in that respect:  it is all about the facts, the facts, and yes, the facts.

That being said, following the Supreme Court decision in KSR Int’l Co. v. Teleflex Inc., the obvious question (pun intended) is: How might this decision affect a patent prosecutor’s arguments in the face of an USPTO Examiner’s § 103 rejection? 

In light of the KSR opinion and subsequent cases and commentary, below is a non-limiting set of three example strategies practitioners may consider:

1)  Proceed substantially as normal – argue that a teaching-suggestion-motivation (TSM) has not been established.  However, recognize that TSM may not now be sufficient by itself, and bolster the TSM argument with non-analagous art, teaching away, or secondary consideration evidence (unexpected results, commercial success, failure of others, etc.) arguments.  KSR rationale:

  • The TSM test captures a helpful insight.
  • A patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art.

2)  Argue that the combination of elements yields more than results predictable by one of ordinary skill in the art.  Phrased differently, the claimed elements are more than a predictable variation of the prior art. This concept, sounding much like “synergism,” was much repeated in the opinion.  KSR rationale:

  • Such a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
  •  When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another.
  • If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, §103 likely bars its patentability.
  • If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.
  • Sakraida and Anderson’s-Black Rock are illustrative—a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

3) Go back to the basics – assert non-obviousness in view of Graham factors. Specifically, spell out for the Examiner: 1) the scope and content of the prior art; 2) the level of ordinary skill in the prior art; 3) the differences between the claimed invention and the prior art; and 4) objective evidence of nonobviousness. KSR rationale:

  • Graham v. John Deere Co. of Kansas City, set out an objective analysis for applying §103:
  • “[T]he scope and content of the prior art are . . . determined; differences between the prior art and the claims at issue are . . . ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”
  • While the sequence of these questions might be reordered in any particular case, the factors define the controlling inquiry.
  • To this end, Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive.
  • Teleflex has not shown anything in the prior art that taught away from the use of Asano, nor any secondary factors to dislodge the determination that claim 4 is obvious.

These are some of our thoughts, and we’re certain that there are other concepts and strategies that may be used, as appropriate.  Any comments on such strategies from our readers are welcomed!

They Invented What? (No. 48)

Posted in They Invented What? by Jake Ward on May 23, 2007

U.S. Pub. App. No. 2006/0134273:  Method and apparatus for making a sandwich.

JW Note:  Per David McClaughry . . . “a method of making twoallbeefpattiesspecialsaucelettucecheeseonionspicklesonaseasemeseedbun.”  Thanks for all the submissions, Dave!


1. A method of filling an order for a sandwich comprising: toasting a bread component for the sandwich for less than about 1 minute in response to the order in a first heating device; and initiating and completing the heating of a sandwich filling for the sandwich from about 40° F. or less to about 120° F. or more in a second heating device, while the bread component is heating, in response to the order.


Patent Attorney Occupation – In The News.

Posted in General Commentary by Jake Ward on May 21, 2007

Check out this article at MSNBC about the growing interest in intellectual property law as an occupation.  Quite an interesting article (briefly mentions eBay, Patent Reform, and the Supreme Court’s recently renewed interest in patent matters), and worth a quick read if you have a few minutes.