Anticipate This!™ | Patent and Trademark Law Blog

DRAFT Form SB/206, Listing of Commonly Owned Applications and Patents.

Posted in Practice Commentary by Jake Ward on September 29, 2007

The USPTO has released a DRAFT of form SB/206, the “separate paper” required under the new 37 CFR 1.78(f), along with instructions on how to properly use the form.  The separate paper must identify a serial number of any co-pending application that is filed within 2 months (before and after), shares a common inventor, and is owned or assigned to a same person.  The new rule 78(f) was previously discussed by the AT! here and will become effective on November 1, 2007.  

A copy of the DRAFT form may be downloaded from the AT! by clicking on the following link:  Form SB206 – DRAFT.    A FINAL version of this form, and other forms related to the new continuations rules, will be posted by the USPTO in October here.

They Invented What? (No. 66)

Posted in They Invented What? by Jake Ward on September 27, 2007

U.S. Pat. No. 4,195,707:  Communicating device.


What is claimed is:

1. A device for communicating comprising a flat base and a hollow frustum integral therewith and extending outwardly therefrom, retaining means at the smaller end of said frustum, a discrete diaphragm complementary in shape to said smaller end of said frustum and held thereagainst by said retaining means, and means for connecting a string between a pair of said diaphragms, whereby when a string between two diaphragms is under tension conversation into one device is transmitted via the string to the other device.


In Re Petrus A.C.M. Nuijten.

Posted in Opinion Commentary by Jake Ward on September 25, 2007

A “signal” is not patentable subject matter because it is not a tangible article or commodity. 

(Fed. Cir. 2007, 06-1371)


The issue before the CAFC was whether or not a signal is patentable subject matter?  Nuijten appealed a decision of the BPAI that maintained a rejection of his claims reciting a “signal” encoded in a particular manner.  The CAFC affirmed.

The technology at issue relates to a technique for reducing distortion induced by the introduction of “watermarks” into signals.  The Nuijten technique improved upon existing watermark technology by modifying the watermarked signal in a way that partially compensated for distortion introduced by the watermark.  Claim 14 at issue recites:

A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.

In first construing the term “signal,” the CAFC determined that a signal is more than just data.  Some physical form for the signal is required – but the nature of the physical carrier is totally irrelevant to the issue of whether the signal constitutes statutory subject matter.  Instead, the appropriate inquiry was whether a transitory propagating signal is within any of the four statutory categories:  process, machine, manufacture, or composition of matter?  The CAFC addressed these categories as follows.

1) Process

The Supreme Court and this court have consistently interpreted the statutory term “process” to require action.  A process consists of doing something, and therefore has to be carried out or performed.  Nuijten noted that the claimed signal must be “encoded in accordance with a given encoding process.” However, the presence of acts recited in the claim does not transform a claim covering a thing—the signal itself—into one covering the process by which that thing was made.  The signal claims are not directed to a process.

2)  Machine

The Supreme Court has defined the term “machine” as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” A transitory signal made of electrical or electromagnetic variances is not made of “parts” or “devices” in any mechanical sense. While such a signal is physical and real, it does not possess concrete structure in the sense implied by these definitions. A signal is clearly not a machine.

3)  Manufacture

The majority noted that this statutory category was the most difficult to analyze here.  Articles of manufacture are man-made, in the sense of having been encoded, generated, and transmitted by artificial means. However, artificiality is insufficient by itself to render something a “manufacture.” Under the statutory use of the term “manufacture” and dictionary definitions, “articles” of “manufacture” are defined as tangible articles or commodities.  A transient electric or electromagnetic transmission does not fit within that definition.

4)  Composition of matter

The Supreme Court has defined “composition of matter” to mean “all compositions of two or more substances and all composite articles.”  A signal comprising a fluctuation in electric potential or in electromagnetic fields is not a “composition[s] of matter.”

Accordingly, the CAFC held that a transitory, propagating signal cannot be patentable subject matter. 


Judge Linn dissented-in-part, arguing that the definition of a “manufacture” should not be limited to tangible, non-transitory things.  Instead, under an expansive view of the term “manufacture,” the dissent would hold that a signal that is a non-naturally occurring product of human ingenuity is patentable subject matter if it is otherwise new, useful, and non-obvious.

In Re Stephen W. Comiskey.

Posted in Opinion Commentary by Jake Ward on September 25, 2007

When an unpatentable mental process is combined with a machine, the combination may produce patentable subject matter. 

(Fed. Cir. 2007, 06-1286)

On appeal from the Board of Patent Appeals and Interferences (BPAI), the CAFC was asked to consider whether Comiskey’s “business method” claims constituted patentable subject matter under 35 U.S.C. § 101?   Comiskey’s claims recited a method and system for mandatory arbitration involving legal documents (such as wills or contracts).

The current 35 U.S.C. § 101 states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.

The PTO had argued that Comiskey’s independent claims were directed at an unpatentable abstract idea, and not a patentable process, because they were neither tied to a particular machine nor operated to change materials to a different state or thing.

The CAFC noted that “patentable subject matter under the 1952 Act is extremely broad,” but it is not without limits.  When an abstract concept has no claimed practical application, it is not patentable.  Mental processes—or processes of human thinking—standing alone are also not patentable even if they have a practical application.  The courts have consistently refused to find processes patentable when they merely claimed a mental process standing alone and untied to another category of statutory subject matter, even when a practical application was claimed.

The CAFC held that patents are not to be issued on particular business systems—such as a particular type of arbitration—that depend entirely on the use of mental processes.  Some of Comiskey’s claims did not require a machine, and were instead drawn to the use of human intelligence itself.  These claims were not patentable.

On the other hand, the CAFC observed that some of Comiskey’s claims recited a “module,” and that a broad interpretation of the term includes a computer.  The Supreme Court has held that a claim reciting the abstract concept can state statutory subject matter only if, as employed in the process, it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter.  A claim that involves both a mental process and one of the other categories of statutory subject matter may therefore be patentable under § 101.  Accordingly, Comiskey’s claims that recited a “module” may be patentable.

AFFIRMED-IN-PART, VACATED-IN-PART and REMANDED to the PTO to determine whether the addition of general purpose computers or modern communication devices to Comiskey’s otherwise unpatentable mental process would have been non-obvious to a person of ordinary skill in the art.

They Invented What? (No. 65)

Posted in They Invented What? by Jake Ward on September 19, 2007

U.S. Pat. No. 3,940,863:  Psychological testing and therapeutic game device.


What is claimed is:

1. A psychological testing and therapeutic game device adapted to be employed to invoke fantasizing for purposes that include psychological testing and therapy comprising:

a stimulus board,
a set of icons arranged on said board,
the predominent portion of the icons on said board each evoking a significant primary emotion,
said icons comprising a plurality of sub-sets of icons, each of the icons in any one of said sub-sets evoking the same primary emotion, each sub-set evoking a different primary emotion,
a set of cards, each having first indicia thereon and each card of said set bearing second indicia referring to one of said primary emotions and requesting the selection of one of said icons corresponding thereto,
a pair of dice having a plurality of faces, a first portion, less than the whole, of said faces each having an indicia thereon identical to said first indicia on said set of cards.


Examination Support Document (ESD) Guidelines Published.

Posted in Practice Commentary by Jake Ward on September 13, 2007

Under the new claims and continuations rules, the USPTO is now requiring an Examination Support Document (ESD) by any Applicant who wishes to present more than five independent claims or more than twenty-five total claims in an application.  Guidelines for an ESD have now been published by the USPTO, and may be found here.

A USPTO summary of the ESD guidelines is as follows:

1. Preexamination Search Statement: a statement that a preexamination search in compliance with 37 CFR 1.265(b) was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and, for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search;

2. Listing of References Deemed Most Closely Related: a listing of the reference or references deemed most closely related to the subject matter of each of the claims (whether in independent or dependent form) in compliance with 37 CFR 1.265(c);

3. Identification of Claim Limitations Disclosed by References: for each reference cited, an identification of all the limitations of each of the claims (whether in independent or dependent form) that are disclosed by the reference;

4. Detailed Explanation of Patentability: a detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references; and

5. Showing of Support under 35 U.S.C. 112, ¶1: a showing of where each limitation of each of the claims (whether in independent or dependent form) finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of each of the claims finds support under the first paragraph of 35 U.S.C. 112 in each such priority or benefit application in which such support exists.

They Invented What? (No. 64)

Posted in They Invented What? by Jake Ward on September 12, 2007

U.S. Pat. No. 4,569,026:  TV Movies that talk back.


What is claimed is:

1. A video apparatus for simulating a voice conversation between a human viewer of the apparatus and a talking video character, the apparatus comprising:

first means for controlling reading of video frames from a record carrier means to provide a first video frame sequence associated with a plurality of alternative second video frame sequences, wherein the video frames include representations of the talking character;
second means for controlling reading of video frames from a record carrier means to provide access to at least one of said alternative second video frame sequences before the end of said first video frame sequence;
means for generating audio representations of voice sounds during said video frame sequences to provide one side of the simulated voice conversation;
means for communicating to said human viewer during said first video frame sequence a plurality of alternative words corresponding to said alternative second video frame sequences and for eliciting from said viewer a spoken response that includes one of the alternative words, thereby selecting a second video frame sequence;
voice recognition means for analyzing said spoken response and determining therefrom which selected second video frame sequence corresponds to said spoken response; and
means for switching at the end of said first video frame sequence between the video frames from said first reading means to the video frames from said second reading means to provide said selected second video frame sequence accompanied by voice sounds corresponding to said selected second video frame sequence, thereby simulating a voice conversation between the talking character and the human viewer.


Death Knell for the Internal Combustion Engine?

Posted in Science and Technology by Jake Ward on September 8, 2007


This article at CNN pointed out a recently issued patent, U.S. Pat. No. 7,033,406, in which the article opined “energy insiders spotted six words . . . that sounded like a death knell for the internal combustion engine.” 

The ‘406 patent is titled: Electrical-energy-storage unit (EESU) utilizing ceramic and integrated-circuit technologies for replacement of electrochemical batteries.  The invention relates to so-called “ultracapacitors”  – battery-like devices that store and releases energy quickly.  The assignee of the patent, EEStor, and its licensee ZENN Motor Co., believes the technology may revolutionalize the electric car industry.  An interesting read, if you have a few minutes to spare.