Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 79)

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

U.S. Pat. No. 5,023,850:  Clock for keeping time at a rate other than human time.

JW Note:  Wishing you a Prosperous and Happy New Year 2008!


What is claimed is:

1. A clock for keeping animal time, wherein animal time is defined as human time multiplied by a ratio given by the average lifespan of a human divided by the average lifespan of a type of animal whereby an animal second is equal to one human second divided by said ratio, one animal minute is equal to one human minute divided by said ratio, one animal hour is equal to one human hour divided by said ratio, and one animal day is equal to one human day divided by said ratio, said clock comprising:

          a housing;
          means for generating a reference frequency;
          first means responsive to said generating means for producing pulses at a rate of sixty pulses per second times said ratio;
          first clocking means for accumulating said pulses from said first producing means and producing an animal time output signal in animal hours, animal minutes and animal seconds;
          second means responsive to said generating means for producing pulses at a rate of sixty pulses per second; and
          second clocking means for accumulating said pulses from said second producing means and producing a human time output signal in human hours, human minutes and human seconds.


Sinorgchem v. ITC & Flexsys America.

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

Range of “Controlled Amount” Narrowly Construed Based on Definition in the Specification; Majority Panel Ignores Contrary Disclosure and the Signal “For Example” in Relation to the Range.  

(Fed. Cir. 2007, 06-1633)


On appeal to the CAFC, Sinorgchem argued that a limited exclusion order by the International Trade Commission (“ITC”) and decision that Sinorgchem infringed four method claims of Flexys America’s U.S. Pat. Nos. 5,117,063 (“the ’063 patent”) and 5,608,111 (“the ’111 patent”) was improper.  A majority of a three-judge panel at the CAFC agreed with Sinorgchem and vacated the ITC decision.

The technology at issue relates to  a compound known as 6PPD, a rubber antidegradant used primarily in tires.  An intermediate compound, 4-aminodiphenylamine (4-ADPA) is used to make 6PPD.  Sinorgchem produces 4-ADPA and 6PPD in China and imports 6PPD for sale into the United States.

The process for making 4-ADPA includes a condensation reaction of aniline and nitrobenzene in the presence of a base and a  protic material (a proton donor, such as water).  Flexsys’ claimed process for producing 6PPD includes the step of: 

. . . reacting the aniline and nitrobenzene in a confined zone at suitable temperature, and in the presence of a suitable base and controlled amount of protic material to produce one or more 4-ADPA intermediates . . . . (Emphasis mine).

The central question was whether Sinorgchem’s method of producing 4-ADPA intermediates satisfied the above claim limitations and, in particular, whether the Sinorgchem’s methods used the controlled amount of protic material?  Sinorgchem argued that “controlled amount of protic material” should be construed to be “up to about 4% water”.  Under this construction, Sinorgchem would not infringe because Sinorgchem’s method employs more than 4% water.  Flexsys argued that “controlled amount” means “that the amount of protic material should be controlled between an upper limit and a lower limit,” where the upper limit was “that amount beyond which the reaction between nitrobenzene and aniline is inhibited,” and the lower limit was “that amount below which the desired selectivity for 4-ADPA intermediates is not maintained.” Under Flexsys’ claim construction, the Sinorgchem process would infringe.

The majority panel found that the ITC’s determination of infringement was based on an erroneous construction of the term “controlled amount”, and that Sinorgchem did not literally infringe under a correct construction.  The majority relied on Flexsys’ specifications, which state:

A “controlled amount” of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when analine is utilized as the solvent.  (Emphasis mine).

The CAFC placed emphasis on the use of quotations marks around the term “controlled amount”, and use of the word “is”, as being indicative of the patentee acting as its own lexicographer in defining the term.  The majority disagreed with the ITC’s finding that the ” “up to about 4% H2O” language was used in the specification as an example and not a definition of the amount of water permitted,” stating that “a definition set forth in the specification governs the meaning of the claims.”  The majority also disagreed with the ITC’s reliance on a Flexsys example where more than 10% water in a reaction was described.  Specifically, the majority opined:

Where, as here, multiple embodiments are disclosed, we have previously interpreted claims to exclude embodiments where those embodiments are inconsistent with unambiguous language in the patent’s specification or prosecution history.

The majority panel of the CAFC also found it significant that the Flexsys example relied upon by the ITC does not expressly disclose the amount of water used in the reaction, and that the amount must instead be determined by a “complex calculation”.

Accordingly, the majority REVERSED AND REMANDED to the ITC to address doctrine of equivalents infringement in light of the holding that there was no literal infringement.

Circuit Judge Newman provided a strong DISSENT,  stating that the majority:

. . . made findings contrary to the detailed and unchallenged text of the patent specifications, and have construed the claims so that they exclude a major part of the invention described in the patents.

Specifically, Judge Newman recognized that:

. . . there was no disclaimer of the scope set forth in the patent specifications and claims; there is no prior art to limit the claims in the way selected by the panel majority; and there is no reason to insert an absolute numerical limit of “about 4%” protic material into the claims that do not contain a numerical limit, when the specifications of both patents demonstrate significantly higher percentages.

Nicely driving the absurdity of the majority decision home, Judge Newman further states:

It is not the judicial role to change the invention. Although the panel majority acknowledges that limits above 4% “could be found in the specification” and were so found by the Commission, the panel majority discards this undisputed fact. . . .

Thus my colleagues find “clear definitional language [of a 4% limit] set forth in the specification” although that number is in a sentence with the signal “for example,” and ignore the text and examples showing a higher range. These erroneous appellate findings of scientific fact directly contradict the findings of the Commission, made upon extensive and detailed evidence and argument on the content of the specifications, including the variables discussed and exemplified in the ‘063 and ‘111 patents. Instead, the panel majority selects the parts of the specifications that show water in the 4% range, and ignores the description and examples that show other amounts of water. . . .

Our appellate obligation is to impart consistency, predictability, and guidance to patent claiming, whereby the patent-user community can rely on a technologically correct and legally consistent interpretation of patent claims. The health of innovative technology requires confidence in objective rules of claim construction, and in uniform judicial application of the rules. The panel majority adds inconsistency and unpredictability by arbitrarily limiting the scope of the claimed invention in a way that conflicts with the teachings of the specifications and the knowledge in the field of the inventions. I respectfully dissent.

(Emphasis mine).

JW Note:  See also previous AT! discussions of Flexsys America v. Sinorgchem et al. here and here.

I’m Not A Trademark, Bro!

Posted in General Commentary by Mike Dockins on December 21, 2007

AT! recently discovered that the phrase “Don’t taze me, bro!” was one of the most popular phrases of the year. Perhaps you are now aware of the origins of this phrase. On September 17, 2007, Senator John Kerry addressed a collection of University of Florida students. Near the end of a question and answer session, University of Florida police forcibly removed a student, Andrew Meyer, from the speech, restraining him through direct force and stunning him with a tazer. Mr. Meyer was removed for exercising his right to speak, though disrespectful and vulgar it may have been.

Shortly after the event, several videos of the episode were then posted on the Internet. The video shot with Meyer’s camera had 2.6 million views by October 19, 2007 and was considered a viral video. Why? Because of the aforementioned most popular phrase. During the course of being removed from the speech, Mr. Meyer can be seen struggling against his UF police escort. At one point, Mr. Meyer was threatened to be (and was eventually) tazered prompting him to shout out, “Don’t taze me, bro!” Thus the phenomenon began. See the video here.

So what does this have to do with IP? Everything. AT! admires the entrepreneurial nature of the applicants for the following marks: DON’T TASE ME, BRO! for various shirts, DON’T TAZE ME BRO! for books, puzzles, posters, and the line, and DON’T TASE ME, BRO! for jackets, pants, and other clothing. However, we question whether the applicants appreciate how a trademark is used and what it is. Section 45 of the Lanham Act defines a trademark as: “any word, name, symbol, or device, or any combination thereof- (1) used by a person or (2) which a person has a bona fide intention to use in commerce… to identify and distinguish his or her goods… . In essence, a trademark is a source identifier. A trademark is not merely a trivial phrase of pop culture that may adorn an article of clothing or pamphlet.

We are rather certain that two of these applications will be rejected for likelihood of confusion with the first to be filed. Sorry applicants, changes such as substituting an “s” for a “z” won’t do it, and neither will adding or removing a comma. More importantly, unless the applicants can show the use of the DON’T TAZE ME BRO! mark as a true trademark or brand of goods, an ornamental refusal of the applications will also be issued. Frankly, we doubt the specimens provided by the applicants will be more than a shirt or bumper sticker with the phrase emblazoned thereacross. It is certainly a valiant effort to capitalize on a fleetingly popular phrase. Heck, it’s the American way. But ornamental use and trademark use are very different creatures.

One surprising and successful applicant/entrepreneur was the applicant for the now-abandoned registration for JESUS JUICE for wine. We think Michael Jackson may have even purchased a few bottles of the stuff himself.

SSTI Report: Patents per 100K Workers, 2001-2006.

Posted in General Commentary by Jake Ward on December 20, 2007

The Patent Librarian recently posted on a report by The State Science and Technology Institute (SSTI), a nonprofit organization that supports economic development through science, technology and innovation.  The report shows the ranking in number of patents issued per 100,000 workers in the U.S.A. from 2001-2006.  The top ten increases by state in patents per 100,000 workers was reported as follows:

% Change 2001-2006

1. Washington 46%
2. Oregon 36.8
3. Massachusetts 14.1
4. Kansas 13.4
5. California 12.9
6. Rhode Island 11
7. Oklahoma 7.7
8. Minnesota 6.3
9. Georgia 6.2
10. Colorado 5.9

We found the following listing of the bottom ten states in the rankings to be equally interesting:

% Change 2001-2006

1. West Virginia -35.2%
2. Louisiana -22.9
3. Tennessee -22.3
4. Idaho -18.7*
5. Montana -18.5
6. Wyoming -17.6
7. South Dakota -16.9
8. Arkansas/Ohio/North Dakota/New Mexico -16.8
9. Mississippi -16.4
10. Alaska -16

*Idaho also has the most patents per capita, however, due to the presence of Boise-based Micron.

AT! performed a similar analysis of geographical patent trends several months ago and found the rankings in the U.S. States to be similar (a slight difference in order likely due to the use of “workers” by the SSTI study versus the “census numbers” employed by the AT!, but overall the same). 

As we noted in our earlier studies, these are certainly some interesting figures.  We repeat, 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 Ohio, Pennsylvania, Indiana, and Illinois doing wrong, if anything?  Comment as you may!

They Invented What? (No. 78)

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

U.S. Pat. No. 5,523,741:  Santa Claus Detector.

JW Note:  Wishing a Happy Holidays to all!  See you in 2008!


What is claimed is:

1. A children’s novelty device for detecting when an entity enters a dwelling comprising:
          a decorative Christmas stocking having a top portion, a heel portion and a toe portion, said toe portion including an enclosure therein;
an electrical control circuit;
          a light source operatively coupled to said control circuit;
          a power source operatively coupled to said control circuit for providing power to said light source, said power source being disposed in said toe portion enclosure;
          switch means operatively coupled to said control circuit for controlling the power provided by said power source to said light source; and
          a flexible pull cord, said pull cord being connected to said switch means for actuating said switch means when a force is exerted on said pull cord,
          whereby, when said pull cord is tugged, said light source is turned on.


Trying Out a New Look!

Posted in General Commentary by Jake Ward on December 17, 2007

As regular AT! readers may have noticed, we are trying out a new “minimalist” look for a change of pace. 

Like, dislike, or ambivalent?  Feel free to leave a comment and let us know your thoughts!

They Invented What? (No. 77)

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

U.S. Pat. No. 4,304,065:  Walking hand puppet.


What is claimed is:

1. A hand puppet in the figure of a land or sea animal, bird, insect or the like with body carrying appendages comprising:

          a. a body having a cavity formed therein,
          b. manually movable appendages connected with the body, said appendages having finger-receiving cavities formed therein in communication with the body cavity,
          c. means defining a hand receiving opening in said body in communication with said body cavity,
          d. an open-ended hand-receiving glove having a finger portion an a palm portion, said glove finger portion being formed to provide the appearance of hand fingers therein, said glove being attached to said body with said palm portion covering the opening defined in said body and said finger portion being remote from said appendages, and
          e. means defining an opening through said palm portion from the interior of said glove and in register with the opening defined in said body for forming an open-ended passage into and through said glove and into concealed communication with the body cavity,
          f. whereby a hand may be inserted into the glove and through the glove passage into the body cavity and the fingers may be inserted into the appendages to manipulate the appendages in simulation of body carrying movement.


OMB Concludes Proposed IDS Rules Are “Consistent without Change”.

Posted in General Commentary by Jake Ward on December 11, 2007

The USPTO’s proposed changes to information disclosure statement (IDS) requirements have recently been approved by the OMB.  The proposed rules have been labeled as “Consistent without Change”.  The phrase “Consistent without Change” means that the OMB has found the rules to be consistent with the principles of Executive Order 12291, i.e., the proposed rules are not economically significant.

The abstract of the proposed rules, currently available on the Federal Regulatory Information Web site here, states:

The U.S. Patent and Trademark Office (Office) amends its regulations on information disclosure statement (IDS) requirements and other related matters to improve the quality and efficiency of the examination process. These changes would enable the examiner to focus in on the relevant portions of submitted prior art at the very beginning of the examination process, give higher quality first actions, and minimize wasted steps. This action would make the following changes relating to submissions of IDS’s by applicants: impose a requirement for the personal review of, and to provide information about, certain citations; eliminate the fees for, but permit only timely, IDS submissions; and only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted. The Office would also permit third parties to submit prior art up until the mailing of a notice of allowance after application publication; to no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE); to permit, after payment of the issue fee, certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and to revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.

The Federal Register notice related to the proposed IDS rules may be found here.  The patent practice community now anxiously awaits publication of the rules in their final form.