Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 97)

Posted in They Invented What? by Jake Ward on April 30, 2008

U.S. Pat. No. 3,962,748:  TV control device.

What is claimed is:

1. A TV control device for rotating a dial of a TV set, from an area distant from the set, said TV control device comprising
          a rod-like member of variable adjustable length having a handle at one end, said rod-like member being independent from a TV set and comprising a plurality of telescoped sections and fastening means for releasably affixing the sections in position relative to each other, each of the sections of the rod-like member being of substantially hollow rectangular configuration;
          a head part detachably secured at the opposite end of the rod-like member for cooperating with the dial of a TV set in a manner whereby a user in an area distant from the set selectively rotates the dial via the rod-like member, said head part being independent from a TV set but removably coupleable to a dial thereof and comprising a pair of spaced spring-like clamping heads for gripping the periphery of a dial, and a second detachable head post having a pair of opposed radially extending flat ears for cooperating with the slots of a dial.

2. A TV control device as claimed in claim 1, wherein the sections of the rod-like member are perforated.

They Invented What? (No.96)

Posted in General Commentary by Jake Ward on April 24, 2008

U.S. Pat. No. 6,983,493: Retractable table top for a toilet.


What is claimed is:

1. A device for providing a working surface while a user is seated on a toilet, said device comprising:
          a table having substantially planar top and bottom surfaces and a centrally disposed longitudinal axis, said table including a plurality of opposed edge portions equally spaced from the axis and extending substantially parallel thereto, said table further including a plurality of opposed end portions integral with said plurality of edge portions, said table further including a plurality of elongated legs having opposed end portions attached thereto and engageable with a ground surface respectively, said table further having a plurality of elongated support rods secured to said bottom surface and adjacent said plurality of end portions respectively; and
         a support member positionable on alternate sides of a toilet seat and comprising
         a rear end portion securable to a wall adjacent a toilet and extending outwardly and forwardly therefrom, and
         a telescopic front end portion connected to said rear end portion and being extendable along a substantially horizontal plane, said front end portion being removably attachable to one said plurality of support rods so that said table can be selectively moved between up and down positions and pivoted thereabout.


They Invented What? (No. 95)

Posted in They Invented What? by Jake Ward on April 16, 2008

U.S. Pat. No. 5,387,159: Continuous wave generating apparatus for simulated surfriding.


What is claimed is:

1. A wave-generating apparatus, wherein a continuous wave is formed suitable for various
          surfriding sports including surfing, boogie-boarding and bodysurfing, said apparatus comprising:
          a carriage-support means having a carriage frame structure including a base frame on which said carriage frame structure is mounted;
          an elongated tube rotatably cradled in said carriage support means and having oppositely disposed open ends;
          a cap member mounted over each of said open ends of said tube and including an access opening;
          a reservoir formed in said tube by said cap members to hold a given amount of water within said tube during the rotation thereof;
          means for rotatably supporting said tube in a horizontal position within said carriage support means; and
          drive means for rotating said tube to create a centrifugal force, wherein the water is forced outwardly to define a cylindrical wall of water about the interior surface of said tube, whereby a continuous wave is formed in the upwardly rotating side of said wall of water.


Pre-Office Action Interview Pilot Program.

Posted in Practice Commentary by Jake Ward on April 15, 2008

Per this USPTO press release yesterday:

The Commerce Department’s United States Patent and Trademark Office (USPTO) today announced that it is initiating a six-month pilot program that will allow an applicant to have an interview with the patent examiner prior to the first Office action on the merits in a new utility application. The First Action Interview Pilot program will expedite prosecution of the patent application by enhancing the interaction between the applicant and the examiner, providing the applicant an opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the review process. The program will begin on April 28.

“As we have learned from our Accelerated Examination program, an interview between the applicant and examiner early in the review process can help resolve issues more quickly and expedite a final decision,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “We believe the enhanced information exchange in the First Action Interview Pilot program will offer dual benefits of reduced pendency and improved patent quality.”

Currently, an applicant may request an interview prior to a first action. Granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.

Under the pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment and/or remarks.

Should the applicant choose not to have a first action interview, a First Action Interview Office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply. If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims. In this interview, if the applicant and the examiner reach agreement on all claims in regards to patentability, a notice of allowance will be issued. If agreement is not reached on all claims in regards to patentability, the applicant will be given a courtesy copy of a First Action Interview Office action setting forth any requirements, objections and rejections to which the applicant will be given one month or 30 days, whichever is longer, from the issue date of the First Action Interview Office action to reply, with limited extensions of time. It is this First Action Interview Office action that is considered the first action on the merits in the application.

This pilot is currently limited to two technology areas to facilitate the USPTO’s ability to gauge the success of the pilot: applications classified in Class 709 (electrical computers and digital processing systems: multi-computer data transferring) and applications in Class 707 (data processing: database and file management or data structures).

For details regarding eligibility and criteria for participation in the pilot, see the USPTO Web site, at

They Invented What? (No. 94)

Posted in They Invented What? by Jake Ward on April 9, 2008

U.S. Pat. No. 4,344,424:  Anti-eating face mask.



What is claimed is:

1. A face mask for preventing the introduction of substances into the mouth of the wearer comprising in combination;

a cup shaped member conforming generally to the shape of the mouth and chin area of the wearer’s face below the nose, said cup shaped member formed of rigid material with openings to allow breathing therethrough,

means for mounting said cup shaped member over the mouth including plural straps extending from said cup over the head of the wearer,

one of said straps provided with a means for separation to allow for placement and removal of said face mask, and a lock at said separation means to prevent removal of said face mask, said mounting means further including a hoop member of rigid material adapted to extend over the user’s head and chin and a flexible strap having end portions connected to said hoop member for extending around the back of the user’s head and a strap member adapted to extend over the top of the user’s head, said strap member being connected at opposite ends to said hoop member and to said strap intermediate the ends of said strap, said separation means including a staple adjacent one end portion of said strap, and an aperture in said strap one end portion in longitudinally spaced relationship with said staple, said strap one end portion arranged to be looped around said hoop member for insertion of said staple in said aperture and said lock engageable with said staple extending through said aperture for locking said strap one end portion to said hoop member, wherein said hoop member is attached to said cup shaped member by plural rods extending therebetween, two of said rods attached to opposed sides of said cup shaped member, a third said rod attached to a lowermost portion of said hoop member.


They Invented What? (No. 93)

Posted in They Invented What? by Jake Ward on April 2, 2008

U.S. Pat. No. 6,799,399: Burial structure for the interment of human remains and significant memorabilia.


Having, thus, described the invention, what is claimed is:

1. A burial structure for the interment of human remains and any associated memorabilia therewith while forming a lasting memorial structure thereby to those therein interred, the burial structure comprising: (a) a plurality of individual burial units to hold the human remains, each individual burial unit comprising: (1) an outer container having a plurality of side walls and a bottom formed perpendicular to the plurality of side walls, the side walls and bottom cooperating to define at least one chamber formed therein, the plurality of side walls and bottom defining within each of the at least one chamber an upper opening and a lower opening; (2) an inner container fitted into each of the at least one chamber of the outer container, the inner container having a separating member upon which a lower chamber is formed thereto, the inner container further having an upper chamber formed to the separating member, the separating member interacting with the plurality of walls particularly forming each of the at least one chamber of the outer container so that the inner container seats within the outer container; (3) a cover fitted atop the side walls, the cover acting to seal the at least one chamber formed therein the outer container, wherein each individual burial unit may be mounted upon another individual burial unit; wherein the at least one chamber comprises a plurality of chambers.


Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas – Permanent Injunction Granted.

Posted in Opinion Commentary, Practice Commentary by Jake Ward on April 1, 2008

Defendants Jon W. Dudas and the United States Patent and Trademark Office are permanently enjoined from implementing the Final Claims and Continuations Rules.

The opinion of Judge James C. Cacheris in the Eastern District of Virginia may be found here.  The order permanently enjoining the USPTO may be found here

GSK and Tafas brought suit against the USPTO to permanently enjoin the USPTO from enacting the USPTO’s final claims and continuations rules.  GSK and Tafas claimed that the rules were unlawful agency action under Section 706(2) of the APA and should be declared null and void.  The USPTO argued that the Final Rules were entirely lawful and that it should be permitted to go forward and implement the rules. More details on the background and specific rules changes may be found at our previous posts here, here, here, and here.  The Patent Docs have some exceptional background on the litigation, including copies of briefs filed, here.

In a well-written opinion, Judge James C. Cacheris rested his determination on the single dispositive issue of whether the USPTO is empowered to  establish the final claims and continuations rules under 35 U.S.C. § 2(b)(2), which allows the USPTO to “establish regulations, not inconsistent with law,” to “govern the conduct of proceedings in the Office.”

Judge Cacheris first noted that, even though the APA does not define a “substantive rule,” any rule that “affect[s] individual rights and obligations” has been deemed substantive by the courts.  With this understanding, Judge Cacheris found:

Though [the new contination rule) does not completely prohibit applicants from filing more than two continuation or continuation-in-part applications, because the USPTO intends to deny additional applications in almost all circumstances, . . . the “could not have been submitted” standard of the petition and showing requirement effectively imposes a hard limit on additional applications.  (Emphasis ours).


[T]he ESD requirement changes existing law and alters the rights of applicants under the current statutory scheme by shifting the examination burden away from the USPTO and onto applicants. . . .  [T]he Federal Circuit has stated that applicants have “no duty to conduct a prior art search” and “no duty to disclose art of which an applicant could have been aware. . .” .  In addition, Sections 102 and 103 provide that “[a] person shall be entitled to a patent unless” the claimed invention lacks novelty or is obvious in view of the prior art, 35 U.S.C. §§ 102 and 103, and Section 131 states that the USPTO “shall cause an examination to be made of the application”. . . . The Federal Circuit has read these provisions as placing the burden of examination and the burden of proof to make a prima facie case of unpatentability on the USPTO.


The 2+1 Rule and the 5/25 Rule, which limit continuing applications, RCEs, and claims, and the ESD requirement, which shifts the examination burden onto applicants, constitute a drastic departure from the terms of the Patent Act as they are presently understood. By so departing, the Final Rules effect changes in GSK’s and Tafas’s existing rights and obligations.

Accordingly, the Judge Cacheris held: 

Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.” 5 U.S.C. § 706(2).

Hat tip to the Patent Prospector.

USPTO-IP Australia Patent Prosecution Highway Pilot Program.

Posted in Practice Commentary by Jake Ward on April 1, 2008

The USPTO and the Australian Patent Office (IP Australia) have agreed to a trial program allowing applicants to fast-track patent applications.  Under the Patent Prosecution Highway (PPH) programs, an applicant receiving a ruling from either Patent Office that at least one claim in an application is patentable may request that the other Patent Office fast track the examination of corresponding claims in corresponding applications.  

Similar PPH programs are presently in place with the Japananese Patent Office (JPO), UK Intellectual Property Office (UKIPO), Canadian Patent Office (CIPO), and Korean Intellectual Property Office (KIPO). 

Per the press release from the Australian Patent Office:

IP Australia and the US Patent and Trademark Office (USPTO) today announced that they will launch a new trial cooperation initiative called the Patent Prosecution Highway (PPH) in April. For patent applicants with interests and applications in the US and Australia this program will result in faster patent examination times.

Under the PPH, an applicant receiving a report from either the USPTO or IP Australia with at least one patentable claim in an application may request that the other office accelerate the examination of the corresponding application. The applicant benefits from the patent offices using the work previously conducted by the other office, by obtaining corresponding patents faster and more efficiently.

“IP Australia is pleased to be taking part in the pilot program of the Patent Prosecution Highway with the USPTO,” said IP Australia’s Director General Philip Noonan. “We strongly support the aim of this initiative with its benefits of increasing quality and efficiency of examination while reducing pendency time. This service is a valuable addition to the patent examination services offered by IP Australia and provides Australian applicants with a process for fast-tracking the examination of their applications in a key market.”

“We welcome this opportunity to work cooperatively with IP Australia. This pilot represents a significant step in reaching worksharing on a global scale and extends the growing Patent Prosecution Highway network which will streamline the global patent system,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas, “By leveraging each other office’s work , this pilot allows each patent office to attain efficiency gains and higher patent quality.”

Full requirements for participation in the trial program can be found at and

The trial program will allow the USPTO and IP Australia to determine the interest of patent applicants in such  program. It will also provide feedback on whether the aims of the program for an increase in quality and efficiency are met. The trial period is set for one year, but may be extended for up to one year.