Anticipate This!™ | Patent and Trademark Law Blog

In Re Bilski.

Posted in Opinion Commentary by Jake Ward on October 30, 2008

The applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test.

(Fed. Cir. 2008, 07-11130, en banc)

Bernard L. Bilski and Rand A. Warsaw (collectively, “Applicants”) appealed from the final decision of the BPAI sustaining the rejection of all eleven claims of their U.S. Patent Application Serial No. 08/833,892 ( the “′892 application”).  Specifically, Applicants argued that the examiner erroneously rejected the claims as not directed to patent-eligible subject matter under 35 U.S.C. § 101, and that the Board erred in upholding that rejection. The appeal was originally argued before a panel of the court on October 1, 2007. Prior to disposition by the panel, however, the CAFC sua sponte ordered en banc review. Oral argument before the en banc court was held on May 8, 2008. The CAFC affirmed the decision of the BPAI, concluding that Applicants’ claims are not directed to patent-eligible subject matter, and in doing so, clarified the standards applicable in determining whether a claimed method constitutes a statutory “process” under § 101.


Because the applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein, and Applicants’ claim here plainly fails that test, the decision of the Board is


JW Note:  Further analysis to follow.  See background from AT! here.

JW Update 11/12/08:  Analysis with varying opinions on the impact of the decision is available from other patent law blogs here, here, and here.  Enjoy.

They Invented What? (No. 117)

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

U.S. Pat. No. 6,754,472: Method and apparatus for transmitting power and data using the human body.

JW Note:  Hoping you have a scary and safe Halloween!


What is claimed is:

1. A network of devices comprising:

          a first device for generating a first electrical signal;
          a second device including first circuitry requiring an electrical signal from an external source to operate, wherein the second device generates initialization information including at least power requirement information; and
          a body of a living creature for coupling the first device to the second device and for conducting the electrical signal from the first device to the second device and the initialization information from the second device to the first device, wherein the first and second devices establish a master and a slave relationship there between.


The Little Shop of Patent and Trademark Horrors.

Posted in General Commentary by Jake Ward on October 22, 2008


In surfing for a Halloween-themed TIW? patent this morning, we happened across the following USPTO website, titled The Little Shop of Patent and Trademark Horrors.

At first blush, one might think this is a clandestine USPTO department responsible for scaring practitioners and developing ghoulish regulations, such as the presently enjoined claims and continuations rules (did you feel the room just get colder?).

However, the website is actually part of the USPTO Kids’ Pages, designed to generate interest amongst K-12 students in patents and trademarks.  It appears to have games, puzzles, and other fun and creative links for kids to explore.  If you know a teacher, or have kids of your own, this might be a fun website to check out.

They Invented What? (No. 116)

Posted in They Invented What? by Jake Ward on October 22, 2008

U.S. Pat. No. 5,103,585:  Cricket gun.



What is claimed is:

          1. A cricket gun for holding and dispensing crickets comprising a holding container and an intergral chamber with dispensing means; said holding container comprising a removable cap at one end, and a funnel at the opposite end with a wide portion of the funnel intergral with the holding container, a rod inside the holding container, a cork attached to a first end of the rod inside the holding container, and the opposite end extending through the removable cap and attached to a handle; a narrow portion of said funnel having an opening and including a chamber, said dispensing means adjacent said chamber and including a sliding carriage and a trigger;
          whereby said cork abutts the funnel to keep crickets in the holding container, said handle is operated to displace the rod and cork allowing a cricket to enter the chamber and then the trigger is operated to slide the carriage to expose the opening, thereby releasing a cricket.

They Invented What? (No. 115)

Posted in They Invented What? by Jake Ward on October 8, 2008

U.S. Pat. No. 6,776,687:  Haunting aid.


What is claimed is:

1. An entertainment prop comprising: a substantially flat or low-relief backing depicting at least a head of a being and a pair LEDs to simulate eyes, each LED comprising a base positioned adjacent a portion of said backing, each LED further comprising a pair of electrodes passing through an opening in said backing, an electrical connection crossing said backing between at least one of each of said pair of electrodes wherein said LEDs are connected in electrical parallel to hold a battery between said electrodes, said crossing connection, in cooperation with each said LED base, securing said LEDs to said backing.


Flash of Genius (Film) – Coming to a Theater Near You, October 3rd.

Posted in General Commentary by Jake Ward on October 1, 2008

[clearspring_widget title=”Flash of Genius – Patent Widget” wid=”48d2aee7a942407e” pid=”48e3b19eb953ec45″ width=”300″ height=”400″ domain=””]


Based on the true story of college professor and part-time inventor Robert Kearns’s (Greg Kinnear) long battle with the U.S. automobile industry, Flash of Genius tells the tale of one man whose fight to receive recognition for his ingenuity would come at a heavy price. But this determined engineer refused to be silenced, and he took on the corporate titans in a battle that nobody thought he could win.

The Kearns were a typical 1960s Detroit family, trying to live their version of the American Dream. Local university professor Bob married teacher Phyllis (Lauren Graham) and, by their mid-thirties, had six kids who brought them a hectic but satisfying Midwestern existence. When Bob invents a device that would eventually be used by every car in the world, the Kearns think they have struck gold. But their aspirations are dashed after the auto giants who embraced Bob’s creation unceremoniously shunned the man who invented it.

Ignored, threatened and then buried in years of litigation, Bob is haunted by what was done to his family and their future. He becomes a man obsessed with justice and the conviction that his life’s work — or for that matter, anyone’s work — be acknowledged by those who stood to benefit. And while paying the toll for refusing to compromise his dignity, this everyday David will try the unthinkable: to bring Goliath to his knees.

JW Note:  We make no claims, promises or guarantees about the accuracy, completeness, or adequacy of the information contained in the above widget (provided by an advertising company).  However, we thought this looked like it may be a good movie, and one that may bring the importance of the patent law to the attention of the public.  If anyone ventures out this weekend to see this movie, please feel free to leave your comments!