Anticipate This!™ | Patent and Trademark Law Blog

The Office Copier Turns 50.

Posted in Science and Technology by Jake Ward on March 31, 2010


An interesting article over at CNN today, describing the long road from concept to prototype to commercialization in the development of the common office copier. 

According to the article, one of the original inventors was Chester Carlson, a young New York City patent attorney, who came up with an idea during the Great Depression while looking for a solution to his writer’s cramp.  After many years of development and marketing, and considerable personal hardship, Carlson was finally able to convince one company, widely known today as Xerox, to run with his concept and develop the first prototypes.  The rest, as they say, is history.  

A very good read.  We recommend checking it out, if you have a few minutes to spare!

The Need for an “Enhanced” Enhanced First Action Interview.

Posted in Practice Commentary by Jake Ward on March 24, 2010


Back in April 2008, the USPTO initiated a First Action Interview Pilot Program, in which an applicant who complied with certain requirements received the results of a prior art search conducted by the examiner, via a condensed Pre-Interview Communication, and then was permitted to conduct an interview with the Examiner to discuss the cited prior art references prior to the first Office action on the merits. This approach differed from the norm, where an interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the Examiner determines that such an interview would advance prosecution of the application.

Although the original pilot program was only rolled out to a very limited number of art units, the concept was generally welcomed by practitioners. In view of the positive response, and comments from both Examiners and the practitioner base, the USPTO in October 2009 expanded an “Enhanced” First Action Interview Pilot Program to other art areas.  The Enhanced First Action Interview Pilot Program included modified procedures for purpose of enhancing efficiency and providing more options to participants. The Enhanced First Action Interview Pilot Program is available to applicants until April 2010.

We have now had some experience with the Enhanced First Action Interview Pilot Program. The pilot program certainly facilitates greater communication between practitioner and Examiner, which one would think would only lead to more efficient prosecution.  Although not resulting in an outright allowance of the application, the Pre-Interview Communication and subsequent First Action Interview did allow us to work through a number of issues that otherwise may have taken multiple Office Actions to resolve. However, all that being said, the procedures associated with the pilot program is not perfect and still has kinks to be worked out.

Most notably, the pilot program procedures do not seem to appreciate the collaboration that often occurs between an Examiner and a practitioner at the Interview .  Such collaboration very often results in amendments different from what was considered by either party prior to the interview.  The problem is that the present procedure only provides for three possible outcomes after the interview:

1) an agreement is reached and all claims are in condition for allowance;

2) an agreement as to allowability is not reached and the Examiner will formalize the requirements, objections, and rejections set forth in the Pre-Interview Communication in a First Action Interview Office Action; and

3) an agreement as to allowability is not reached and applicant is permitted to convert proposed amendments submitted in preparation for the Interview into a reply, and waive receipt of a First Action Interview Office Action. 

Thus, under the enhanced pilot program procedures, there is no way for the applicant to submit amendments different from the ones contemplated and proposed prior to the Interview.  Where amendments are developed during the course of the Interview, the pilot program instead requires the Examiner to issue the First Action Interview Office Action that sets forth the same objections and rejections already worked through at the Interview.  The applicant then must respond to the First Action Interview Office Action, as though the Interview  never took place, for the Examiner’s formal consideration and action.  Additionally, any next action may then  be made final by the Examiner, due to the fact that he was required to mail a faux First Action Interview Office Action only articulating objections and rejections that were already discussed with the practitioner.  

This procedural defect signficantly reduces the attractiveness of the First Action Interview concept for applicants, and only serves to introduce additional time and complexity into a process that was otherwise intended to streamline examination.  To fix this problem, we would propose as a future “enhancement” that applicant be permitted after the Interview to file a reply (effectively, a Preliminary Amendment) that would allow the applicant to amend the application as discussed during the Interview for the Examiner’s formal consideration and action.  Any subsequent action not resulting in an allowance would then be made nonfinal, and allow applicant more flexibility in addressing any new rejections made in the same.

On the whole, we still believe that the First Action Interview concept has merit, and could be a very useful tool for working with the Examiner early to identify patentable subject matter.  We are hopeful that the USPTO will continue to adjust the procedures to make the program more efficient and practical, and will eventually roll out the program with said adjustments as a standard procedure available for all applicants.

More information on the Original and Enhanced First Action Interview Pilot Programs may be found at the USPTO here

Any comments from our readership sharing experiences with the First Action Interview Pilot Program are welcomed.

They Invented What? (No. 164)

Posted in They Invented What? by Jake Ward on March 24, 2010

U.S. Pat. No. 5,743,272: Male nipple abrasion protector.


What is claimed is:

1. An inexpensive nipple protector for use on a human body to minimize abrasion on the nipple surface including: a base portion sized to contact and cover a portion of the area surrounding the nipple to be protected, the base portion having an aperture formed therein the aperture allowing the nipple to protrude there through without irritation, a cover attached to the base portion that is disposed over and encloses the aperture forming a cavity and an adhesive layer disposed on the side of the base member opposite the cover and being suitable for attaching and holding the nipple protector in place during exercise when exposed to normal body secretions caused during exercise.


They Invented What? (No. 163)

Posted in They Invented What? by Jake Ward on March 19, 2010

U.S. Pat. No. 6,490,999: Collar apparatus enabling secure handling of a snake by tether.


What is claimed is:

1. A collar apparatus for collaring a snake comprising: an elongated collar section forming a physical collar when wrapped around the circumference of a strategic body portion of the snake; a support section associated with the collar section, the support section for supporting an attachment mechanism for accepting attachment of a tether; and a connector system comprising at least two components affixed to strategic portions of the elongated section for securing the collar in place around the strategic body portion of the snake; characterized in that the length of the collar section is such that a portion thereof overlaps itself when fitted around the snake providing an adjustable interface containing separate components of the connector system whereby mating the connector components together secures the collar in place on the snake and wherein the key-shape design of the collar provides a light-weight and flexible collar wherein no metallic parts touch a snake when collared.


They Invented What? (No. 162)

Posted in They Invented What? by Jake Ward on March 12, 2010

U.S. Pat. No. 5,934,226:  Bird diaper.


We claim:

1. A sanitary apparatus for use with a bird comprising: 

          a front section of fabric including a top surface and a bottom surface; 

         a back section of fabric connected to said front section of fabric, said back section of fabric including a bottom surface and a top surface having a top edge, said bottom surface of said back section of fabric containing means defining an aperture therethrough, said aperture being sized for receiving the tailfeathers of the bird, said top surface of said back section of fabric being longitudinally split from said top edge of said top surface to said aperture to form a first tab and a second tab; 

         fastening means for fastening said first tab to said second tab; 

         a pouch formed from the interconnection of said front section of fabric and said back section of fabric, said pouch being suited for receiving fecal matter therein; and 

         a pair of connectors, each of said connectors includes two ends, wherein one end of each of said connectors is connected to the top surface of said front section of fabric and the other ends of said connectors are connected to the top surface of said back section defining a first orifice, a second orifice, and a third orifice, said first and second orifice being suited for receiving the wings and legs of the bird and said third orifice being suited for receiving the head of the bird. 


The Word From The USPTO Trenches.

Posted in Practice Commentary by Jake Ward on March 12, 2010


Conducting interviews with Patent Examiners is quite a large part of my practice .  In my opinion, interviewing is an extremely effective tool that applicants can use to further prosecution of their patent applications.  Interviews can also lead more quickly to patent application allowance, and a subsequent issuance of a patent. 

I often conduct interviews by teleconference.  However, personal interviews can sometimes be more effective, particularly when there is an exhibit available that shows the invention.   Thus, I make a number of visits every year to the U.S. Patent and Trademark Office (USPTO) in Alexandria, VA.  During one such visit this week, I made a few observations that I’d like to share with our readers.

  • Examiner morale appears to be improving!  I had an Examiner tell me a few years ago that “no one smiles here anymore”.  This seems to be changing, in large part to the efforts of the Kappos administration such as the new count system.
  • There appears to be an internal push underway, and not necessarily driven by the administration, to have newer Examiners (who only know the ways the USPTO operated under Dudas) make decisions and work with applicants in a way that finds patentable subject matter sooner rather than later.  Some of the more experienced Examiners I spoke with had alluded to the fact that they were working with junior Examiners to adjust their examination practices accordingly.
  • The culture of “reject, reject, reject” appears to be going away as well.  I say this not based on the results of the interviews I conducted (which went well, by the way), but based upon comments from multiple Examiners with whom I spoke.  One Examiner indicated that he believes there will be a rise in allowance rates this year, after the sharp declines that were observed during the earlier Dudas administration.

Happy Examiners = Better Examination = More Allowances?  Let’s hope so. 

Any comments from our readers on this topic, and especially our Examiner readership, are most welcomed.