Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 177)

Posted in They Invented What? by Jake Ward on July 21, 2010

U.S. Pat. No. 4,656,917:  Musical instrument support.

JW Note:  We make note of the inventor named on the patent – Mr. Edward L. Van Halen.  Rock on!


What is claimed is:

1. A stringed musical instrument comprising an instrument body having front and rear surfaces, sound producing means extending over a portion of said front surface, and a device mounted onto said rear surface for positioning said instrument body at an angular orientation to a player’s body, said device including attachment means movable between an inoperative position overlying said rear surface and an operative position at an angle to said rear surface, a pair of spaced-apart mounting blocks attached to said rear surface and support means coupled to said mounting blocks for rotationally supporting therebetween said attachment means, said attachment means engaging said player’s body when in said operative position for maintaining said instrument body in said angular orientation and disengaging from said player’s body when in said inoperative position for maintaining said instrument body in other than said angular orientation. 


USPTO Tips to Streamline Patent Prosecution.

Posted in Practice Commentary by Jake Ward on July 21, 2010

As many of our readers are likely aware, Director David Kappos has been publishing to a blog at the U.S. Patent and Trademark Office for the past several months.  The blog is entitled “Director’s Forum” and is located here.

We have enjoyed reading the Director’s Forum, which has proved to be a good source of information about happenings at the USPTO that will affect applicants.  A particularly good post was made a few weeks ago, and provided tips to streamline the patent prosecution process. 

The tips were based on dozens of comments made at an earlier post where the Director called for suggestions.  Many of the tips echo what we have previously stated here at AT!. 

The full listing is reproduced below for the convenience of our readers.

1) CONDUCT INTERVIEWS:  Set up interviews when possible. Interviews can help applicants and examiners quickly identify points of agreement as well as points of disagreement.  An interview will help advance prosecution and provide an opportunity to facilitate a possible early allowance.

2) KEEP CLAIMS MANAGEABLE:  Avoid filing excessive numbers of claims. Filing a manageable number of claims will enable the examiner to enhance prosecution by directing examination efforts at the heart of applicants’ invention.

3) PROVIDE GOOD TRANSLATIONS:  Do a careful job of translating foreign-language applications into English before filing an application in the United States.  Poorly translated applications often result in undesirable lengthy prosecution resulting from lack of clarity arising from indefinite claim language or unclear wording in the specification.

4) CLEARLY IDENTIFY NEW LIMITATIONS:  When adding new limitations to claims during prosecution, include a brief section in the remarks citing the location in the specification or drawings that provides support. This will eliminate unwarranted new matter rejections under Section 112 and assist the examiner in better understanding the meaning of the claims. 

5) FILE THOROUGH RESPONSES:  Take care to ensure that your response addresses the specific issues set forth in the examiner’s office action. Responses or amendments that fail to address the issues in the office action unduly extend prosecution.

6) ADVANCE AMENDMENTS/ARGUMENTS EARLY:  File arguments and amendments at the earliest stage of prosecution, and prior to a final rejection if at all possible.  Amendments submitted after final are more difficult to deal with procedurally, are not automatically entered, and extend prosecution.

7) COORDINATE US/FOREIGN APPLICATIONS:  Draft or amend your U.S. application in view of the prosecution in a corresponding foreign or international application.  Success of the Patent Prosecution Highway (PPH) shows that applications drafted or amended in response to search reports and patentability opinions in corresponding foreign or international applications have a much higher allowance rate and shorter prosecution. 

8)  DRAFT CLAIMS TOWARD THE INVENTION: Know what you want to protect before you file the application and draft the claims toward the invention.  If the claim set is not initially drafted to capture the protection needed or desired by the applicant, the examiner will have difficulty doing a comprehensive search on first action.  Furthermore, the examiner will have difficulty anticipating what might be claimed in the future, if the initial claim set is misdirected or overly broad. All of this extends prosecution at everyone’s expense.   

9)  KEEP INFORMATION DISCLOSURE STATEMENTS MATERIAL:  Submit a focused Information Disclosure Statement (IDS).  Include in an IDS only those references material to patentability.  The citation of references that are not material to patentability does not promote a focused examination.  Also, be careful to avoid the repeated citation of the same reference.

10)  DRAFT CLAIM SET FROM BROAD TO NARROW:  Draft your claim set beginning with the broadest scope to which you feel you are entitled and concluding with the narrowest scope you feel merits protection.  A claim set that is graduated in scope from broad to narrow assists the examiner in performing a complete and focused search on first action and can help the examiner anticipate future amendments.  A claim set that is merely broad does not assist the examiner in performing a focused search and often leaves the examiner guessing as to what might be claimed after first action.  This can lead to piecemeal prosecution and the citation of new art after amendment.

They Invented What? (No. 176)

Posted in They Invented What? by Jake Ward on July 14, 2010

U.S. Pat. No. 4,170,357:  Golf club.

I claim:

1. In an athletic club having a shaft portion extending between a handle portion and a head portion which includes a ball-striking face, the improvement wherein said head portion comprises:
          propulsion means including a charge receiving means for holding and positioning a propellant charge such that when said charge is detonated, said heat portion is accelerated in the direction of said ball-striking face; and
           means for detonating a propellant charge held by said charge receiving means, when said ball-striking face comes into contact with a ball, to accelerate said head portion toward said ball.


They Invented What? (No. 175)

Posted in They Invented What? by Jake Ward on July 7, 2010

U.S. Pat. No. 6,889,466Deer stomp simulator.

JW Note:  As an avid outdoorsman myself, I have only one word for this invention . . . awesome!

What is claimed is:

1. An apparatus for attracting an animal comprising: means for generating a sound imitating the sound of a footfall of the animal, sound operating means including a blunt operable to selectively strike the ground and means for positioning the blunt relative to the ground wherein positioning means further comprises: a spring having a first end and a second end, the spring engageable with respect to the blunt at the first end; and an anchor engageable with the second end of the spring and positionable with respect to the ground.


They Invented What? (No. 174)

Posted in They Invented What? by Jake Ward on July 1, 2010

U.S. Pat. No. 4,194,629:  Love Box.

JW Note:  Why?  Because we love the Bilski decision.



A box for use as a token between lovers for assuring their love to each other; the box including an instruction sheet that states the box is filled with love, and no matter how often it is opened, it can never be emptied; and to get a little love, the box should be opened for a short time, while to receive all the person’s love it should be left open all the time; the box including a case and a removable cover.

What is claimed is:

1. A box for displaying a love message when closed or open, comprising a case having a bottom with an encompassing wall in combination with a cover pivoted at one end to said wall whereby said cover may be moved from a closed position abutting said wall to an open position providing access to said case, in combination with a love message and associated means for displaying said message in both closed and open positions, wherein said means comprise a flourescent substance deposited on the case bottom and including a card mounted in said case spaced from said material, said card having cut-out portions in the form of said message for display when the box is open and further cut-outs through said wall in the form of said message.

Bilski v. Kappos.

Posted in Opinion Commentary by Jake Ward on July 1, 2010

 The machine-or-transformation test is not the sole test for patent eligibility under §101. 

(Supreme Court 2009, 08-964)

As stated by Justice Kennedy in the opinion of the Court, the question in this case turned on whether a patent can be issued for a claimed invention designed for the business world. The Bilski patent application claimed a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy.

35 U.S.C. 101 specifies that “[w]hoever 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 therefor, subject to the conditions and requirements of this title”.  Supreme Court precedents provide three specific exceptions to §101’s broad principles, namely that “laws of nature, physical phenomena, and abstract ideas” are not patent-eligible subject matter.

The USPTO Examiner had earlier rejected Bilski’s claims as “not directed to the technological arts”. Upon appeal to the Board of Patent Appeals and Intereferences (BPAI), the BPAI affirmed on the grounds that the application involved only mental steps that do not transform physical matter and was directed to an abstract idea. The Court of Appeals for the Federal Circuit (CAFC) heard the case, and affirmed the decisions of the Examiner and the BPAI. However, the CAFC went further to rule that the “machine-or-transformation test” was the sole test to be used for determining the patentability of a “process” under the Patent Act, 35 U. S. C. §101.

In the opinion, the Supreme Court affirmed the decisions of the USPTO and lower courts, which held that the Bilski invention was not patent-eligible subject matter. In particular, the Court found that the Bilski invention is an unpatentable “abstract idea”.

The Supreme Court disagreed with the CAFC’s adoption of the machine-or-transformation test as the sole test for what constitutes a “process”, however.   The Supreme Court ruled that the machine-or-transformation test is just an important and useful clue in determining whether an invention is patent-eligible subject matter.  Thus, the Court’s guidepost precedents in the patent cases of Benson, Flook, and Diehr , which affirm that “laws of nature, physical phenomena, and abstract ideas” are exceptions to the patentable subject matter requirements of §101, should broadly control any inquiry as to whether an invention is patent-eligible subject matter.

Of particular interest to patent practitioners is that the opinion holds that a business method is simply one kind of “method” that is, at least in some circumstances, eligible for patenting under §101.  Business methods cannot be categorically excluded as patent-eligible subject matter under §101.  This contrasts starkly with the position taken by Justice Stevens in his lengthy concurrence (a dissent of sorts), which would have held that a series of steps for conducting business is not, in itself, patentable subject matter.


JW Note: There are many other Bilski summaries available at your local patent blogs, which delve more into the analysis of this important case. However, the take-home from my reading is fairly simple: 1) business methods are patentable; 2) laws of nature, physical phenomena, and abstract ideas are not patentable (duh); and 3) the machine-or-transformation test can still be used, but only as a “guide” for determining patent-eligibility of an invention.

In fact, 3) appears to already have been implemented into USPTO practices, as evidenced by this memo promulgated to the Examining Corps shortly after the Bilski decision issued.    The memo acknowledges that even if the machine-or-transformation is satisfied, it can be rebutted by establishing that the invention does not fall into one of the excluded categories of 2).  In my opinion, this was a good decision by the Supreme Court, and certainly a workable outcome for applicants and patent practitioners!