Industrial IP

During patent prosecution, practitioners address the various rejections under different statutory sections one at a time. This makes sense since the different rejections stand on their own, and different arguments/rules apply. While sometimes there are overlapping issues, generally most examiners judiciously apply the grounds when they feel the facts warrant such application. However, from a strategic point of view, one can often learn a lot by considering the rejections together.  In particular, some examiners (e.g., those that tend to be more intent on rejecting applications no matter the facts) do not simply go through the claims and various statutory provisions and apply them independently. Rather, as an example, some examiners, upon realizing that their best prior art rejection is still missing certain explicit claim elements, go back and suddenly find that certain claim elements are unclear (112), unsupported (112), etc. In other words, it is generally not a coincidence when ...

  Many applicants on appeal present arguments solely for independent claims. This makes sense if the dependent claims cover subject matter not of interest to the client, or subject matter shown by the cited references. However, often an applicant can use dependent claims strategically to add more claim language in a way that further differentiates the applied references and to provide back-up positions in case the main arguments fail on appeal, for example. This can be especially helpful when the practitioner recognizes early on that an appeal may be needed and so can preload the depending claims with helpful language in a non-final action so that the path to appeal is cleared upon receiving the final rejection. In such cases, the dependent claims can be key backstops.   Coca-Cola’s outside counsel knows this well and used such an approach on a recent appeal for an application related to a new beverage supply machine design.   The case is 15/521,488. The claims on app...

What’s in a name? Juliet’s famous question about Romeo’s Montague name brings about one of the most well-known Shakespeare quotes - that a rose by any other name is still a rose. At the USPTO, examiners have a tendency to be very flexible in mapping claim elements to prior art references under the guise of the Broadest Reasonable Interpretation. For example, it would not phase most patent prosecutors if an examiner alleged that a claim to a “flower” was anticipated by a prior art reference disclosing a “thorn” under the theory that a flower, under the BRI, can refer to the whole stem and flower, and thus include thorns. Strained and even nonsensical interpretations are common, and maintained even up to appeal, as we see in a recent example regarding engine pistons (15/512,560) to Volvo Truck. Here, the invention relates to a reciprocating machine, such as a combustion engine, having groove patterns provided in cylinder walls for collecting oil. Claim 1 is below:  1. A reciproca...

Sometimes a case has a whole slew of rejections that all relate to a common issue or complaint by an examiner. Further, the rejections can be somewhat sloppy, incomplete, and overlapping and create a bit of a jumbled mess. While it may be possible (although not recommended) to write some general remarks in response to an Office action without clearly addressing each ground and have the examiner consider it fully responsive, when the case is on appeal one must be very careful to address every ground of rejection in a separate section of the brief, and in doing so address the specific requirements of each ground of rejection.   Here we see an example where the applicant had what looked to be a winning case, but did not fully address all grounds of rejection and thus suffered the result of waiver. The case is SN 13/920,296 and relates to steering systems.  While ownership was not fully investigated, the case seems to belong in some way to Intellectual Ventures, which by all acc...

Checking my email after work one day, I was greeted with some unfortunate news: the application I was prosecuting had received yet another Office action.   Frustrated, I couldn’t resist skimming the substance of the rejection.   After all, like any patent practitioner, I thought my arguments were pretty irrefutable.   The news only got worse… or so it appeared.   The Office action was something called an “ Ex Parte Quayle action.”   Having never received one of these actions, I started mentally preparing myself to pull out the MPEP and research some arcane rejection. To my surprise, I didn’t find myself knee-deep in case law the following day.   Ex Parte Quayle actions, while somewhat inconvenient, are far from insurmountable.   In short, an Ex Parte Quayle action or “Quayle action” is issued when an application has objections remaining as to formal matters, but is otherwise allowable.   Accordingly, the mailing of these actions close...

“In my experience, there’s no such thing as luck” ( Obi-Wan Kenobi, Star Wars Episode IV: A New Hope), but there is such thing as a strong intellectual property strategy. The Star Wars franchise is a prime example of what a strong intellectual property strategy can do for a brand. They have developed a diverse portfolio over the years, leveraging their trademarks, patents, and copyrights for additional revenue in licensing. While the Star Wars franchise is recognized for their unique novel designs, catch-phrases, or iconic branding – the creativity and innovation to bring the story to life has created novel methods for production as well. The Star Wars saga is filled with futuristic technology whose written mechanical systems are inspired by mechanical engineering, physics, and space to name a few. It is one of those brands that pushes innovation in technology forward. The brands current owners, Disney Enterprises, has taken the concept of light sabers and brought them to ...