Patent

July 8, 2024

I often call myself a “translator” between English and Patentese. For example, when a claim states, “the mold support has a fastener,” the PTAB will argue that the ordinary plain language is that “the fastener is a component or feature of the mold support itself, rather than a separate component from the mold support.”

Most of the time, this is not a problem. But, as Alcon Inc. learned, it precludes them from arguing that a prior art disclosure with an integrated mold/flange doesn’t have the ‘fastener’ at issue because it’s not a separate component.

Tip: make sure the specification clarifies if the components are separate, integrated, or, possibly, either. (I don’t think it would have helped Alcon’s case, but it’s still helpful when drafting patent applications.) PTAB 2022004296.

And don’t worry - both applications are owned by Alcon. They are simply trying to expand their rights with the new application.

December 5, 2023

It’s really tempting to pursue as broad of a patent claim as possible. You don’t know what the market will do or how competitors will work around your patent claim. But, when taken too far, the pursuit of a broad claim can result in claim invalidation, as learned by Masimo when they sought to enforce claims to a system that reduces those annoying medical alarms that keep patients awake all night. Masimo could have gone for some slightly narrower claims, and won, but they went for everything-under-the-sink and lost (for now).

Lesson: go for everything you can, but make sure you have some back-up claims in place. Masimo Corp. v. Sotera Wireless, Inc., 2022-1415 (Fed. Cir. Sept. 28, 2023) (nonprecedential)

October 2, 2023:

Hindsight is 20/20, right? But, when examining patent applications, the USPTO is not to use 20/20 vision, and this was reiterated in a recent decision in favor of Dana-Farber Cancer Institute. An examiner rejected the institute’s claims for certain peptides (amino acids), arguing it was obvious to combine some prior inventions. However, as the appeal board (PTAB) noted, the Examiner must identity a reason that would have prompted a person to combine elements in the way the patent claim does. If not, the claim should not be rejected on obviousness grounds.

In other words, “coulda” does not equal “woulda” - that’s a rule.

Pat. Appln. No. 16/813,528

September 1, 2023:

A new patent issued on August 1, 2023, for a robot that “acts comically.” I’m not sure what that means, but the patent claims are directed to a mechanism for moving the head. US Pat. No. 11712796.

US Pat. No. 11712796.

August 1, 2023:

The USPTO required inventors to submit 12”x12” mini-models of their inventions until 1880. Printing and cloth-making were a big deal. This oddly cute silk-spinning machine reduced thread waste when the thread broke.