12:01 Tuesday

Pruning Priority to Prolong the Patent

"The examiner is utterly confused about the lineage of this application..."

Thus begins the intriguing prosecution history of a patent that issued on Tuesday.  (Yes, even three feet of snow and the PTO being shut down could not stop the weekly arrivals of issued patents.)

Here are the basics:

U.S. Patent No. 7,658,935  Methods and compositions for stimulating the immune system Inventor: Samuel Bogoch Filed: May 15, 2001 Lineage as filed (and published in U.S. Pub. 2002/0045187): This application is a Continuation-in-Part of my application Ser. No. 07/744,649 filed Aug. 8, 1991, and the prior applications of which it is in turn a continuation-in-part, Ser. Nos. 941,940, 852,200, 621,112, 553,075, 550,432, 450,404, 385,451, and 922,799, which should be incorporated by reference in the present application.  Lineage as issued: This application is a continuation of and claims priority to application Ser. No. 08/031,562, filed Mar. 16, 1993; which is a continuation-in-part of application Ser. No. 07/744,649, filed Aug. 8, 1991, abandoned, to which the instant application also claims priority.              Application Ser. No. 07/744,649 is a continuation of application Ser. No. 07/227,621, filed Aug. 3, 1988, abandoned; which is a continuation of application Ser. No. 06/281,883, filed Jul. 9, 1981, now U.S. Pat. No. 4,976,957; which is a continuation-in-part of application Ser. No. 05/922,799, filed Jul. 7, 1978, now U.S. Pat. No. 4,298,590, and application Ser. No. 06/019,078, filed Mar. 9, 1979, abandoned; application Ser. No. 06/019,078 is a continuation-in-part of application Ser. No. 05/941,940, filed Sep. 13, 1978, abandoned; which is a continuation of application Ser. No. 05/852,200, filed Nov. 17, 1977, now U.S. Pat. No. 4,196,186; which is a continuation of application Ser. No. 04/621,112, filed Oct. 9, 1975, abandoned; which is a continuation-in-part of each of application Ser. No. 04/553,075, filed Feb. 25, 1975, abandoned, application Ser. No. 04/550,432, filed Feb. 18, 1975, abandoned, application Ser. No. 04/450,404, filed Mar. 12, 1974, abandoned, and application Ser. No. 04/385,451, filed Aug. 3, 1973, abandoned. All applications listed above are incorporated herein by reference.

Commentary: If you blinked while reading that, you may have missed an important grammatical mark: the period (emphasized with added space above) ending the first sentence and showing that this patent claims priority ONLY to the '562 application and the '649 application, and NOT to any of the other eleven applications listed there.  And if you've read this blog in the past few weeks, you know immediately why that matters: if the priority chain had not been severed, this patent would have have had an expiration date of August 1993, which is almost eight years before it was even filed. Instead, this patent has over a year of life, plus some extra time for PTO delays. Good move.

Of course, there's more to the story.  By cutting the chain, all the previous links theoretically become available as prior art under 102. Why only in theory?  Because the first severed-off application ("621) was abandoned and unpublished -- and thus is unavailable as a 102(b) reference.  And the '621's parent, which blossomed into the '957 patent, issued in December 1990 -- less than one year prior to the August 1991 priority date of this week's patent. (Surprisingly, the Applicant did not raise the unavailability of the '957 patent when it was cited in a 102(b) rejection along the way, instead choosing to argue on the merits.) And 102(e) does not apply since the inventive entity is the same (not "by another").  In other words, a reference filed twenty years earlier (July 1981) and not in the priority chain is unavailable as prior art. To this, my brother would say, "Only in America. (or was that Don King...)"

But wait.. there's more.  Late in the prosecution, the Applicant was hit with a 112 written description rejection.  The response?  Amend the specification to import language from the grandparent '649 application, thus giving the needed support to the claims. On the surface, that seems fine -- the '649 application is in the priority chain, after all, and it was incorporated by reference. [Note, however, that as of October 2004, such an incorporation of "essential" material from an unpublished application is not proper. 37 CFR 1.57(c).] The peculiarity here, however, is that the '649 application and the '957 patent--not in the priority chain--essentially share the same specification.

Talk about having your cake and eating it. In beating back the 112 rejection, the Applicant relied on language from a twenty-year old document to provide support for his claims; yet the Applicant distanced himself from that same document in order to avoid early expiration.

And it all appears to be legit. Fascinating.

BPAI Announces April Conference

Though the USPTO is closed for Snowmageddon and no new BPAI decisions are being posted today, apparently the website controllers were able to flip the switch recently to announce the First Annual Board Conference. The conference has been billed as "A comprehensive conference, providing insight and analysis, from filing an appeal brief, through the U.S. Court of Appeals for the Federal Circuit’s view on the role of the Board in the development and advancement of the patent system."

In addition to various sessions with judges of the Board, the conference will feature a panel discussion with Chief Judge Michel and Judge Rader of the Federal Circuit, and a luncheon speech from Director Kappos.

This sounds like it could be an excellent event.

Patent Issues, Sees Shadow, Crawls Back to PTO

So what are the odds that only the 23rd patent granted to a Punxsutawney inventor in the last 35 years just so happens to issue on Groundhog Day?

Coincidence? You decide.

Could it be that Mr. Manners is trying to upstage Phil on his big day?

Conspiracy theorists, chime in, please.

U.S. Patent No. 7,655,109  Floor covering lifting and removal hand tool Inventor: Herbert C. Manners, Punxsutawney, Pennsylvania Issued: February 2, 2010

Patent of the Week: Condom Valve

Was it only this past September that we discovered this gem (see list at bottom of page) among several pro se patent applications by a Hawaiian doctor? Appropriate for today, I'm feeling a bit like Bill Murray in Groundhog Day:

U.S. Patent No. 7,654,265  Condom valve Inventor: Attila Mady Issued: February 2, 2010 1. A condom having a valved geometry, said condom comprising a first layer and a second layer of a material that is capable of providing a barrier to the passage of bodily fluids, microorganisms and viruses, with said first layer and second layer configured in an overlapping fashion to form a plicated membrane valve at a distal portion of the condom, with said first and second layers further configured such that they are tightly apposed to the glans penis, with said condom further including a reservoir for retaining ejaculate at a distal tip of the condom, and wherein said plicated membrane valve is configured such that the aforesaid first and second layers may separate and the membrane valve may open under pressure provided from the urethra to transmit ejaculate therefrom, permitting emission of semen from the reservoir to an area outside of the confines of the condom in the region corresponding to and physically approximated to the introitus of the urethra, to prevent build-up of fluid at the tip of said condom and to permit impregnation of the female partner engaged in sexual intercourse.

Ah, yes. How could we forget this invention, the SkyDome of contraception. Its purpose is "..to permit re-use with the same partner, or to...permit conception...while retaining...barrier type infection control."

I won't post all the details here (you're welcome), but it is worth reading the specification for entertainment (example: this is probably the first patent to use the words "surgically affixed", "Crazy Glue", "condom" and "shaft" in the same sentence. Ouch.)

You have to admire the patience of the examiner, though. Consider this snippet from the first of four interview summaries:

Applicant notified examiner of his displeasure stemming from his experience during prosecution of a different pending utility application. Examiner alerted applicant that he was not the examiner of record in the other pending application. Applicant maintained that his experience thus far with the PTO may be due to his lack of representation by an attorney. Examiner informed applicant that it is his intention to assist applicant throughout prosecution. Applicant maintained that examiner's rejections based on the prior art...were spurious.

Really?? An attorney might help? Ya' think? And recall that this is the inventor who actually did hire an attorney for a quick hit to respond to a messy 112 rejection in his previous patent...only to revoke the POA shortly thereafter.

We'll keep an eye out for more of Dr. Mady's patents in the future. Fun stuff.