12:01 Tuesday

My hut's better than your hut: Patenting the Sukkah

It's been over two weeks since my last post -- a long hiatus for 12:01.  The lag is partly attributable to workplace demands and converging deadlines.  While blogging is fun and often related to my work, it doesn't extinguish client fires.  And, of course, it's not billable.  Such is the life of the lawyer-blogger.

But another factor in my delay is the passing of several Jewish holidays in recent weeks.  Rosh Hashana and Yom Kippur get plenty of press.  Less so, the holiday ending this weekend: Sukkot (aka "Feast of Tabernacles"). And, of importance to this blog, Sukkot is the holiday for Jewish patent attorneys.

Why?  Because Jewish law (halacha) requires that one build a temporary dwelling -- a sukkah -- for the holiday of Sukkot.  And it's not just "custom" to build some general kind of hut:  there are particular requirements of what constitutes a legal sukkah: height, roof materials, walls, etc.  An entire chapter of a Babylonian Talmud tractate is devoted to the subject.

While there are definite rules for a kosher sukkah, there is also a tremendous amount of creative space in which to satisfy those rules.  Thus, Sukkot gives the opportunity to design and build -- and that means the opportunity to innovate.  For example, my sukkah is recessed in a garden level patio, with a frame made of 2 inch PVC pipe (inspired by Tinkertoys), and each year I try to make one improvement, Jepson style.  I've also heard of more than one geodesic dome sukkah.  And of course, there are a variety of pre-fab sukkah kits.

I've noted past examples of religiously oriented patents.  But most of those patents are tangential to the performance of a ritual, and thus do not claim aspects central to the ritual act itself (e.g., the Rakat counter, the Christmas tree stand (issued this week), or the novelty Shofar alarm clock).  But when the required ritual is actually to BUILD a structure... well, for me it's like being commanded to play with Legos.

There are at least seven issued patents on inventions contemplating embodiments clearly relating to a sukkah:

7,017,311 Panel for modular construction

6,024,153 Retractable Sukkah awning

5,884,647 Folding structure

5,638,645 Skyhatch

4,677,797 Knockdown housing structure

4,676,039 Quick assembly and knockdown building structure

4,584,801 Temporary building structure

 

Two others are intriguing because on their face they appear to be directed to self-erecting tents: 5,645,096 and 5,407,291.  But these patents mark the instructions and website for a "popup" sukkah.  Takes a matter of seconds to assemble.  Cool.

As with any patent for religious rituals, you have to question just how big the market really is, and if it is worthwhile to pursue patent protection.  But for bragging rights in the synagogue, it's tough to beat "My sukkah is patented -- is yours?"

Contest: Longest claim ever?

Last week the PatentlyO blog ran a guest post by Stephen Schott arguing for a repeal of the "single sentence" rule.  Schott alluded to the existence of at least one patent claim consisting of "a 250 word sentence [that] would drive even Proust to distraction."

IBM today was issued U.S. Patent No. 7,593,860.  The patent contains four independent claims, the shortest of which contains 1,019 words.  Here is the longest, weighing in at 1,053.  (And we can leave the Bilski discussion alone for now.)

Can you find any patents with longer claims?  Submit your entry by 12:01 a.m., Friday, September 25.  Appropriate prize to be determined (initial thoughts: a copy of any Faulkner novel; an audio of a Joe Biden speech; a recording of Wagner's Ring Cycle... you get the idea.)

U.S. Patent No. 7,593,860 Career analysis method and system Assignee: IBM 31. A process for integrating computing infrastructure, comprising integrating computer-readable code into a computer system, wherein the computer system comprises a computer readable medium, wherein said computer usable medium comprises job related data, wherein said job related data comprises a first specified job title and a first list comprising a first plurality of required skills for said first specified job title, wherein said job related data further comprising a plurality of additional job titles, and wherein the code in combination with the computer system is capable of performing a method comprising:  receiving by said computing system, job candidate data, said job candidate data comprising a job candidate and a second list comprising a second plurality of required skills related to a current job held by said job candidate, wherein said current job held by said candidate differs from a job associated with said specified job title;  receiving, by said computing system, first job market data, wherein said first job market data comprises first internal market data and first external market data, wherein said first internal market data comprises first capacity planning data associated with an entity and first workforce management data associated with said entity, and wherein said entity is associated with said first specified job title;  storing within said computer readable medium, said job candidate data and said first job market data;  comparing, said first plurality of required skills with said second plurality of required skills to determine a first set of common skills between said first plurality of required skills and said second plurality of skills;  applying, by said career analysis tool, a first set of weighting factors to said first set of common skills, wherein each weighting factor of said first set of weighting factors is applied to an associated common skill of said first set of common skills based on a predetermined relative importance for each said associated common skill with respect to said first specified job title;  calculating, by said career analysis tool, a first score for said candidate by dividing the number of said first set of common skills by the number of said first plurality of required skills;  comparing by said career analysis tool, said first job market data with said first plurality of required skills to determine a first set of market valued skills from said first plurality of required skills, wherein said first set of market valued skills indicate a first group of critical market place skills required to perform a specified job associated with said first specified job title, wherein said first group of critical market place skills are linked with first business unit skills associated with achieving first business priorities comprising growth in revenue and innovation, and wherein said first group of critical market place skills are aligned with a first specified market direction and a first specified business strategy for said entity;  reviewing, by said career analysis tool after a specified time period, said first set of market valued skills;  determining, by said career analysis tool based on results of said reviewing said first set of market valued skills, that said first set of market valued skills are outdated;  receiving, by said computing system in response to said determining that said first set of market valued skills are outdated, second updated job market data, wherein said second, job market data comprises second internal market data and second external market data, and wherein said second internal market data comprises second capacity planning data associated with said entity and second workforce management data associated with said entity;  storing within said computer readable medium, said second updated job market data;  comparing by said career analysis tool, said second updated job market data with said first plurality of required skills to determine a second set of market valued skills from said first plurality of required skills, wherein said second set of market valued skills differ from said first set of market valued skills, wherein said second set of market valued skills indicate a second group of critical market place skills required to perform said specified job associated with said first specified job title, wherein said second group of critical market place skills are linked with second business unit skills associated with achieving second business priorities comprising growth in revenue and innovation, and wherein said second group of critical market place skills are aligned with a second specified market direction and a second specified business strategy for said entity;  applying, by said career analysis tool, a second set of weighting factors to said second set of market valued skills, wherein each weighting factor of said second set of weighting factors is applied to an associated market valued skill of said second set of market valued skills based on a an amount of time that each said associated market valued skill has been determined to be a market valued skill;  calculating by said career analysis tool, a second score for said job candidate by dividing the number of said second set of market valued skills by the number of said first plurality of required skills;  comparing by said career analysis tool, said first score to a first numerical value;  comparing by said career analysis tool, said second score to a second numerical value;  comparing by said career analysis tool, said first plurality of required skills with said second plurality of required skills to determine a set of required skills of said second plurality of required skills that are not comprised by said first plurality of required skills;  generating by said career analysis tool, a training program for said job candidate to obtain training associated with said set of required skills;  determining by said career analysis tool, results of said comparing said first score to said first numerical value and said comparing said second score to said second numerical value;  determining by said career analysis tool based on said results, that a first analysis score for said job candidate in relation to said first specified job title will be calculated;  calculating by said career analysis tool, said first analysis score, wherein said calculating said first analysis score comprises adding said first score to said second score;  comparing said first analysis score to a first predetermined value; and  performing an action for said job candidate based on results of said comparing said first analysis score to said first predetermined value.

The Onion Gets a Patent

No, not that Onion.  But by the time you finish reading this post (and you really should finish reading this post), you'll have to wonder...

Timed perfectly to coincide with today's Federal Circuit decision in Prometheus Labs v. Mayo Clinic, the following patent issued yesterday. Here's claim 1:

U.S. Patent No. 7,588,784 Use of onion extracts to prevent and treat acute and chronic cardiac and vascular complications and their sequelae, as well as to resolve hematomas Inventors: Attila Mady & Juliana Mady 1.  A method of treating hematomas comprising the steps of:     providing an extract of onion (Allium cepa); and     topically applying the onion extract to or proximate an area of a hematoma, for transdermal delivery to increase and accelerate hematoma resorption.

Commentary: If the CAFC is correct that "[C]laims to methods of treatment...are always transformative when a defined group of drugs is administered to the body to ameliorate the effects of an undesired condition."  then there's no Bilski problem (assuming onion extract is a defined group of drugs).

Of course, there may be other 101 problems, like utility. For instance, in looking at the healing effects of onions, here's what the inventors said:

Onions are even more ignored [than garlic]. Used in multiple cultures worldwide as a blood thinner and "cardiac tonic", there has nevertheless been very little research regarding its composition and effects. Yet there is not only overwhelming evidence that the onion contains compounds that have a profound impact on the entirety of hemostasis (including platelet function and the coagulation cascade), but this evidence is obvious and easily demonstrable in standard platelet and coagulation assays.
...
However, the most obvious and dramatic effect of onions is on thrombolysis. Topical application of sufficient amounts of onion juice to a site anywhere approximate to a hematoma (and at sufficiently frequent intervals, approximately every 6 hours) will result in the absorption of said hematoma even days after the formation of this hematoma. Even more remarkably, re-absorption shall occur at sites where there is NEVER reabsorption without surgical drainage, such as sub-periosteal pretibial and olecranon hematomas. Due to the absence of blood flow in these areas, an incision and drainage are always necessary to prevent the progression to fibrosis and the development of permanent tissue deformity.

Hematoma resorption does not only occur in places where it never would under spontaneous circumstances, but is also accelerated, meaning absorption occurs more rapidly (approximately 5-7 times faster than without onion juice). Hematoma resorption is also more complete, reducing the incidence of residual hemosiderin deposition. Finally, hematoma resorption will occur long after it would on a spontaneous basis, up to a week after the initial injury. There is no other thrombolytic known that works beyond approximately 12 hours after initial clot formation.
...
Further, there is also one report that attributes direct anti-arrhythmic effects to garlic (WO9405307). If this is true, it would be logical to assume that onions would also be likely to possess these properties, since onion juice is vastly more active in terms of its impact on the hemostatic mechanism than garlic. This antiarrhythmic property, however, is only conjecture at this point.

There are no citations to documented research or empirical evidence to back up most of these statements, however.  Is the utility of the claimed invention "credible" to a person of ordinary skill in the art? (MPEP 2107) (This is an honest question...I'm no POSITA here.)

Other interesting notes:

• Did you suspect this was a pro se inventor?  Look at the originally filed claims on PAIR to remove all doubt.  Actually, when the 112-ridden first office action came back, the inventor wisely hired an attorney to clean up the claims into a meaningful form.  And then promptly revoked the POA to continue pro se.  Nice.

• Practice Tip #1: When filing an Accelerated Examination application, be sure not to have any missing parts.  That's fatal.  (Here, the wait was not much longer, with a first office action coming just seven months after filing.  The applicant owed $420 for four extra independent "claims".)

• Practice Tip #2: If you are going to have a "Background" section, try to keep it SHORTER than the rest of the specification.  Remember that the Background is the one section that is not required by statute (i.e., 112) or rule (e.g., 1.71 - 1.75), yet it is the one section that is admitted prior art.  You do the math.

• Dr. Mady (yes, he is apparently an M.D.) is the named inventor on another patent, U.S. Patent No. 6,328,764 for a Primary axis prosthetic joint design.  That patent, unlike this one, contains figures.  But Dr. Mady happened to file nine other patent applications on the same day as the '784 patent. Check 'em out:

20090093856     High fidelity electronic tactile sensor and stimulator array, including sexual stimulus
20090093783     Use of vacuum suction in conjunction with diapers.
20090093782     Mask to compress face
20090092794     Turgor shaping. Control of shape and rigidity through the use of pressure transmitting channel patterns (hydraulic channel arrays).
20090092693     Platelet manipulation to prevent and treat endovascular disease and its sequelae, to prevent and treat arrhythmias and to prevent malignancy
20090090671     Apparatus to assist platelet manipulation to prevent and treat endovascular disease and its sequelae
20090090369     Condom Valve
20090090368     Adhesive condom and deployment
20090089934     Gradient bed

To answer the immediate questions:

1) the diaper vacuum appears to be aimed at elder care, not babies.

2) The condom valve has two uses: "to permit re-use with the same partner, or to permit the transmission of semen and thus permit conception as a result of intercourse while retaining the protective effect of barrier type infection control." Sort of like keeping the top down on the convertible when it's raining.

And according to Dr. Mady, "[C]ondoms are completely useless for the prevention of the transmission of the herpes virus. Hepatitis B, hepatitis C and even HIV are only partially prevented with condoms."  Not to get political, but is that the message we've been teaching in our kids' sex ed classes??

3) No, I don't expect Judge Posner to sit by designation as an examiner to weigh in on the obviousness of any of these inventions.

4) None of these other applications have yet been allowed.

Prime Patents for Amazon

There's no shortage of Amazon watchers who are quick to pounce on news of its patents and applications. So I'm guessing there will be at least some articles (probably a Slashdot posting) in the next day or so about three more issuances of the famed "one-click" variety. The patents are consecutively numbered and all appear to relate to Amazon's "Prime" subscription service. Here's claim 1 from the last of the three:

U.S. Patent No. 7,590,565 Method and apparatus for subscription-based shipping Assignee: Amazon Technologies, Inc. 1.  A computer-implemented method, comprising: an e-commerce site implemented on one or more computer devices receiving over a network input identifying a user; based on the input identifying the user, determining whether the user is a current subscriber to a subscription-based shipping program that provides a plurality of subscriber shipping options for each of at least some items offered on the e-commerce site for the duration of a subscription, wherein the plurality of subscriber shipping options are provided only to users of the e-commerce site that are currently subscribed to the subscription-based shipping program, and wherein the plurality of subscriber shipping options do not depend on a quantity of an item ordered; receiving over the network input specifying at least one of said at least some items that the user wants to order; and in response to determining that the user is a current subscriber to the subscription-based shipping program, generating an order for the specified at least one item directing the at least one item to be shipped to a location specified by the subscribed user according to one of the plurality of subscriber shipping options instead of a non-subscriber shipping option; wherein at least one of the plurality of subscriber shipping options provides shipping for the at least some items to the subscribed user for the duration of the subscription at no additional cost to the subscribed user beyond an initial cost of the subscription.

Commentary:  The prosecution histories of these patents are fairly unremarkable -- just one similar non-final rejection for each based on double-patenting and a 103 rejection (based on Overstock.com) that was easily overcome with a single round of amendment and argument (including a "one-click" argument for some of the other claims).  

And of course, there is no mention of 101 or Bilski by the examiner. Should there have been? The recitation of the "computer devices" seems to be tossed in there casually -- it's not referred to again in the claim. (In fact, it was added with the claim amendment.)  And the "network" limitation may not add much, either. I've seen -- and received -- plenty of 101 rejections for claims of a similar extra-solution activity or not particular ilk. In other words, take away that computer and network, and the method can be performed with no functional loss by hand.  (And can the generic "items" serve as Bilski-satisfying particular apparati?) 

Then again, I've argued for claims like these when it can be made clear that the method requires the use of a computer to achieve some true gain in functional capability, i.e., not merely a question of speeding up the method, but actually enabling it, where performing it manually simply could not be done. Not sure that's the case here, though.

Another note, and one you probably won't see on other blogs, pertains to Jeff Bezos being listed as an inventor here.  That's not so newsworthy, as Bezos is now an inventor on 38 Amazon patents.  Interestingly, on 14 of the first 16 of those patents, he is the first listed inventor; on the next 22, he's listed first on just six.  On today's three, he's listed last.

I often tell clients that there is absolutely no legal implication to the order in which inventors are listed on a patent's face, but that they should think about their company's internal politics when deciding who to list first.  So far, I've only had one instance where we actually had to change the order after it was filed (which is easy to do before the Declaration is filed, but very difficult to do after.  See MPEP 605.04(f)).  Typically, most clients will try to list first the lead inventor who, in their view, most deserves the recognition.  But just as some graduate students will always be listed second to their advisers on journal articles (not in my field, where alphabetical order ruled supreme), I'm sure that there are numerous patents out there listing a company executive first for what could be a minimally material contribution to the conception of the invention.

Assuming that Amazon acts normally in this regard, it would make sense that a company founder like Bezos would be involved heavily in the early inventions, while his role might tail off later as the company evolved.  On several of those first patents he is the sole inventor, in fact.

And just for comparison, Steve Jobs is listed as an inventor on 23 Apple utility patents, and is listed first on only 8 of them.  (But Jobs is also an inventor of 138 design patents.)

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Angiomax AE Patent and Other Tidbits

A few notes:

• Is the writing on the wall for Beauregard? In last week's post, I noted that the fate of CRM claims is uncertain in light of the Bilski decision.  In actuality, however, the Nuijten case may have more of a long term impact in view of current technology.  As an astute reader reminded me, many (most?) software developers now distribute their programs as downloads, rather than by physical media such as CD or DVD. Even Microsoft Office, for example, is available as a download.  Because Nuijten precludes patentability to such intangible "signals", it will take some creativity to find ways to claim these non-physical forms as apparati.


• Angiomax, ANDA and Accelerated Examination. Over at the America-Israel Patent Law blog, my brother, patent attorney Daniel Feigelson, writes of a fascinating tale behind the prosecution of U.S. Patent No. 7,582,787 to The Medicines Company, which issued last week and was promptly listed on the FDA Orange Book. Since Dan and I live at opposite ends of the patent world and the physical world (he's a chemist in Israel; I'm a computer guy in Chicago), I wouldn't have found this story on my own, but it has all the hallmarks of patents I'd otherwise write about on 12:01 Tuesday, including this discussion on the applicability of Accelerated Examination to pharmaceutical patents:

  [A]ccelerated examination requests have begun to find favor with certain applicants and in certain technologies, specifically technologies where a product can quickly be brought to market, tends to be most valuable shortly after being introduced to the market, and loses commercial value over time. This is generally not the case with pharma patents, where there usually isn’t even a product on the market at the time the first patents covering the putative product are issued. Actually, given the way patent term adjustments under 35 U.S.C. §154 are calculated (which operate without respect to §156), it may even be to a pharma patentee’s advantage to have the USPTO drag its feet during prosecution, so as to get adjusted patent term at the back end of the patent life, when every additional day of exclusivity can be worth tens of millions of dollars.

  In the present case, with Anigomax already being sold, and the expiration of TMC’s lone patent looming less than two years after the filing of the ‘553 application, it made sense to request accelerated examination. Until now, a generic drug company could have contented itself with filing an abbreviated new drug application (ANDA) that stated it would not sell its generic product until after the expiration of the ‘727 patent in March 2010, a so-called paragraph III certification. By having the ‘727 patent issue before the expiration of the ‘404 patent, and by immediately listing the ‘727 patent in the Orange Book, TMC has forced generic manufacturers to assess their products in view of the claims of the ‘727 patent.

• Water Slides. Having just come back from a nice excursion with the family that got me thinking as to the physics and inventiveness behind many of the attractions at the water park, I was pleased to find that someone had beaten me to the punch and already assembled a complete list of water slide patents.  It appears to be the work of Victor A. Canfield, a professor of pharmacology at Penn State. Go figure.

Happy Birthday, Beauregard

Twenty years ago tomorrow, U.S. Patent No. 4,864,492 issued to IBM for a “System and method for network configuration.”  On its face, nothing appears out of the ordinary with this patent.  However, lurking within its claims is this:

10. A computer program product having a computer readable medium having computer program logic recorded thereon for establishing a network configuration in accordance with a plurality of protocols of a network architecture, said computer program product comprising: means for incorporating the protocols of the network architecture into a table of rules; means for determining the validity of user input data with said table of rules; and means for feeding back to the user at least one of said rules in said table of rules if said user input is determined to be in valid.

 

And thus, the era of the “computer readable medium” claim was born (albeit with 112/6 "means for" language seldom seen in today's CRM claims).

For those unfamiliar with the “software arts,” here’s the nutshell on CRM claims: rather than simply claiming the method (i.e., the steps performed by a computer program) or a computer system (e.g., the hardware configuration that can be used for performing a computer program), the CRM claim essentially tries to protect the floppy disk (remember those?) or CD, DVD, flash drive, etc. on which the program is stored.  For practical purposes, these claims allow software companies, for example, to go after manufacturers of competing programs on theories of direct infringement—they made and sold infringing disks.  When software claims are limited to systems and methods performed via the end user’s computer, often only indirect infringement theories are available.  More importantly, it may be easier to demonstrate infringement by showing a sale of a disk than by finding an actual instance where method steps were performed.  And of course, that sale would still infringe the CRM claim even if the disk were taken to Mexico and the encoded method was actually performed there -- not so with a straight method claim.

The attorney who prosecuted the ’492 patent, the former Marilyn Smith (now Dawkins), also prosecuted a more famous patent for IBM, U.S. Patent No. 5,710,578 to Beauregard et al.  This patent’s prosecution, of course, went up to the CAFC on the question of the patentability of such CRM claims under Section 101.  In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).   As a result, CRM claims are often referred to as “Beauregard claims”. (Note, however, that that the Beauregard case was vacated, and its merits were thus never ruled upon by the CAFC.)  Interestingly, Dawkins apparently left IBM and now works for (John) Deere & Co. in Moline, Illinois.  But she co-authored a 1995 IDEA journal article on CRM claims that is loaded with examples and explanations.   Dawkins notes that there was an earlier patent, 4,853,962, that claimed the CRM as a multiple-dependent claim of a method:

10. An information storage device tangibly embodying a program comprising instructions adaptable for execution on a programmed machine, wherein the method of any one of claims 1-9 is performable through the execution of said instructions by the machine.

CRM claims are commonplace today.  How common, you ask?  Consider the following charts showing the history of CRM claim issuances, in absolute numbers as and as a percentage of total patents issued:

The upturn of the hockey stick in the later half of the 90's corresponds directly to the Beauregard case working its way up through the courts, casting more light on the claim format.  But it is almost certain that these charts undercount the actual number: there are many variants of language used in drafting CRM claims, e.g., “machine readable medium”, “computer readable storage medium”, etc.  And now, in light of In re Nuijten, you are seeing more tweaks to the standard language to make clear that the medium is limited to a physical storage device.  It is impossible to capture all these permutations with reasonable effort (using the public PTO database, anyway).

Growing even faster is the rate at which CRM claims are being filed, (note the gap in data sources beginning in 2001, when the PTO started publishing pending applications)::

The last data point shows that 5.5% of all applications filed in 2007 (that subsequently published) contained CRM claims.  That's a hefty percentage, but still far short of what we saw for Jepson claims in the early 1980's.

We can only guess how CRM claims will fare after the Supreme Court’s forthcoming decision on Bilski.  Already we have seen inconsistent results from the BPAI.  In Ex Parte Li, for example, the Board gave tremendous weight to Beauregard claims and found that they were outside Bilski’s purview.  Other panels, however, such as in Ex Parte Cornea-Hasegan, have found that CRM claims may just be exaltations of form over substance, and thus are subject to the Machine or Transformation test.

But until things are sorted out, a CRM claim will likely remain as standard ammunition in the software practitioner’s arsenal.

Patented: Formula for Computing Wind Chill

As if summer isn't closing down fast enough, this week gives us the issuance of the following patent, reminding us of what's around the corner.

U.S. Patent No. 7,578,615
Method and system for determining wind chill temperature
Inventors: Rashid A. Ahmad & Stanton Boraas

Commentary:

Mathematical Formula or Law of Nature?  Take your pick.  Not sure how this one (or its parent, U.S. Patent No. 7,481,576) got through -- this goes well beyond Bilski.  Is there any test under which this claim, as written, would not have a patentability problem?  Perhaps it is just that the "Circuits/Measuring & Testing" division of TC 2800 simply isn't tuned in to 101 issues... 

Other notes:

• First action allowance (also for parent)
• "This model...has been validated experimentally," says the specification.  Where?  Probably in the inventor's hometown of Talmoon, Minnesota, 47.6 degrees north of the equator.  
• Why don't they ever report the wind chill in the summer, when we'd really welcome it? ("It's ninety-seven degrees outside, but that breeze makes it feel like a balmy 89..")
  

A key is not a collar stay

Jason Bier and Josh Gutstein are Chicago lawyers.  They are also entrepreneurs.  Several years ago, when stayed collar dress shirts were once again gaining popularity in the men's fashion world, Bier and Gutstein found themselves facing a persistent problem: like socks, their stays (either one at a time or by pairs) would eventually disappear, usually due to inadvertently forgetting to remove them before laundry or dry cleaning.

So the two formed a new partnership in addition to their law firm, and invented the Stayclip, a keychain-like device which, when coupled with specially designed collar stays, keeps those stays organized and easily accessible. (And it works, too: I have purchased one for myself and given several as gifts -- though I'm not quite sure who the target market is for the $7,800 set of platinum stays, or the $595 designer shirts that expose the diamond studs and/or monograms.)  Bier and Gutstein also sought patent protection on several aspects of their creation, both for design and utility.

One of those patents finally issued today as U.S. Patent No. 7,578,034 after a long battle in the PTO.  The case is unremarkable but for an Examiner who insisted that this: 

 

was an anticipatory reference for this:

1. A device for storing at least one perforated collar stay comprising:

first and second arcuate members releasably engageable to form a closed loop, at least one arcuate member being pivotable; and 

a collar stay having a perforation, and an arcuate member extending through the perforation. 

It was, strangely, a 102 rejection--not 103 for obviousness.  So how did the Examiner say that the keyholder met the claimed limitation of "a collar stay having a perforation"?  Because "a key is capable of functioning as a collar stay.  For example, a long key having a small head portion such as taught by [other prior art] can be used as a collar stay."

This led to what may be the greatest piece of evidence ever submitted to the PTO: a Rule 132 declaration by Bier with this exhibit as support that "A key is not a collar stay," and that using a key as such would damage a shirt's collar.

The BPAI agreed last November: 

We acknowledge the Examiner’s argument that a key 9 is considered a collar stay, since a key is capable of functioning as a collar stay. The first part of the Examiner’s statement is simply erroneous. A key is not a collar stay. And the Examiner is in error for “considering” it so. The second premise is that a key is capable of functioning as a collar stay. This statement is amenable to proof, but the Examiner, who bears the burden of establishing anticipation by a preponderance of the evidence, has offered no proof for this assertion. Inasmuch as this assertion has been challenged on the record by the Appellants, it is incumbent on the part of the Examiner to offer more than a bare assertion that this is so. Since the Examiner has merely repeated his argument in more detail at page 11, we must conclude that this finding is based on speculation.

For their troubles, the patentees were awarded over 1,100 days of patent term extension due to to PTO delays. Congratulations, Josh & Jason.

More Bilski on the Brain

An interesting patent issued recently to Forest Hills, NY-based WaveSynch Technologies.  The startup bills itself as providing innovative uses for brain wave analysis, including identity confirmation, maintaining alertness, and matching employee attitudes to particular tasks or positions (though the day probably is not distant when a prospective employer might opt to use such techniques on a job candidate.  Wouldn't that be a fun interview?).  Notably, the company has adopted an aggressive intellectual property strategy.  But don't take my word for it; take it straight from the company's website:

WaveSynch Technologies has pursued a particularly aggressive IP strategy. At the end of 2008, the company filed the appropriate US Patent Applications through the Accelerated Examination and Issue program at the US Patent and Trademark Office. This recently implemented program requires a high level of due diligence to be performed as a prerequisite to program entry in order to insure the patentability and uniqueness of the invention. The incentive of the program is that a final decision is guaranteed to be delivered within 12 months of program entry, and the resulting patent is stronger and much less vulnerable to attack than patents issued through conventional channels. (emphasis added).

If only they had stopped short of that last sentence... Although the goal of the Accelerated Examination program is a final decision within 12 months, it's not a guarantee.  The PTO made this point clearly when it rolled out AE three years ago.  (Then again, I'm not aware of any cases where it's taken longer.)

The bigger problem, of course, is the second part of the sentence.  Last I checked, all patents were presumed valid, and clear & convincing evidence is needed in every case to overcome that presumption.  I'm not aware of any empirical results that would support that an AE patent is "stronger" than its traditionally prosecuted counterparts (in fact, some have argued it may be more susceptible to an inequitable conduct charge).  And as WaveSynch notes, the quid pro quo for the "high level of due diligence" required by the program is a more quickly examined application.  But it won't gold-plate your patent.

As you read claim 1, think about the Machine or Transformation test, and whether this claim is distinguishable (with respect to Bilski) from the truth-detector claim previously discussed on this blog:

U.S. Patent No. 7,574,254 Method for monitoring attentiveness and productivity in a subject Assignee: WaveSynch Technologies Application date: November 13, 2008; Issued: August 11, 2009 1. A method of determining whether a test subject is sufficiently alert to perform a predefined task comprising:  a) recording an electroencephalograph (EEG) over a period of time from the test subject using an EEG recording apparatus;  b) analyzing the frequency distribution of the wavebands recorded in the EEG; and  c) quantitating any ERN waveform in the EEG,  wherein presence in the EEG of both  (1) (a) an alpha waveband power component ratio of 0.5-1.0 and a theta waveband power component ratio of less than 0.5 or (b) a theta waveband power ratio of 0.5-1.0 and an alpha waveband power component ratio of less than 0.5; and  (2) one or more ERN waveforms recorded during the period of time  indicates that the test subject is not sufficiently alert to perform the predefined task, and wherein the presence of (1) but not (2), or (2) but not (1), indicates that the test subject is sufficiently alert to perform a predefined task.

Commentary: 

• Accelerated Examination
• First action allowance. 
• 101 never raised. 
• Possible machine: EEG recording apparatus. But this really is only used for collecting the data.  There's really no need for this apparatus for the steps of "analyzing" or "quantitating".
• Possible transformation: ?
• Terminally disclaimed due to double patenting rejection with U.S. Patent No. 7,570,991, an Accelerated Exam patent to WaveSynch that issued a week earlier -- also a first action allowance.

  Query: Do we think M-O-T is passed for these dependent claims?

13. The method of claim 1 wherein the ERN waveform(s) are detected in real time by performing a frequency transform of the EEG.  14. The method of claim 1, wherein each EEG recording is sequentially (a) amplified; (b) filtered through a 30 Hz low pass filter and a 0.3 Hz high pass filter; (c) converted from analog to digital; (d) subjected to a fast Fourier transform.

Patent of the Week: Fake Thong

For the plumber in us all.

U.S. Patent No. 7,574,752 Garment with Integral faux thong extension and associated method Inventor: Patrick Walters, Long Beach, CA 9. A method for covering an exposed portion of a user buttock crevice, said method comprising the steps of: a. providing a leg wear having a waist line formed along a top-most edge thereof, said leg wear including a lower torso buttocks covering garment provided with a crotch and leg portions respectively; b. providing and disposing a faux underwear garment along an interior surface of said leg wear such that a bottom-most end of said faux underwear garment is attached to said leg wear at a location below said waist line of said leg wear while a top-most end of said faux underwear garment is exposed above said waist line of said leg wear, said faux underwear garment being selected from a group including a faux g-string and a faux thong respectively; c. providing and engaging a first cord with said top-most end of said faux underwear garment such that a posterior section of said first cord remains abutted to said top-most end of said faux underwear garment, said first cord contiguously extending adjacent to an entire circumference of said waist line of said leg wear; d. adapting said leg wear to partially cover a user buttock in such a manner that said waist line of said leg wear is selectively situated below the exposed end of the user buttock crevice during use thereof; and e. automatically adapting said faux underwear garment between stretched and equilibrium positions when said waist line of said leg wear drops below and rises above the exposed end of the user buttock crevice respectively such that said faux underwear garment remains continuously positioned over the exposed end of the user buttock crevice while said waist line of said leg wear is selectively adapted below the exposed end of the user buttock crevice respectively; wherein said posterior section of said first cord remains abutted to said top-most end of said faux underwear garment as said faux underwear garment is adapted between the stretched and equilibrium positions.

Commentary: No Accelerated Examination needed here.  Just a very helpful examiner (female, if that matters) with some 112 issues. Thirteen months later, voila.  Interesting that it was filed with a non-publication request; I'd think the European or South American market might be strong for this invention.  And the first eight claims are apparatus claims, as you might expect.

Patent of the week?  More like Patent of the Rear.  (Commenters, you may now insert your own jokes...)

U.S. Patent No. 7,574,752 Garment with Integral faux thong extension and associated method Inventor: Patrick Walters, Long Beach, CA 9. A method for covering an exposed portion of a user buttock crevice, said method comprising the steps of: a. providing a leg wear having a waist line formed along a top-most edge thereof, said leg wear including a lower torso buttocks covering garment provided with a crotch and leg portions respectively; b. providing and disposing a faux underwear garment along an interior surface of said leg wear such that a bottom-most end of said faux underwear garment is attached to said leg wear at a location below said waist line of said leg wear while a top-most end of said faux underwear garment is exposed above said waist line of said leg wear, said faux underwear garment being selected from a group including a faux g-string and a faux thong respectively; c. providing and engaging a first cord with said top-most end of said faux underwear garment such that a posterior section of said first cord remains abutted to said top-most end of said faux underwear garment, said first cord contiguously extending adjacent to an entire circumference of said waist line of said leg wear; d. adapting said leg wear to partially cover a user buttock in such a manner that said waist line of said leg wear is selectively situated below the exposed end of the user buttock crevice during use thereof; and e. automatically adapting said faux underwear garment between stretched and equilibrium positions when said waist line of said leg wear drops below and rises above the exposed end of the user buttock crevice respectively such that said faux underwear garment remains continuously positioned over the exposed end of the user buttock crevice while said waist line of said leg wear is selectively adapted below the exposed end of the user buttock crevice respectively; wherein said posterior section of said first cord remains abutted to said top-most end of said faux underwear garment as said faux underwear garment is adapted between the stretched and equilibrium positions.

Commentary: No Accelerated Examination needed here.  Just a very helpful examiner (female, if that matters) with some 112 issues. Thirteen months later, voila.  Interesting that it was filed with a non-publication request; I'd think the European or South American market might be strong for this invention.  And the first eight claims are apparatus claims, as you might expect.

Patent of the week?  More like Patent of the Rear.  (Commenters, you may now insert your own jokes...)