Wednesday, January 5, 2022


January 05, 2022

The Wildlife Research Center ( (WRC) is all about giving you the right scent to attract wildlife. And their president, known for developing new products, along with several others, developed an improved liquid scent dispenser. The inventors were dealing with the need for a temperature regulated, pressure activated scent dispenser equipped to hold and dispense greater volumes of liquid scent than preexisting dispensers, yet that can also be calibrated to achieve a desired output of liquid scent. Their invention, shown in the figure below, was set forth in claim 1 as follows:

1. A temperature-regulated liquid scent dispenser comprising:
a container defining an interior container volume housing a liquid scent, and a container opening at a first end of the container;
an attachment component engaged, at a first attachment opening at a first end of the attachment component, with the container opening, the attachment component removable from the container and further defining a second attachment opening at a second end of the attachment component opposite the first end and an interior volume housing an amount of air, wherein the attachment component is configured to receive the liquid scent displaced from the container volume through the first attachment opening upon an expansion of pressure of air within the attachment component caused by an increase in temperature; and
a cap inserted within a recess defined by the second attachment opening, the cap defining an internal volume configured to receive the liquid scent from the interior volume of the attachment component, the cap defining at least one scent dispense tube, the scent dispense tube in fluid communication with the interior container volume and defining an internal entrance and a scent release orifice, the internal entrance configured to receive liquid scent that overflows from the interior volume defined by the cap, and the scent release orifice configured to dispense the liquid scent from the liquid scent dispenser.

Unfortunately for WRC, the examiner took issue with their invention, particularly the bolded language above. As explained in the patent application, that particular feature of the invention enabled the regulated dispensing of the scent in a way that improved scent delivery rate and timing.

First, the examiner asserted that the “configured to” language was not a limitation at all. It is common for examiners to consider such functional limitations in structural claims as something they can just ignore. However, while it may be true that the prior art merely must show a structure capable of performing the claimed function, as the PTAB confirmed, “it does not follow that such language fails to constitute an affirmative limitation.” This black letter law proposition may seem simple but many examiners ignore “configured to” language completely rather than following the proper rule that such language constitutes an affirmative recitation that describes an element functionally, as opposed to structurally. Here, the examiner took this view likely because the prior art cited in the rejection did not have such a function.

Second, the examiner also quested whether the device really worked as described. According to the examiner, such questioning made it proper to reinterpret the claim language “expansion of pressure of air within the attachment component” to mean “expansion of pressure of air within the container.” Again, the examiner was likely taking this view because it enabled an easier rejection. However, it is not proper to re-draft explicit claim language to mean something different from what it explicitly states. While an examiner may take some liberties in interpreting language that is open to different meanings based on statements in the specification, here the examiner was essentially redefining a claim term to mean something else that is contrary to its ordinary meaning. As explained by the Board, “the fact that the Examiner has a technical or factual basis to question whether Appellant’s invention actually operates in the manner claimed is not a proper justification to re-write Appellant’s claim.”

In the end, WRC was successful in challenging these improper examiner rejections at the PTAB and has now obtained a Notice of Allowance. The case is Appeal 2021-000990, Application 15/446,868.

Thursday, August 5, 2021

Cabella’s Backpack External Frame Patent Application Comes Up Short

August 05, 2021

Abstract: The double-edged sword of broadening language in a patent application – make sure your IP practitioner uses broadening language in a strategic way that comports with the technical field and the invention. 

Cabella filed a patent application (14/818,154) for an improved external frame design for a backpack.  The new design purportedly enabled a lighter frame that was still comfortable and enabled a wide variety and sized of packs to be used.  FIG. 1 from the patent application below illustrates an embodiment of the invention.

Claim 1 of Cabella’s application is sert forth below:

A backpack, comprising:

a shoulder strap assembly including a right shoulder strap and a left shoulder strap;

 a hip belt; and 

 a frame, the frame comprising:

an upper cross member having a first end and a second end and wherein the shoulder strap assembly is coupled to the upper cross member, a lower cross member offset vertically from the  upper cross member and having a third end and a fourth end,

a first rail set having a first rail and a second rail, the first rail being fixed to the upper cross member at the first end and the lower cross member inwards of the third end, the second rail fixed to the upper cross member inwards from the first end and the lower cross member at the third end, and the first rail and the second rail abut and are not fixed to one another along a portion vertically between the upper cross

member and the lower cross member, and

a second rail set having a third rail and a fourth rail, the third rail being fixed to the upper cross member at the second end and the lower cross member inwards of the fourth end between a point of connection of the first rail to the lower cross member and the fourth end of the lower cross member, the fourth rail fixed to the upper cross member inwards from the second end between a point of connection of the second rail

to the upper cross member and the second end of the upper cross member and the lower cross member at the fourth end, and the third rail and the fourth rail abut and are not fixed to one another along a portion vertically between the upper cross member and the lower cross member, wherein the first rail set, including the first rail and the

second rail, and the second rail set, including the third rail and the fourth rail, are each disposed on opposite sides of a central longitudinal axis of the frame bisecting the frame when the frame is viewed from the front, such that the first rail set and the second rail set do not overlap with each other, 

wherein the frame, including the first rail set and the second rail set, comprises a frame material that provides structural support to the backpack, and

                wherein at least one of the first rail, the second rail, the third rail, and the fourth rail is hollow


One difference from the closest prior art document was that that the frame utilized right and left rail sets (24/26 and 28/30 respectively) coupled to the upper and lower cross members in a unique way, illustrated by FIGS. 5-7 below. 

The closes art (an old French patent, Asbjorn) showed an allegedly analogous strapping system (see FIGS. 1 and 2 below, which is the best available copy we could find). The US examiner asserted that Asbjorn’s items 2 and 17 as corresponding to Cabella’s recited rail sets. 

However, one problem for the examiner was that Asbjorn referred to item 2 as the frame, and item 17 as “reinforcing strips” that were “sewn to the material constituting the bag.”  In other words, even if the reinforcing strips would coupled together as recited in claim 1, it was clear that the reinforcing strips were not coupled with the frame but also with the bag. 

Cabella pressed on with the application arguing that the reinforcing strips wouldn’t be understood as a frame.  This approach has some appeal because Cabella’s invention was really all about an external frame design, and the whole point was to have a frame that could couple with different sized bags yet still be comfortable, etc. 

So what sunk Cabella’s application? Something that, upon initial drafting, seemed like an advantageous thing for the patent attorney to do – broaden the invention to cover both internal frames and external frames.  Cabella’s application attempted to do this with one sentence expansion, stating that a skilled person would appreciate that the recited frame “may instead be incorporated into an internal frame backpack.”

To be sure, it is important for patent practitioners to understand a client’s invention and broaden it as much as possible in view of the prior art.  However, when doing so, one must be careful to ensure that the broadening makes sense in the context of the technology and invention.  Here, simply asserting that an external backpack frame can also be incorporated into an internal frame, without more explanation as to what element, and how, enabled the US Patent Office to find that Cabella’s was being contradictory.  From the appeal decision:

Appellant disputes that Asbjorn’s reinforcing strips 17 comprise the recited frame material. See Appeal Br. 12–15; see also Reply Br. 2. Appellant points out that Asbjorn teaches that reinforcing strips 17 “are ‘sewn to the material constituting the bag . . . ,’” and as such “do not comprise ‘a frame material that provides’” the requisite support. Appeal Br.  13; see also Reply Br. 2 (a skilled person “would not understand the  reinforcing strips 17 in Asbjorn to be a frame”). However, despite these contentions concerning reinforcing strips 17 being sewn to the bag, paragraph 24 of Appellant’s Specification states that a skilled person would appreciate that the recited frame “may instead be incorporated into an internal frame backpack.” As such, Appellant’s Specification, unlike Appellant’s contentions above, acknowledges that the frame may actually be part of the bag. Thus, Appellant’s attempt to distinguish Asbjorn by noting that Asbjorn’s reinforcing strips are sewn to the bag is not persuasive of Examiner error when Appellant’s own Specification allows same.


Had the claims been amended to specify an external frame, Cabella’s arguments may have carried more weight.  However, with the claims being generic to a frame, and broadening language in the specification suggesting that the frame language was not limited to an external frame design, it was relatively easy for the USPTO to sustain the rejection. 

Tuesday, January 12, 2021

Know the Terminology

January 12, 2021
It is important that patent professionals understand terms of art when drafting and prosecuting applications. This is particularly true in the outdoors arena, where words that in the abstract may seem similar, in fact mean very different things.

Today we review a patent application (14/419,258) by Spartan Precision Equipment Ltd. The invention relates to a rest for supporting an object, and more particularly to a rest which is in use attached to an object, for example, a rifle.  Fig. 1 from the patent application shows the basic configuration that uses a magnetic coupling to enable smooth rotation as the rifle is rotated, thereby improving accuracy. 

Claim 66 is one of the example claims of the application:

66. A bi-pod rifle rest, comprising:

a rifle fixture which is in use attached to a rifle, wherein the rifle fixture comprises a stand coupling which includes a magnetic element for removable attachment of a rest stand; and

a rest stand for resting on a surface, wherein the rest stand comprises a support body, first and second legs which are supported by the support body and a rifle coupling which includes a magnetic element for removable attachment to the stand coupling on the rifle;

wherein the stand coupling and the rifle coupling each comprise circular or near-circular sections, which provide for smooth rotation of the rifle coupling in relation to the stand coupling around a vertical axis and allow for rotation of the rifle about a horizontal axis.

The invention was focused on a situation where the rest is attached to the rifle, yet still allows smooth rotation. This operation can be quite important in the field where, for example, a hunter is scanning the horizon.  Those who are active in these arts understand that an attachment here is something quite different than a mere support, which may provide a base for the firearm, but is not actually attached to the firearm. 

In rejecting claim 66, the Examiner found that a prior art walking stick had all of the claimed elements (Barker, pictured below).  However, the walking staff merely stated that it could be used to mount other mechanisms that could support a firearm.  The applicants argued that because the examiner was relying on Barker to actually teach the attachment, the examiner was incorrect.

In the end the Patent Office did not agree with the applicants, asserting that there was no real difference between supporting a rifle and attaching to it.  However, in the real world, such a difference can be substantial and relates to the inventive features the applicant was trying to protect. 

So, make sure that when trying to convince the Patent Office to allow your application that you provide sufficient evidence explaining the real difference in terminology as it would be understood by those skilled and well-versed in the technology and applications at issue. 

Friday, October 9, 2020

Overly-Speculative Rejections

October 09, 2020

here are many interrelated issues bound up on an obviousness determination. During patent prosecution, the examiner bears the initial burden of establishing the case of obviousness and it is the patent prosecutor’s job to knock down that case. Depending on the facts of any given case, the patent prosecutor must determine the best way to attack obviousness and convince the examiner to change their mind (or the PTAB to overrule the examiner). In a recent post, we discussed the balancing act of obviousness as one example approach. Today we discuss obviousness rejections based too heavily on speculation.

There is a fine line between improper speculation and proper technical reasoning (with rational underpinnings). The patent prosecutor needs to be able to understand where that line is drawn, particularly by the PTAB. In a recent case 15/835,285, we see a classic example of improper speculation by the examiner.

The invention relates to swim paddles (I only know what these are from having seen them used by my kids’ swim teams). Specifically, the invention addresses the problem of being able to keep ones hands properly positioned on the paddle while actively swimming. How? with shadows formed on the bottom of the pool showing the user’s handle and an outline formed by the paddle so that the swimmer can see how the hand is positioned. Specifically, the way in which this is achieved is by changing the opacity of the paddle in a particular way. The figure below is from the patent application and illustrates the concept.

Claim 1 on appeal is reproduced below:

1. A swim paddle system comprising:
a paddle that is substantially planar and rigid having a first side for receiving a hand of a swimmer and a second side opposing the first side with a plurality of through holes extending through the paddle from the first side to the second side, the first side having a palm region for receiving a palm of the hand and a peripheral region for receiving a thumb, an index finger, a middle finger, a ring finger, a little finger, and a wrist of the hand, the peripheral region being a region with an edge that defines the outermost extent of the paddle;
wherein at least a portion of the paddle is transparent to allow at least a portion of the hand to cast a shadow as light shines through the paddle; and
wherein at least a portion of the edge of the peripheral region has greater opacity than the at least a portion of the paddle that is transparent, the at least a portion of the edge of
the peripheral region being provided along the edge such that the shadow of the hand is framed by a shadow outline of the paddle as the light shines through the paddle.

The cited art (Rives) showed the swim paddle, but said nothing about different opacities. Rather, the examiner was convinced that the recited greater opacity and the particular location thereof were merely an obvious matter of preference to suit aesthetics. The examiner stated that any shadow of a user’s hand and a portion of a paddle edge that would be cast would be dependent on the particular color or combination of colors or any pattern of such colors or combination of such colors which would intrinsically affect transparency, translucency, and/or opacity for any portion or edge portion of such paddle, as well as the amount of light shining through the paddle. In other words, the Examiner concluded that the contrasting shadow feature of the claimed invention would have been obvious because people would put logos or colors on the paddle, and those things would inherently provide different opacities would would in turn create the claimed shadow.

One can see the attraction of this approach. It is probably obvious to add logos or coloring to paddles, and it is conceivable that at some point, such a logo might outline the user’s hand in a shadow. The problem, though, is that such reasoning is too speculative. There was simply no reason to think that an arbitrarily placed supplier logo, even one touching the edge of the paddle, would cast a shadow outline as in the claim. What was critical for the PTAB in this case was that the claim required the opacity to be such that the shadow of the hand is framed by a shadow outline of the paddle as the light shines through the paddle. This particular arrangement solved the problem facing the inventors and was not even recognized by the cited art.

The PTAB explained as follows (internal citations omitted):

We are not persuaded by the Examiner’s explanation and agree with the Appellant that the rejection is improperly based on a conclusory assertion that “a person would, on the basis of their personal preferences or selections,” arrive at the swim paddle as claimed. As the Appellant points out, “the Examiner provides no articulated rationale for why the particular arrangement of differing opacity and resulting shadows recited in the claims would have been obvious” based on the broad and general teachings in Rives. Although it may have been obvious in view of Rives for a person of ordinary skill to provide a transparent paddle with a team or supplier logos, and that a portion of the logo may wind up being adjacent, or contacting an edge of the paddle based on the Examiner’s asserted preference to suit aesthetics, it does not follow, and is highly speculative to conclude, that the shadow of such a logo would frame the shadow of the hand as required by the claims. As the Specification teaches and the Appellant argues, the claimed invention allows the swimmer to gauge positioning of his/her hand by the cast shadow. It is entirely speculative that such a result would be attained based on the general disclosure of Rives, and the reasoning set forth by the Examiner is insufficient to demonstrate obviousness.

So, do not let an overly-speculative rejection deter you. Make sure to point out when an examiner’s rejection relies too heavily on speculation that is not supported by the cited art.

Monday, May 18, 2020

Dispensing with the Formalities: Ex Parte Quayle Actions

May 18, 2020

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 closes prosecution on the merits of the application and sets a shortened statutory period of two months to overcome the objections (with extensions available for up to four additional months).

What types of formal matters might arise to trigger a Quayle action?  Two broad categories exist, and each are subject to unique considerations.

  •      Drawing, specification, and claim language objections.  Such objections are often overcome with simple amendments.  However, avoiding such rejections at the last stage of prosecution may be preempted by holistic and detail-oriented patent application drafting at the outset.  The last thing any client wants is a two-month delay and extra prosecution fees over a misplaced lead line.  By focusing on quality over quantity during the drafting process, a patent practitioner can ensure that a Notice of Allowance is received as promptly and inexpensively as possible.Of course, these objections are not always avoidable, as Examiners may have unpredictable standards of allowance or may misuse a Quayle action when an Examiner’s amendment would suffice.  For example, an Examiner may improperly issue a Quayle action to correct antecedent basis or a minor typographical error. 
  •        Claims directed to non-elected subject matter have not been canceled.  If a requirement for restriction/election has resulted in non-elected claims being withdrawn, the patent practitioner must cancel the withdrawn claims prior to allowance.  Though this appears to be an avoidable outcome (as the claims may simply be canceled upon election), strategic advantages exist to retaining withdrawn claims through prosecution.  Expensive prosecution of child filings may be avoided by pursuing a winnable petition while having allowable subject matter in your back pocket.  However, as discussed in this post, such a course of action may provide an additional opportunity for the Examiner to prolong prosecution with further rejections.

  Overall, receiving an Ex Parte Quayle action is a positive sign.  This means that your application is likely mere weeks from allowance.  However, knowing in advance how to most effectively utilize (or avoid) Quayle actions may ultimately generate more positive outcomes for your clients.

Monday, May 4, 2020

Star Wars and IP Strategy

May 04, 2020

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.
These licenses allow for companies to collaborate and use Star Wars branding as an extension of another brand. Columbia Sportswear release a limited run collaboration set in 2017 recreating three iconic coats worn by Commander Skywalker, Princess Leia, and Captain Solo in the 1980 film "Star Wars: The Empire Strikes Back."
A diverse portfolio  and a thought out strategy allows your brand to leverage the most out of their intellectual property.

Monday, January 13, 2020

Welcome to 2020, and Remember the Importance of Design Patents

January 13, 2020
I remember skiing when no one whore a helmet - now (thankfully) everyone wears a helmet, along with really cool goggles that blend right in to the helmet. The cool factor around wearing a helmet is as much about the helmet as it is the goggles. And outdoor companies are using design patents to protect their unique look.
Even in the short time of the new year, we already have new design patents on goggles issuing, including D872,168, which issued on Jan. 7, 2020.
As you can see, the applicant here is based in China but does not claim priority to any previous Chinese filing, indicating that the primary target market for the design is the US. What is novel about these goggles you ask? The answer is that the overall look/design apparently distinguished the cited art, which included citations to almost a hundred prior art references.
Design patents offer a path for specific, yet strong, protection for new designs and serve to keep competitors away from your unique design language.


Note that the views expressed herein do not represent the views of any law firm or client, and may not even represent the views of the author. This blog is NOT legal advice and is for informational purposes only. No attorney client relationship can be formed by reading this blog or using any of the information provided. The accuracy of the information provided has not been verified.