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.

Monday, December 2, 2019

Audi's Snow and Ice Obstacle Avoidance Patent Application Gets Stuck atthe USPTO

December 02, 2019

In order to enjoy outdoor activities, sometimes you need to drive your vehicle through some difficult terrain. And while driver-less cars are still not quite here, Audi has developed some driver assistance tools to help navigate the vehicle by determining a friction coefficient of a surface navigable area to maneuver the vehicle away from non-navigable areas. The non-navigable areas address not only road friction, but also obstacles that may be present on the road. Audi filed a US patent application on the concept in 2015, but had to face numerous “obviousness” rejections. An appeal was eventually taken and the decision was just issued by the USPTO Patent Trial and Appeal Board (PTAB).
Audi claimed that their approach was inventive because it was able to exclude portion of the road that the vehicle was allowed to navigate using its unique approach. The appeals judges disagreed, and pointed out one of the main problems with Audi’s position was that the Audi did not explain why someone could not simply follow the combination of references set forth by the Examiner. From the appeal decision, the PTAB explains:
The ordinarily skilled artisan, being “a person of ordinary creativity, not an automaton,” would be able to fit the teachings of the cited references together like pieces of a puzzle to predictably result in a vehicle system determining the friction coefficient for a road surface to thereby steer the vehicle away from a detected insurmountable obstacle, as well as to maneuver the vehicle in conformance with the calculated coefficient for the navigable road surface. Id. at 420–21. Because Appellant has not demonstrated that the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art,” we agree with the Examiner that the proposed modification would have been within the purview of the ordinarily skilled artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Unfortunately it is common for examiners to find the various claimed elements in isolation, and then allege it would be obvious to combine them and reach the claimed solution. One way to rebut such arguments is for the patent application to explain some unique challenges addressed by the claimed combination, and to explain why one skilled in the art would have had difficulty following prior approaches. While Audi’s appeal brief tried to point out that the combination would not actually lead to the claimed elements, it did not specifically point out any challenge in doing so. Once the court found the cited references did actually possess each of the claimed elements, it was then easy for them to reach the final conclusion of obviousness.

Thursday, September 5, 2019

Makani : Utilizing Patent Filings As Strategy

September 05, 2019

Makani is developing some very interesting technology - power generating kites. They are also utilizing patent filings as an integral part of their strategy to protect and grow their business. They were recently awarded US 10,379,546, which is part of a family of patent filings claiming priority back to a provision patent application (Ser. No. 62/260,246) filed Nov. 25, 2015. Makani is taking advantage of the continuation practice in the US, which is a key tool for early developers of technology to maximize their intellectual property position.
The ‘546 application claims an interesting control strategy for asynchronous flight pattern optimization of multiple kites coupled to a common ground station. The control system generates a respective flight path for each of the kites operating in crosswind flight, where each kite generates electrical energy over time in a periodic profile out of phase with respect to the other kite.
FIG. 3B, reproduced below, from the patent application illustrates an example of a kite transitioning from hover flight to crosswind flight. As explained in the patent application, the asynchronous flight pattern may be determined such that the power profile of each kite is out of phase with respect to the power profile of the other kite so that the peak cumulative power flow into the ground power unit may be decreased, and the cumulative power profile may be substantially regular.

Whether we will see power generation farms using these amazing kites is still “up in the air”, but it is great to see such an innovative company taking advantage of strategic patent filings.

Wednesday, August 28, 2019

Why do words you think are clear become unclear in patent law?

August 28, 2019
Engineers understand that words have meanings. But as engineers, seeing the world through eyes that appreciate order and use context to derive clarity of meaning, the word games played by patent examiners can be frustrating.
Colt recently was forced to appeal examiner rejections based on word games that occur with surprising frequency at the US Patent Office. One of Colt’s patent applications was for systems and methods of providing information between one or more different battlefield participants. Specifically, the invention provided a sensor pack coupled to the at least one rifle accessory carrier that included a first sensor for determining a bearing of the rifle, a second sensor for determining an acceleration of the rifle and a rate gyroscope.
The patent examiner used a classic word-game approach where they take words out of context, re-interpret them using generic definitions of the terms to means something much more generic than in reality, and then reject the application using that overly-broad interpretation. Here, the patent examiner asserted that the prior art reference having an inclinometer was capable of use for determining a bearing of a rifle. While this is impractical from an engineering point of view, the examiner reasoned that "a bearing sensor is something that determines a direction[,] and an inclinometer broadly and reasonably determines a direction."
Of course this was nonsense, but Colt was forced through a years-long appeal. Colt argued that "a bearing sensor must measure a direction. This is DIFFERENT than an inclination. In short, teaching an inclinometer does not teach the claimed bearing sensor." Colt cited Merriam-Webster dictionary that defines an inclinometer as 'an instrument for indicating the inclination to the horizontal of an axis' and defines a bearing as 'the situation or horizontal direction of one point with respect to another or to the compass" (citing This was on top of the situation where Colt’s own application made clear that the example of its sensor 220 was merely one capable of determining a bearing of firearm such as a compass or part of a GPS device. At no time did Colt argue that their bearing sensor was so broad as to include an inclinometer.
The Board summarized the situation as follows:
Even assuming, arguendo, that an inclinometer is something that determines a direction in a very broad sense (i.e., inclination being a direction in a vertical plane), we are not convinced that one of ordinary skill in the art would consider Lupher's inclinometer 750 a sensor for determining a bearing (i.e., a direction in a horizontal plane, such as determined by a compass). In other words, finding a sensor that simply determines "a direction" is not sufficient; the claim does not recite merely a "direction sensor." Moreover, the Examiner does not point to any evidence of record to support the position that Lupher's inclinometer 750 and/or other motion detection circuitry 756 would be capable of determining a bearing. See Final Act. 3; Ans. 9.
In short, the Examiner's interpretation of the disputed "sensor for determining a bearing," recited in claims 12 and 16, as reading on Lupher's inclinometer 750 and/or other motion detection circuitry 756 is unreasonably broad, such that the rejection based upon this claim construction is in error. In particular, the Examiner has not established a finding supported by a preponderance of the evidence that Lupher, as relied upon in the rejection presented, discloses this disputed limitation.
While Colt was successful on this argument, it took great effort to persist and Colt ultimately lost their appeal on other grounds - as the examiner only needs to win one argument to sustain a rejection, even if they have numerous other improper rejection. The case was Serial No. 14/998,214.


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.