Monday, October 30, 2017

Prior Art Searching Before Developing Prototypes

As a patent professional working in a wide range of industries, I am drawn to the popular television show Shark Tank, where inventors pitch their latest technologies to a panel of investors.  Of course, a common question posed by the panel of investors is whether or not the inventor has acquired protection for their product or idea.  If the answer is yes, the inventor’s position is considerably strengthened, for obvious reasons, while a lack of intellectual property protection can send the inventors home without a deal.
Thus, in a recent episode I was surprised to learn that an inventor had acquired protection for a lock that opens via a fingerprint scan (FIG. 1).  Those of us who use a lock as part of our outdoor activities know that carrying a key is often a pain, as is remembering combinations, which is why this lock looks so appealing.  As technical details are scarce on the program, I dove deeper into the patent and prosecution history, to examine what makes this gym lock different from prior art.

                The general idea behind the concept is that there is a need for a lock which provides compatibility with manual and electronic mechanisms to open, providing the user a failsafe option in case one mode of operation is unavailable.  In addressing the claimed matter covering the concept, the USPTO relied on prior art teaching an electronic and key operated padlock (Marcelle 7,948,359), in addition to prior art teaching a biometric padlock (Nave 8,850,858).  However, examination of the prosecution history revealed that what set this lock apart from the prior art came down to the mechanism whereby the lock can be opened either via the fingerprint technology, or with a key.  Specifically, the prior art relied on a gearing mechanism (worm-gear) that differed from the current concept (clutch gear), where such difference was interpreted as being novel enough to overcome the prior art.  Let’s take a deeper look:
                Turning to FIG. 1A, an exploded view of the gym lock is illustrated.  The crucial differentiating factor includes clutch gear 130.  Briefly, in a manual key mode of operation, a key may be inserted into a tumbler 125, which may induce clutch gear 130 to rotate, which in response rotates toggle switch 135, thus moving ball bearings 140 and 145, releasing shackle 115.  Alternatively, in the electronic mode, the electric sensor 120, connected to circuit board controller 160, enables the circuit board controller to recognize a fingerprint, at which point a signal is sent to motor 150 to rotate shaft 157.  By rotating shaft 157, gear 155 may rotate, thus turning clutch gear 130, which in turn operates toggle switch 135 to unlock shackle 115.

                  During prosecution, independent claims were amended to highlight critical aspects of the operation of clutch gear 130, in relation to the electronic and manual operation of the lock, to distinguish this technology from the prior art.  Such amendments were considered persuasive, thus resulting in protection for the invention being granted.
                This example highlights the importance of prior art searching before spending considerable time and effort developing prototypes of a concept.  For example, prior art searching can potentially pinpoint areas where a significant inventive step will be necessary to overcome rejections during prosecution.  In this case, it is unclear whether the inventor designed the lock specifically to include the clutch gear to overcome prior art, or whether such a decision was serendipitous.  In any case, this represents a positive outcome for the inventor, who admitted on the Shark Tank program to spending over 80K developing the concept.


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.