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.
