Cobalt Snatches Defeat From the Jaws of Victory in Boat Step Patent Case

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Cobalt Snatches Defeat From the Jaws of Victory in Boat Step Patent Case

Companies use patents to protect their innovative designs because those designs take significant investment and time, and provide a competitive advantage and differentiator in the marketplace. However, making sure that the patent actually covers the concept and easy “design arounds” is where the rubber hits the road.

This issue is illustrated in the running dispute between Sea Ray (Brunswick) and Cobalt Boats. The patent (US 8,375,880) relates to a boat step (see FIG. 3 from the patent reproduced below).

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The patent required rotation of the step of 180 Degrees. The Sea Ray product only rotated slightly less that that. From the Appeal Court’s opinion, we learn this as follows:

Under our construction of the “180 degrees” limitation, Brunswick’s swim step literally infringes only if it is capable of rotating at least 180 degrees. It is undisputed that Brunswick’s accused swim step is not capable of rotating 180 degrees. Uncontroverted testimony at trial established that the maximum rotation of Brunswick’s swim step is be-tween 172 and 179 degrees and that the hinges on the swim step have a “very rigid stop” that prevents any rotation beyond that, J.A. 2887. Cobalt’s own expert testified that he measured the amount of rotation of the accused swim step and determined that it was “within a couple tenths of a de-gree of 177.” JA 2441.

Below is a picture of a Sea Ray step from Boattest.com, which seems to be the product at issue in this case:

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While Cobalt originally won the infringement trial, the Court of Appeals reversed the decision and found no infringement. While the evidence showed the alleged infringing product rotated around 177 degrees, that was not 180 as required by the patent. The court specifically noted that the patent owner did not use the phrase “about 180 degrees” which would have provided some wiggle room.

Companies need to be careful in ensuring that their patent counsel is integrated into their business and understands the competitive market place so that patent strategies can be aligned with the company’s direction.

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Diversity in Patent Drafting

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Diversity in Patent Drafting

My Thanksgivings growing up were potluck-style, my family bringing traditional Persian foods, my aunt’s family bringing traditional Filipino foods, and everyone doing their best imitation on traditional Thanksgiving dishes. I’ve found that using a similar mindset can greatly improve patent drafting and prosecution. Unlike a more traditional patent law firm model where applications in a specific field are drafted by an individual who only works in that field, I’ve been exposed to different approaches with patent technology specialists having diverse backgrounds working with experienced attorneys who practice in a wide range of technologies. 

 

Why can this be advantageous?

Patent drafting inevitably requires some amount of learning. Inventions are, by definition, new and anyone other than the inventors is not an expert. Traditional firms might think it is beneficial to assign these inventions only to attorneys and/or agents considered experts in a particular field that seems closest to the new invention. However, they bring their own preconceived notions and experiences in a narrow field which may result in a tunnel-view of the problem and technical solution of the invention. When I work with a team having diverse backgrounds to prepare a new patent application, past experiences are used to deepen and broaden the scope of an invention and the scope of the description, thereby setting up the application to enable a diverse range of arguments in support of patentability. Interdisciplinary review ensures that the traditional aspects of the invention are described while strengthening the patent application as different eyes with different backgrounds learn the invention and provide their own spin.

 

From a legal standpoint, USPTO guidelines are continuously changing, further requiring attorneys and agents to, again, learn and adapt. My experience working in a collaborative team-based environment helps understand these changes from different points of view. For example, by being included in monthly continued legal learning events which include analysis of recent cases, I can get a better feel for the direction the USPTO is going and then adapt drafting strategies today for the USPTO guidelines changes of tomorrow.

 

The structure and strategy of a collaborative approach enables technical team members and legal team members to maximize their individual skills and the resulting patent application is more of a melting pot of these ideas due to the collaborative approach.  Collaboration occurs not only during the searching, evaluation  and drafting phases, but is also carried through during prosecution affording not only more robust patent applications with a smorgasbord of concepts with varying scope, but better ideas for developing a range of options to respond to Office action rejections by the USPTO. Inclusion of these types of diverse strategies in each patent application increases a client’s stronghold around technology, and builds a stronger and higher quality patent portfolio.

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Controversy in the World of High End Bikinis

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Controversy in the World of High End Bikinis

The small, independent retailer taking on a global corporation is often portrayed as a feel-good, David vs. Goliath theme in news reports and movies alike.  Hence, the story of Kiini versus Victoria’s Secret may spark an automatic sense of favor towards the underdog.  After all, the bikini company, Kiini, was formed by a young entrepreneur who, at the time, was bouncing between jobs and struggling to find her career path, ultimately finding her niche in the high-end, luxury market.  Fortunately, she was well-advised to seek copyright protection for her product, a crocheted bikini.  Not long after the launch party for the Kiini bikini, the bikini soared in popularity, spurring various alleged knockoffs.  Most notably, Victoria’s Secret began selling a bikini that was suspiciously similar to the Kiini bikini, the Kiini version shown on the left below and the Victoria’s Secret set on the right:

Givner, Ariel. “Kiini, Victoria’s Secret Settle Swimsuit Infringement Lawsuit”. Photograph:  http://www.thefashionlaw.com/home/kiini-victorias-secret-settle-swimsuit-infringement-lawsuit

Givner, Ariel. “Kiini, Victoria’s Secret Settle Swimsuit Infringement Lawsuit”. Photograph: http://www.thefashionlaw.com/home/kiini-victorias-secret-settle-swimsuit-infringement-lawsuit

Kiini proceeded to sue Victoria’s secret for copyright infringement as well as claiming trade dress protection.  According to the Lanham Act, trade dress protection is obtained without formal registration with the USPTO, stating that:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive [...] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act.

Ultimately, Victoria’s Secret pulled the bikini line and settled with Kiini.  Kiini continues to produce swimwear priced at upwards of $280 per set. 

In an interesting twist, however, it has come to light in a New York Times article, that the founder of Kiini bikinis ultimately derived her idea for her distinctive bikini from a woman in Brazil, selling her hand-made bikini sets to tourists on the beaches of Trancoso. She has made her living selling these bikinis since 1998 and is known in the area as the “bikini lady”. Her bikini top is shown below on the left and the Kiini top is shown on the right.

These revelations emerged after Kiini’s lawyers sent a cease and desist letter to Neiman Marcus, who sells a crocheted swimsuit under the Platinum brand.  After some sleuthing and some inside information from a disgruntled former colleague of Kiini’s founder, the woman in Brazil, Solange Ferrarini, was located and a deal was struck that compensates her with an annual fee and includes her name in the swimwear branding.  

After determining that the bikini that the founder of Kiini used as a prototype was indeed a bikini bought from Ms. Ferrarini, based on habit of writing her name along the elastic of each bikini she crochets, the tables were turned.  Kiini and Kiini’s founder were sued on behalf of Ms. Ferrari, for unfair business practices.  Kiini withdrew its case against Neiman Marcus and as of the writing of the New York Times articles, the case against Kiini is ongoing. 

Ultimately, Kiini had a major, milestone moment in driving Victoria’s Secret to come to a settlement but it will be interesting to see how justice is served when it turns out David is an imposter. 

 

 

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Prior Art Searching: Reviewing the Landscape

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Prior Art Searching: Reviewing the Landscape

In this blog post series, you have learned a litany of techniques for conducting an effective and efficient preliminary search of the prior art.  In this final post, you will see how to take a step back and conduct an assessment of the prior art landscape, which may ultimately prove crucial to the initial stages of brainstorming.  However, in contrast to the prior art searching described in the last few posts, landscape reviews are not focused on individual publications.  Rather, they contextualize larger datasets composed of several hundred, or thousand, publications.

There are several dimensions by which you may gain a broad understanding of the prior art landscape pertaining to your invention, such as publication trends over time, or applicants, jurisdictions, CPC subclasses, etc. with the most publications.  Due to the particular utility of the interface provided by The Lens patent search engine in regards to landscape reviews, all examples in this post will derive from there.

After providing The Lens with the original search query from the previous posts in this series, (electric) (unicycle), you can utilize the dropdown tabs on the left side of the results page to better understand the larger trends.

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As a first example, clicking on the “Applicants” tab reveals the top ten most prolific applicants in the dataset, along with the total number of publications for each applicant.  In this case, two companies, Google and Waymo, dominate the landscape, having published 381 (~30%) of the 1273 publications found.

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As a second example, clicking on the “Jurisdictions” tab will similarly bring up the top jurisdictions.  The US overwhelmingly dominates in this example, where 916 (~72%) of the 1273 publications found were published.

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As a third example, on the right side of the results page, a plot titled “Publications by Year” is automatically generated, where you may view publication trends over time.  Hovering over a given data point will generate an inset with further information (as shown below for the year 2017).

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Because of the drastic increase in filed patent applications in recent years, it is often more useful to restrict results to the last few years.  This also allows you to determine which companies are actively pursuing patents.  To restrict the publication date to the last ten years, select the “Date Range” tab, and fill in the appropriate fields.

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Filtering subsets of results by CPC subclass can further help you see which inventions are being developed by which companies, or what space the most recent publications cover.  For example, selecting “Google Inc” from the “Applicants” tab will return those 242 publications filed by Google.

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Then by clicking on the “Classifications” tab, you can view the top CPC subclasses for the results.  A plurality of publications (83) filed by Google are classified under G05D1/0088.

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By hovering over a CPC subclass of interest, a yellow info icon will appear (as shown above, to the right of G05D1/0088).  Selecting this will generate an inset with information concerning the given CPC subclass.  In this case, you can determine that G05D1/088 is directed to inventions using artificial intelligence in automatic navigation systems.

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Finally, for pursuing more extensive, tailored analyses, an “Export Results” option is provided near the top of the results page.

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One last word of caution: there are numerous technical and legal pitfalls which fall outside of the scope of this blog post series and are left for an experienced attorney or agent.  These search techniques are merely provided to facilitate the brainstorming and preparation of your disclosure.  Always remember to rely on your legal counsel for the last word on substantive reviews of the prior art.

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Prior Art Searching: Utilizing CPC Subclasses

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Prior Art Searching: Utilizing CPC Subclasses

One of the most robust and useful techniques in trawling the patent literature centers on the Cooperative Patent Classification (CPC) subclasses.  The CPC system is an international classification scheme that indexes and classifies patent publications into general inventive concepts.  Because the CPC system is used across many jurisdictions, it may further serve to sidestep linguistic barriers.

Returning to the electric unicycle wheel lighting example of prior posts, it will quickly become clear how useful the CPC system can be.  You must first determine which CPC subclass(es) will be of greatest relevance to your invention.  Beginning with the fairly broad search query (electric) (unicycle OR monocycle), Google Patents returns, as discussed previously, thousands of patents across a wide spectrum of relevance.

To effectively utilize the CPC system in the process of sifting through the prior art, begin by selecting a patent publication which covers your broadest concepts.  As an example, the top result returned from the above search query is U.S. Patent No. 8,800,697 (“ELECTRIC-POWERED SELF-BALANCING UNICYCLE WITH STEERING LINKAGE BETWEEN HANDLEBARS AND WHEEL FORKS”).  Though the ‘697 patent doesn’t cover lighting subsystems in detail, it certainly addresses electric unicycles broadly.

With this patent selected, look for the “Classifications” header near the top of the publication page.

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Select “View 9 more classifications” to toggle a drop-down menu (publications are often assigned more than one CPC subclass).

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B60L2200/14 sounds like a good start – this is listed as the CPC subclass for “vehicles with one wheel only,” which should cover both unicycles and monocycles.  Note, however, that this is just the description of the sub-classification.  It’s worth looking at the CPC scheme on the USPTO’s website to determine what the broader B60L classification is directed to.  This may be significant, because the CPC subclass B60L may be a broad concept like “vehicles,” or it may be something more specific, like “brakes.”

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Perfect – B60L is directed to “propulsion of electrically-propelled vehicles.”  A more complete description of B60L2200/14 is thus “propulsion of electrically-propelled vehicles with one wheel only.”  You can now effectively utilize the CPC subclass in your prior art search.

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Notice that there are now only 67 results – the CPC subclass has filtered out publications that simply recite the terms “electric” and “unicycle” or “monocycle” in favor of those publications which are specifically directed to propulsion of electric unicycles/monocycles.  Now tack on some of the key search terms from the previous posts to determine which of these publications show similar features to your invention.

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Only 7 results!  By mixing and matching the tactics of this post and the two immediately preceding it, you can thus capture a few specific publications directly pertinent to your invention.  After reading these yourself, but before handing them over to your attorney for a more substantive analysis and further searching, there is one more trick that you should know.

 Once you have found a very close patent publication to your inventive concept, direct your attention to the info box at the top of the publication page.  Therein, you will find a citations section.

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The “Patent citations,” “Non-patent citations,” and “Cited by” links are shortcuts to the bottom of the page, which list out every publication which either cites the publication in question, or which the publication itself cites.  This will allow you to fill in any small gaps which combinations of your other searching techniques may have left exposed.  They may also serve as a good double-check of the quality of your search queries; that is, if you are running into the same publications, you have likely tracked down near everything of relevance.  You are now free to reinvent the wheel!

In the next post, we will take several steps back to address how to assess the patent landscape prior to performing any rigorous, publication-directed searches.  This will be key to the brainstorming process and will allow you to understand your competitors and their filing trends.  You will find that several of the concepts and strategies already discussed will be necessary for this stage.

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Prior Art Searching: Narrowing the Scope

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Prior Art Searching: Narrowing the Scope

The key to using a directed search to find your little corner of the prior art is to carefully sand down the rough edges of your inventive concept.  Once you have settled on a relatively broad search query (perhaps by using one or more of the techniques provided in the previous post), you can really hone in on the patentable space by thinking about the specifics of your idea.  Ask yourself: what are those features which are truly central to your invention?

Continuing on the theme of the previous post, let’s say that your idea is an electric unicycle with a series of colored lights on the wheel hubcap which sequentially light up as the vehicle increases in speed.  Perhaps “low speed” lights are in red, “middle speed” lights are in yellow, and “high speed” lights are in green.  As in the determination of any good search query, it is important to select a specific set of search terms which neither unnecessarily narrows your ideas, but doesn’t overly broaden them either.  Indeed, though you may feel that you already have a pretty narrow set of concepts, each individual term may prove surprising problematic.

Begin with a broad search query, such as (electric) (unicycle OR monocycle) -toy* after:publication:20000101.  This returns 5055 results.  From there, you may then tack on some of the critical concepts of your invention.  For example, adding (light*) to the query narrows the number of results to 2810.  Alternatively, adding (wheel*) to the query narrows the number of results to 3259.  As another option, adding (speed) to the query narrows the number of results to 3096.  Adding all three produces 1018 results.

Of course, concepts such as lights, wheels, and speed must certainly be integral components to many electric unicycle innovations.  It will be crucial to narrow your scope further – especially since 1000+ publications presents a lot of material to wade through.  However, as discussed last time, thoughtlessly narrowing your search may omit important pieces of prior art.  For example, adding (hubcap) to all combined terms from above leaves a mere 10 results.  Intuitively, you should be doubtful that this covers all, or even a portion, of the relevant prior art.  Indeed, there are several related words to hubcap which may be utilized instead (hub, wheel cover, wheel trim, etc.)  Further, what if the lights were disposed on the spokes?  Or on the rim of the wheel?  Or capping the lug openings?

What this exercise should impress upon you is that even concepts which may seem essential to an invention do not always constitute good search terms.  What you need to nail down are terms which are absolutely essential in any description of your invention.  For example, adding (color*) (red OR yellow OR green) will almost certainly be necessary for any description of your specified patterning.  Indeed, the search query (electric) (unicycle OR monocycle) (wheel*) (light*) (speed) (color*) (red OR yellow OR green) -toy* after:publication:20000101 returns 86 results.

 You can take one more step and place quotation marks around each of your broadest concepts: (“electric”) (“unicycle” OR “monocycle”) (wheel*) (light*) (speed) (color*) (red OR yellow OR green) -toy* after:publication:20000101) to obtain 75 results.  This ensures that close terms which Google characterizes as synonymous – “electrical,” “monocyclic,” etc. – are not returned.

Of course, it is still essential to have your attorney review, as there are further aspects of the field which may be more difficult to characterize.  This initial searching may still prove useful, however, as a selection of close prior art from your search may help your attorney grasp your specialized field.  Indeed, by analyzing the detailed description and prosecution history of each publication, your attorney will be able to make a more informed judgment call on the likelihood of your patent application being issued.  Further, the search strategies presented thus far don’t even begin to consider obviousness rejections.  However, armed with a few close publications, your attorney may be able to predict which combinations of the prior art are likely to be made by examiners to reject your application and where the patentable space actually exists.

You may have noticed that there has been no discussion of really generic language cases which may recite your invention (e.g., “electric vehicle having one wheel”).  Nor have we discussed how to effectively search non-English language prior art.  Next, we will see how you can rigorously address both of these situations by combining CPC subclasses with forwards/backwards searching.

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Prior Art Searching: Constructing Broad Queries

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Prior Art Searching: Constructing Broad Queries

Suppose you’re an inventor hoping to get a piece of the electric vehicle market share, and you’re in the process of preparing a patent application describing your brilliant idea: an improved electric unicycle.  Once you’ve worked out the fundamental mechanics, the next step to ensure that you aren’t the “third wheel” is to run a prior art search.  This may seem straightforward enough.  Type in a quick set of keywords into Google Patents, say electric unicycle, and voila: you’re supplied with over 3000 results.

However, as with database searching in general, naïve queries may return more (or less) information than desired.  It is up to you to determine which terms will trim the excess and which terms are already proving too limiting.  In the former case, this is not only a matter of making your search specific, but of removing irrelevant prior art.  There are several tricks that you can use to facilitate this ordeal.

One trick is to remove terms that you don’t imagine will show up in any publication of interest by using a minus sign.  For instance, the search electric unicycle -toy* will omit all patents which are directed to toys instead of some means of personal transportation (note the use of an asterisk here – this is a wild card, which will remove not only “toy,” but any term that begins with “toy” as well, such as “toys”).

Another trick is to lop off older prior art which may have little relevance.  If you’re at the forefront of your field, perhaps you’re only in danger of reproducing the newest innovations.  Most patent search engines will allow you to search within a specific range of publication dates; in Google Patents, you may do so by appending a date in YYYYMMDD format as, for example: after:publication:20000101 (conversely, you may omit everything published before this date with before:publication:19991231).

Of course, the process of exhaustively narrowing down everything that isn’t relevant to you may prove a herculean task.  You shouldn’t spend an inordinate amount of time at this stage.  Simply appending quotations to your search term can immediately hand you publications truly reciting electric unicycles.  Indeed, “electric unicycle” only returns ~600 results.  An important caveat, though, is that while you may be certain that these results discuss electric unicycles, you may be omitting cases which discuss electric unicycles in a non-obvious or patent-like manner (e.g., “electric monocycle,” “unicycle with an electric motor,” etc.)

To that end, you may add flexibility to your search by taking advantage of Boolean search operators.  In Google Patents, AND operators can be represented implicitly by placing two keywords in separate sets of parentheses.  Thus, the search query (electric) (unicycle) is equivalent to electric AND unicycle (in Google Patents, this is also equivalent to the first example query electric unicycle).  Perhaps you’d like to see results on electric monocycles as well.  Simply adding an OR operator will account for this: (electric) (unicycle OR monocycle).

Be advised that generic combinations of these directed search techniques will only be of limited utility in the preparation of any given application, and must therefore be judiciously tuned to the specific invention at hand.  In the next few posts, we will explore how to further narrow search queries to serve a more particular purpose.

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Hydrofoil Bicycle

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Hydrofoil Bicycle

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Anyone who has experience trying to pedal a pedal boat knows how much effort it takes propel a craft through water at any reasonable speed simply by pedaling.  Thus, I was intrigued when I learned of a hydrofoil bicycle (https://manta5.com/), and decided to check it out from an IP perspective.

            Based in New Zealand, the company Manta5 touts the Hydrofoiler XE-1 as the world’s first hydrofoil e-bike that replicates the experience of cycling, on water.  Their website indicates that the Hydrofoiler XE-1 is the culmination of seven years of design and development.  Highlights include three electric assist modes, ability to launch from a submerged position, ability to handle choppy water while achieving speeds of up to 13 miles per hour on flat water, and two minute assembly time.  The company is currently taking orders for delivery in late 2019, and thus for the hefty price tag of $7490.00, the Hydrofoiler XE-1 can be yours!

            So, with an admitted seven year design and development stage, what makes the Hydrofoiler XE-1 unique over other prior concepts? 

Figure 1.

Figure 1.

            For this, I turned to relevant patent applications that disclose the concept.  Published in 2015, WO2015093984A1 discloses a hydrofoil bike that, according to the application, combines several novel and inventive features including a means of linking the front and rear frames of the bike, a propeller assembly, a tiller, and a means of adjusting at least one of the foils of the bike when in use.   Specifically, referring to Figure 1, the hydrofoil bike (1) includes a front (2) and rear frame (3).  Handle bars (4) are mounted to the front frame and a seat (5) is mounted to the rear frame.  Both are mounted in such a way that they are adjustable to be suitable for the height of the person (not shown) using the bike.  Also associated with the front frame are a tiller mechanism (6) and a front foil (7).  Associated with the rear frame is a rear foil (8), a drive unit (9), and a propeller assembly (10).  Part of the rear frame (3) is configured with an overhang (11) to assist in the launching of the hydrofoil bike (1) from a stationary object.  However, to date a patent for the hydrofoil bike has not been granted, and thus I turned to the World Intellectual Property Organization (WIPO) to uncover more information relevant to the prosecution of this particular invention.

            To date, a preliminary report on patentability has been issued based on an international search report.  Interestingly, the conclusions of preliminary report are that a number of claims pertaining to WO2015093984A1 are novel over the prior art references cited in the international search report, yet none of the claims are indicated to include an inventive step.  The common theme of the preliminary report as it pertains to lack of inventive step is that limitations not expressly shown by the prior art references cited in the international search report amount to nothing more than mere design choice.  Such reference to design choice is often used by Examiners in formulating rejections, and can be particularly difficult to overcome when the specific element alleged to design choice is not disclosed in the specification as having any unique advantages. Thus, it makes sense here to discuss the issue in more detail.

            Because a drafter of a patent application does not have any idea about the prior art that will be cited by an Examiner years in the future, it can be challenging to know how much detail regarding advantages of particular aspects of an invention to include in the application.  Thus, the situation often arises that patent applicants are left with an obvious design choice rejection with little in the specification for support as to technical advantages.  Fortunately, the Federal Circuit has spoken on this very issue - In re Chu, 66 F.3d 292 (Fed. Cir. 1995).

In the Chu case, the issue was non-obviousness of placing an SCR catalyst in a bag retainer.  In arguing the case, the applicant argued using various pieces of evidence outside of the specification in support.  However, the Board asserted that such arguments were not persuasive because of the lack of advantages cited in the specification, and the locating of the catalyst within the bag retainer did not appear to solve any particular problem or produce an unexpected result. 

(above image by: Oliver Sjöström, Instagram: @ollivves, Website: https://ollivves.com/ )

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Prior Art Searching and the Inventor-Attorney Relationship

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Prior Art Searching and the Inventor-Attorney Relationship

From the outside looking in, patent law may seem a counterintuitive tangle of legal tactics and linguistic gymnastics.  Consider the now infamous example of U.S. Patent No. 6,368,227, in which five-year old Steven Olson disclosed his method of swinging side-to-side on a swing, including an example in which the user may “produce a Tarzan-type yell while swinging in the manner described, which more accurately replicates swinging on vines in a dense jungle forest.”  The ‘227 patent has subsequently been cited as an example of the “broken system,” that is, of how U.S. law allows for ludicrous “inventions” to be patented.

What is even more concerning to patent seekers are inventions which may deserve patenting but, due to poor specification and claim structure stemming from an incomplete understanding of the prior art, ultimately go rejected or abandoned.  Indeed, it may seem a great injustice to the applicant that their useful and valuable intellectual property will go unprotected, even while little Steven can shake down his classmates for royalties.  To be completely fair to the USPTO, though, the allowed claims of the ‘227 patent were reexamined and duly rejected the following year.  This should help allay the fears of the cynics – clearly, Mr. Olson’s method had existed somewhere in the prior art.

But how can one be certain?   How does an aspiring applicant even begin to make such a determination?  The task may seem daunting, as the body of prior art constitutes an immense amount of material.  As of January 1, 2019, over 10.1 million patents have been granted by the U.S. Patent and Trademark Office.  That doesn’t even begin to cover abandoned and pending applications, foreign jurisdictions, and non-patent literature – all of which are valid prior art.     

A seemingly great divide in logical reasoning between inventors and attorneys presents a further obstacle.  For instance, even if a set of close publications are methodically tracked down, a person skilled in their art and motivated to patent their invention may see differences between their idea and every given prior art reference.  This can lead to a false sense of security among would-be patent applicants.  Any patent attorney will attest, however, that effectively distinguishing an invention from the prior art is not as straightforward as clarifying novel results; just because an idea is novel (in an absolutist sense of the word) doesn’t make it patentable.

However, this divide is not unbridgeable.  In fact, it may not be a divide at all, but rather two alternative, mutually complementary perspectives.  After all, both technical and legal considerations are necessary to obtaining that coveted Notice of Allowance.  An inventor and an attorney can therefore help one another by determining in tandem which pieces of prior art are points of concern.  This may take the form of a brief prior art search by the inventor with an eye for both their technical field and patentability, which can lay the groundwork for a further, more exhaustive prior art search by the attorney.

To that end, this is the first in a series of blog posts with a singular goal: how can an inventor effectively utilize their expertise to facilitate the prior art searching process?  The ensuing tutorials will detail preparatory steps that the inventor can take in assessing the prior art landscape in anticipation of disclosing their invention with an attorney.  From there, the attorney will be able to conduct a more rigorous search with an eye for a path to issuance in accordance with the law.  The hope is that when inventors are apprised of the fundamentals of properly distinguishing prior art in their technical field from their innovations, they may more fully provide attorneys with a rough picture as to the patentable space and thereby increase chances of allowance down the road.

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Alinker Walking Bike

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Alinker Walking Bike

Creative, high impact products come in many shapes and forms. For example, take Alinker, a walking bike designed to enable users with limited mobility a way to more easily get around.

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Alinker includes a light frame with a wheel and seating arrangement which allows users to rest on the seat in a substantially standing position. Requiring users to make a movement similar to many gliders, the Alinker walking bike enables users who may have difficulty on traditional bicycles, such as amputees, a way to enjoy bicycling again. The Alinker further may serve as a more comfortable, more mobile walker compared to traditional walker devices. Overall, the Alinker walking bike has the potential to bring improved mobility and the fun of bicycling back to many people’s lives.  

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Given the potential of the Alinker walking bike to have such a positive impact, it is great to see that there have already been investments directed towards protecting intellectual property for the Alinker. In particular, there is currently a U.S. patent (U.S. Pat. No. 9,623,926 B2) issued to Barbara Elisabeth Alink, the inventor of the Alinker, as well as several other additional filings that are pending.

With the various aspects of the Alinker which contribute to its functionality, such as the sizing and arrangement of the wheels, the seat height, and the handles, to name a few, it will be interesting to see the directions these patent filings will go to protect the Alinker. What is particularly interesting is that Alinker seems to be taking a portfolio approach, rather than relying on a single patent filing.Portfolio development can sometimes be the deciding difference in establishing intellectual property that helps grow the business.

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