The Wildlife Research Center (https://www.wildlife.com/) (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.

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. 

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. 

•      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.

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).

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.

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.