Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 1 is rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Claim 1 contains the trademark/trade name LEGO. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a connection type and, accordingly, the identification/description is indefinite.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Simonds et al 10,682,582.
Simonds shows a kit, which may include triangular wedge pieces 10, and base pieces 70 (figure 66); each piece includes protrusions 26, received in holes 32. The pieces may be assembled in various shapes, including an arch (figure 66); whether the assembly resembles the Saint Louis Arch would be an obvious design consideration.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A RICCI whose telephone number is (571)272-4429. The examiner can normally be reached Mon to Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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An examination of this application reveals that applicant is acting pro se, that is, not using an attorney or agent in the prosecution of this application. Since a patent is a legal document, applicant should consider using the services of a registered patent attorney or agent; lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed.
The following pages contain information about the patent process and Patent Office that applicant may find helpful.
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When one believes he (or she) has invented a useful product, or method useful in industry, the inventor may apply for a patent. The patent gives the inventor the exclusive right, for 20 years from the filing date, to make, import, and sell his invention in the United States. The patent rights may be sold or leased to others. There are two types of patents: a utility patent is for inventions which consist of new combinations of parts or structures which function in a way not previously known, to define a new and useful product. A design patent is for a new ornamentation or shape of an existing product, without regard to its mechanical functioning, which may make the existing product more convenient to use, or provide a more pleasing appearance to encourage consumers to buy it. Most patents issued are utility patents.
The application for a utility patent includes a number of formal requirements, mainly (a) a written description and drawings, termed the specification, to describe the invention (design patents require only drawings, with no written description necessary), (b) a signed declaration that the inventor believes that the invention has not been made by anyone else before, and (c ) an application fee.
The specification is a report, typically about 5-30 typewritten pages with drawings if appropriate, explaining the problem the inventor is trying to solve, prior inventions that are similar to the new invention, how the new invention is an advancement over prior technology, and showing the invention and its manufacture and assembly in sufficient clarity and detail that would allow an engineer or manufacturer of that class of products to build and use the invention without undue experimentation or further inquiry. If the patent is granted, the specification is published and makes up most of the text of the patent.
At the end of the specification are claims which set forth exactly what features the inventor considers necessary to define a complete operable product, and to distinguish his invention from the prior products. If granted, the inventor has the right to exclude others from making products which include all the features named in the claims; if others infringe on the claims, the inventor has legal remedy. However, others may make products similar to the invention, or even products described in the specification text as “new” or “inventive”, as long as their competing product omits one or more requirements of the claims.
When the inventor has prepared an application which includes the necessary formal requirements and sends it to the Patent Office, the Office is required to (a) issue the patent, or (b) explain why the claimed invention is not patentable in accordance with the patent laws. The application is channeled through various offices as this determination is being made.
Initially, the papers are accepted in the mail room and assigned a filing date. The application then goes through various data entry and classification stages, and clerks assure that all necessary papers are present. If some requirement is missing, the applicant will be notified to send the additional information. If the application is complete, it is then delivered to an Examiner.
The Examiner staff (for utility patents) consists thousands of Examiners. Each has at least a 4 year engineering degree, and some have advanced degrees and legal training. The Examiners are divided into three main divisions: those who review mainly electrical and electronic inventions, those who review chemical inventions, and those who review mainly mechanical inventions. Within each division, the Examiners are divided into teams of about 10 Examiners, or Art Units, which review specific kinds of inventions, for example automotive, airplanes, air conditioning, construction, etc.
When the complete application is delivered to the appropriate Art Unit it is assigned to an Examiner familiar with the type of invention disclosed. The Examiner then reads through the specification and claims. To determine whether the application should be issued as a patent, or if the applicant should be sent a rejection notice, the Examiner mainly asks three questions:
(1) Is the invention disclosed in sufficient detail and clarity to enable one to build an operable and useful product, or is difficult for one to understand how to make the product and use it?
(2) Has another inventor already made, or anticipated, the product (as defined in the claims)?
(3) If another has not made the invention exactly as defined in the claims, is the invention so similar to the prior technology (or “prior art”) that an ordinary engineer or manufacturer would have found it obvious to modify the prior technology to arrive at the claimed invention?
A body of laws and court decisions has been developed over the years to define the amount of disclosure necessary, and to determine when prior technology anticipates or renders inventions obvious.
If the invention is clearly disclosed, the Examiner will then need to do research to see if anyone has disclosed the claimed invention in the past. It is not necessary that the invention has been patented by anyone else, but only that it is disclosed or on display or for sale or in use somewhere. Most of the research for mechanical inventions involves looking through old patents. Examiners may also consider information in sources such as textbooks, newspapers, advertisements, magazines, and even cite common knowledge or experience. As the Examiner does research, he (or she) will look for inventions similar to applicant’s, and additionally look for references which may suggest obvious modifications to prior technology which would result in applicant’s invention.
We have millions of U.S. Patents on file, as well as millions of foreign patents and other literature. To facilitate research, the information is classified and organized according to technology, much as the books in a library are organized. The information is classified into about 400 broad classes, which define the general technology area, with each class containing typically 50-500 subclasses which define specific technical features or characteristics of the inventions. Each subclass typically contains 50-500 patents and other literature.
After the Examiner has read applicant’s application, the Examiner will determine which classes and subclasses would be most likely to contain inventions similar to that which applicant is claiming, and will look through those, and will remove relevant documents as he searches. At the conclusion of the research, he will then review the invention as defined in the claims, and compare it with the information he found. He will then write a letter to the applicant either granting the patent and explaining why the applicant’s invention is patentable over the prior technology, or denying the patent and explaining how the information found anticipates or renders obvious the claims. Then the applicant can either (1) agree that the invention is not patentable and abandon the application, (2) argue that the Examiner has made an error and that the cited information does not anticipate or render obvious the invention, or (3) add additional features to the claims to avoid the prior technology. If the applicant is not satisfied with the Examiner’s opinion, the applicant may appeal to a special three-examiner Appeals Board, and the Federal courts.
Keep in mind though that the grant of a patent is not a statement by the Government that applicant’s invention is a “good” idea, or will be desired by consumers; the grant of a patent only indicates that applicant has disclosed and claimed something of some minimal utility which is not shown or rendered obvious by prior technology. Marketing this idea and making money is applicant’s responsibility. Some inventions end up in widespread use and make millions of dollars, and others don’t even recover the cost of obtaining the patent.
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When writing a claim, the inventor needs to ask whether his invention is either anticipated by any one document, or rendered obvious by one or more documents. However, the answer to this question depends on the amount of detail he is willing to put in the claims: A very broad claim, which includes little detail, will give the invention greater protection and it will be harder for a competitor to design a product which avoids infringing the claims; however, it is more likely that such claim will be rejected over the prior references. On the other hand, with a narrow claim, which includes much detail, it is easier to define over the prior references; however, a competitor may be able to design a similar product by just avoiding one little detail. So what the inventor needs to ask is: Is it possible to write a claim which includes enough detail to overcome the prior references, but not so much that a competitor will be able to make a product very similar to mine by changing one little feature? If the answer to this is No, the inventor shouldn’t apply for a patent. If the answer is Yes, then the inventor needs to ask the next question: Is my invention really an advance in the technology that will be valued by consumers, or are people perfectly happy with existing technology and probably won’t be willing to try my product?. If the inventor feels that a sufficiently broad claim can be written that defines a desirable product, then it may be worth applying for a patent.
For example, assume that an automobile is known in the prior art, but an automobile with an AM-FM radio is a novel patentable invention.
An example of a claim which is too broad would be: “An automobile with an electrically-operated accessory”. This claim would be rejected under 35 USC 102 because it is known that automobiles conventionally include electrical accessories such as lights and horn; this does not distinctly claim the novel radio idea.
An example of a claim which is too narrow would be: “An automobile with an AM-FM radio and a 6-cylinder engine”. In this case applicant would indeed receive a valid patent and would be able to exclude others from selling automobiles with an AM-FM radio and 6-cylinder engine. However, it would be easy for a competing manufacturer to design around this claim by selling automobiles with an AM-FM radio and an 8-cylinder engine. Their competing 8-cylinder automobile would still embody applicant’s novel idea and would likely cut into applicant’s sales.
The “perfect” claim would be: “An automobile with an AM-FM radio.” In this case, a competing manufacturer’s product would have to exclude the novel AM-FM radio, so would not likely cut into applicant’s business.
However, the grant of this “perfect” claim still does not guarantee that applicant’s product will sell well. If consumers are perfectly happy with the prior technology and perceive no benefit from applicant’s improvement, they may not be willing to pay more for applicant’s product. A patent, to be successful, must often be combined with a marketing and advertising campaign to make people aware of applicant’s new product and demonstrate why the new product is better than old products and why consumers should choose the new product. Although applicant may see his idea as a significant improvement, there is no guarantee that consumers will see it this way.
Also keep in mind that if applicant’s invention is for an improvement on an existing product, and there is a currently valid patent on that product, it may not be possible for applicant to manufacture his new product without infringing the existing patent.
For example, if Ford owns a valid patent for “An automobile with an engine and four tires”, and applicant has invented a novel “Automobile with an engine, four tires, and AM-FM radio”, Applicant may very well obtain a valid patent on such automobile with radio. However, if applicant tries to sell such an automobile with radio, Ford may demand payment of royalties, or even shut down applicant’s business altogether, because this will infringe their basic automobile patent; applicant’s patent will not have full value until Ford’s patent expires, which could be years from now.
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Claims are written as a single sentence which is the object of a sentence starting with "I (or We) claim". To see how this works look at the following three claims:
I claim:
1. A vehicle having a front and a rear with a seat facing the front and four wheels including a front pair of wheels, and a back pair of wheels.
2. A vehicle having a front and a rear with a seat facing the front and four wheels including a front pair of wheels, and a back pair of wheels, and further including an engine supported primarily above said rear wheels.
3. A vehicle having a front and a rear with a seat facing the front and four wheels including a front pair of wheels and a back pair of wheels, said vehicle further including an engine supported primarily by said rear wheels, and a power train extending from said engine to said front wheels whereby said rearwardly supported engine can provide motive power to said front wheels.
These are independent claims and are of progressively narrower scope. An independent claim sets forth a complete invention without referring to any other claim. Every patent application must include at least one independent claim.
It is often desired to further define an invention set forth in a previous claim. This may be done with dependent claims. A dependent claim refers back to another claim, either independent or dependent, and includes all features of this previous claim, and adds additional features. For example, Claims 2 and 3 could have been written in dependent form as follows:
2. A vehicle as in claim 1 and further including an engine supported primarily above said rear wheels.
3. A vehicle as in claim 2 and further including a power train extending from said engine to said front wheels whereby said rearwardly supported engine can provide motive power to said front wheels.
Claim 2 covers all the features of the vehicle of Claim 1, plus the rear engine. Claim 3 covers all the features of the vehicle of claim 1, plus the rear engine of claim 2, plus the power train.
Claim 1 if granted would permit the patent holder to exclude others in the United States from making cars, trucks, and even wagons having a seat and four wheels.
Both claims 1 and 2 are not patentable under 35 USC 102 because the VW Bug, which has both four wheels and an engine in the rear, was known and used in this country more than one year prior to today's date in this hypothetical example.
If we assume that the VW Bug and a 1974 Cadillac having a front supported engine and rear wheel drive comprise all of the prior art, then insofar as a rejection of claim 3 is concerned, 35 USC 102 does not apply, but 35 USC 103 may apply.
To determine the patentability of claim 3 one must answer the question: Given a front engine car with rear wheel drive and a rear engine car with rear wheel drive, would it have been obvious to provide a rear engine car with front wheel drive?
The answer to this question is not always clear. One must consider the skill of a person having ordinary competence in the car building industry. What factors would cause one of ordinary skill to make this combination, and what new and unobvious benefits are to be derived from this unique combination of features?
Claim 3 if granted would give the inventor the right to exclude others from making or using rear engine cars with front wheel drive, and rear engine cars with four wheel drive.
The applicant, as a general rule, does not wish to burden his claims with frivolous or unnecessary limitations. Claim 3 is valuable only if someone wants to make a rear engine car with front wheel drive and is willing to pay the patent holder money for the privilege of making such a car.
One would not, for example, wish to put in his claim the limitation that the wheels are made of chrome plated steel, because car manufacturers would be able to make the inventor's car with painted steel wheels without infringing the claim, and the chances are they would do just that to avoid paying the patent holder royalties.
People not familiar with claim writing should look at the claims of patents which were cited by the examiner and try to get some feel for writing single sentence claims.
In writing a claim always think in generic terminology. For example, use terms like "fastening means" not "nail or screw" whenever possible. If an inventor's claim calls for a screw holding two parts together, a competing manufacturer can make the claimed device using a nail to hold the parts together without infringing the claim and without paying the inventor or patent owner royalties. Also, since the claim must define something different and unobvious over the prior art, claiming something like a specific fastening means will usually not help overcome an obviousness rejection because it is obvious to substitute a screw for a nail.
/JOHN A RICCI/Primary Examiner, Art Unit 3711