America-Israel Patent Law

Keep Your Eye On The Ball - joint program of AIPLA/IDC, September 23 - registration is open

Subject matter eligibility under 35 USC §101, and the requirements for compliance with the written description and enablement requirements of 35 USC §112, have been areas of rapid legal development for several years. Unfortunately, these areas remain in flux: in the past year, the USPTO has issued new §101 and §112 guidance, with more expected by the end of the summer; the Patent Trial and Appeal Board continues to turn out decisions that affect USPTO policy in these areas; the Court of Appeals for the Federal Circuit seems to vacillate in its rulings; and Congress is now considering new legislation that would affect not only §101 but the scope of PTAB review. 

The American Intellectual Property Law Association (AIPLA) and the Zvi Meitar Institute of the Interdisciplinary Center (IDC) invite patent practitioners, inventors and other interested individuals to a half-day session in which these topics will be discussed, along with a brief update on the state of obviousness-type double-patenting.  Presenters will be experienced US practitioners representing different disciplines, including Kevin Noonan (McDonnell Boehnen), Daniel Sherwinter (Kilpatrick Stockton), Aaron Feigelson (Leydig Voit & Mayer), David Postolski (Gearhart Law), William Mandir (Sughrue Mion), and yours truly.

The cost of the program will be 190 shekels, and participants must register in advance. 

Register online at https://www.eventer.co.il/aiplaconference.

Download AIPLA inv_6

 

 

Cat Got Your Tongue? On Hairbrushes and Hairballs

There’s a piece today in the Washington Post about how, when viewed microscopically, a cat’s tongue is seen as a perfectly-designed untangling hairbrush, which makes sense given how much time a cat spends licking its fur.  The piece ends by stating, “[this research] could bring a cat-tongue-style brush to a hair salon near you. Noel and colleagues are applying to patent their 3D tongue, and they’re planning to talk about possible uses with professionals in various fields — including the beauty industry.”

It’s possible to obtain patent protection on a hairbrush. See, e.g., US 8,627,537, which protects a detangling hairbrush that has been generally well-received, at least if youtube reviews are truthful.  And pre-Myriad/Mayo/Alice, I would have assumed that it’s possible to obtain such protection even if such a hairbrush was based on a phenomenon observed in nature.

But in the post-Mayo world?  Be careful how you claim your new brush.  Avoid telling the public how your invention is based on something found in nature (oops, too late for the people mentioned in the WaPo article).  And hope that your patent, if you ever get one, doesn’t come before Justice Breyer, who is short on both patent sense and hair.

It's Good To Be The King! (Google Gets Patent on Parent of Young Child - And Her Name Ain't Alice)

That's a famous line from Mel Brooks' "History of the World", ostensibly uttered by Louis XVI, but on the basis of recently-issued US 9,119,029, it would seem to true of Google the Patent Applicant as well. Here's claim 1:

1. A system for finding friends near a friend, comprising: a memory, housed within a mobile device, for storing a contact list comprising records for a plurality of a user's friends, each record comprising a name of a friend of the user, and a location of the friend; and a locator for receiving as input, from the user, the name of a designated friend of the user in the contact list, the designated friend of the user not being the user himself, and for generating as output a list of at least one proximal friend, each proximal friend comprising the name of a friend of the user also in the contact list, other than the designated friend, whose location is close to the designated friend's location.

Now, my first reaction on reading this claim is, How the @#$% was this claim allowed?  This is a claim on a parent of a young child! The parent's brain is stored in the parent's head, and since the parent is mobile, the parent is a mobile device with a memory. The parent's brain stores names of its child's friends. At the park, the child - i.e., the user - asks the parent, "Is friend X here?" The parent looks around and says, "I see X over there by the swings, and your friend Y is with him."  In short this claim is anticipated by generations of parents. And if you want to say that somehow it's limited to a non-living device, then generations of parents have made this claimed system obvious.

My second reaction on reading this claim is, How the @#$% was this claim allowed? Under Alice, this isn't patent-eligible! And yet, it turns out that 101 was never raised during prosecution: a non-final rejection issued in May 2014, with an obviousness-type double-patenting rejection and exactly three references cited for an obviousness rejection. A terminal disclaimer and amendments were filed in July 2014, leading to a Final rejection in August 2014 which cited one new reference, which was combined with the already-cited references in an obviousness rejection. An RCE was filed in December 2014, and a non-final rejection issued in January 2015 citing yet one more new reference in an obviousness rejection. This was followed by an amendment, a telephone interview, and allowance of the claims in April 2015.  But Alice issued in June 2014, with PTO guidance following. Why no 101 rejection of these claims?

My third reaction on reading this claim is, How the @#$% was this claim allowed? There's no definition in the specification of "close" or "near". The claim fails 112 miserably for being indefinite. So why wasn't a 112 rejection raised? 

I'm not a conspiracy theorist, so I don't believe that having Michelle Lee as Director leads to preferential treatment for her former client. But cases like this make one wonder if it isn't good to be the king. Interestingly, Google is listed as the assignee on the ADS and on the front page of the patent, but according to PAIR, no assignment data is available, and there's no assignment info in the Assignment Search page either - meaning no assignment has yet been filed for this patent.  Maybe the inventors just listed Google as the applicant to make it look as if they work for Google, and to derive any benefits that may accrue from that.