Prior Borat? Non-traditional Prior Art Rejections!

By Stewart Walsh on March 24, 2012

Jagshemash!

Recently, I was working on a patent search requiring me to look in areas of patent art relating to male underclothing (a very popular area for patenting, as you may guess) when I came across this little number: US Patent Application 12/071,878, which is titled “Scrotal Support Garment.”  The primary illustration is shown to the left.

Look familiar? Yes, with the exception of adjustable straps, this is the Borat Swimsuit, the swimwear made famous by comedian Sasha Baron Cohen, a.k.a., Borat in the 2006 film Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan. If you remember the movie (and how could you forget?), Borat wore this swimsuit in one very short scene at the top of the film. That short scene set the tone for the craziness that was Borat’s world.

The Borat Swimsuit has since become a joke unto itself. Plenty of websites sell it as a novelty gift. One site, http://boratswimsuit.com/, mentions that it’s perfect for office parties. Personally, I’d rather work in an office with Hawaiian Shirt Day than Borat Swimsuit Day, but that’s just me.

So this is indeed pretty funny. But beyond funny, could there be a teaching point to the Borat Swimsuit patent application? Yes, there is! My teaching point is that prior art can be found anywhere, not just in issued patents or pending patent applications. And this particular invention, being particularly well known, has a very funny citation the non-final rejection. Yes, the examiner actually went on the Internet and found a picture of Borat in the aforementioned infamous swimming costume. See below.

Rarely does patent law meet pop culture so hilariously. But it gets to a more important point: An invention cannot be patented if there has been a public disclosure of said invention prior to the date of filing.

This application for a scrotal support garment serves as a great example of rejection through non-patent literature. When you apply for a patent, the examiner can use any information available to the public to reject your application – not just patents. In this case, the examiner had an easy time finding a picture of Borat.

But can a picture be used as prior art?

Yes!  In fact, MPEP 901.06 succinctly says: “All printed publications may be used as references…”  Furthermore, MPEP 2122 explains: “In order to constitute anticipatory prior art, a reference must identically disclose the claimed [invention], but no utility need be disclosed by the reference.”  Still further, MPEP 2125 most directly answers the question by saying: “Drawings and pictures can anticipate claims if they clearly show the structure which is claimed... The origin of the drawing is immaterial… The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.”  The point here is that anything can be prior art if it comes before your date of invention (for the novelty sections of 102) or if it comes more than 12 months before your filing date (for the statutory bars of 102).

Lest you think this type of rejection is unheard of, in August of 2011, Samsung argued in U.S. federal district court that the Apple iPad was anticipated by Stanley Kubrick’s 1969 movie — 2001: A Space Odyessy. Florian Mueller of FOSS Patents writes:

Ever since Apple started to assert the design of the iPad against other manufacturers, many people have been wondering whether there’s actually prior art for the general design of the iPad in some futuristic devices shown in sci-fi movies and TV series. And indeed, Samsung’s lawyers make this claim now in their defense against Apple’s motion for a preliminary injunction.

See for yourself below.

Even a document as old as the bible can be used in a rejection.  Just ask John White, a principle lecturer in the popular PLI Patent Bar Review Course.  Those who have taken his course are treated to a story about how when John was an examiner he cited a passage in the bible as prior art against an applicant!  Can you imagine the discussion between attorney and client going over that rejection?

The moral of the story is this: prior art comes from strange places sometimes.  Prior art can be used for whatever it teaches, so while your patent attorney or patent researchers are doing a patent search you should spend some time doing product searches.  Sometimes inventors only search the Internet to see if they can find their inventions, but sometimes inventors can fail to search the Internet altogether, which is a mistake.

The Author

Stewart Walsh

Stewart Walsh

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 14 Comments comments.

  1. MBT March 25, 2012 7:41 am

    I have seen a claim of “denatured ovine protein” rejected over a hard boiled egg. Since cooking the egg denatures the egg protein and “ovine” means bird, the claim was a solid one and the applicant had to amend the claim. Let the record reflect that I did not make the rejection – I’m not clever enough to have thought about it!

  2. Doug March 25, 2012 6:17 pm

    How about a device found in the scientific fiction prior art which does not have an enabling disclosure or actually work?

    For example, what is the prior art effect of the Startrek transporter?

  3. MBT March 26, 2012 9:42 am

    Doug, I would imagine that the Star Trek ‘disclosure’ would anticipate broad claims to a transporter, but that the actual mechanics of the device would still be patentable. I would have made the rejection over the broad claims. However, now that I’m on the ‘dark side’ (sorry, wrong sci-fi flicks), I would argue that the Star Trek transporter was not enabled. It may not overcome a 102 rejection though….

  4. JExaminer March 26, 2012 2:20 pm

    My applications tend to cross almost all art areas so I’ve used some pretty bizarre sources (almost used vajazzling once, don’t ask why but it was totally legit and if you don’t know what that is don’t look it up at work) but most of my non-patent literature is either scientific literature (relating to high tech inventions) or how-to websites (relating to low tech inventions). Both sources provide great art and even better, awesome motivation statements for obviousness rejections. However, I’m often pleasantly surprised how often I am able to use patents for low tech inventions (usually they are old but not always).

  5. EG March 26, 2012 4:33 pm

    “How about a device found in the scientific fiction prior art which does not have an enabling disclosure or actually work?”

    Doug,

    Happened with the water bed. See Robert Heinlein’s famous 1930s science fiction novel, Stranger in a Strange
    Land, describing the concept of a hydraulic bed made of a flexible skin filled with water which barred a
    much later attempt to patent the “water bed”

  6. Spencer March 27, 2012 10:42 am

    The AIPLA Moot Court competition a year ago featured a case of ‘fictional’ prior art, and while researching the brief I came across this (http://www.iusmentis.com/patents/priorart/donaldduck/) write up on the Dutch patent office submitting a Donald Duck cartoon as prior art.

  7. Chris March 28, 2012 2:29 pm

    I know of rejections using props from SNL skits as well.

  8. Bruce Hayden March 29, 2012 11:54 pm

    How about a device found in the scientific fiction prior art which does not have an enabling disclosure or actually work?

    For example, what is the prior art effect of the Startrek transporter?

    I would think that not being enabling would disqualify the device as anticipating prior art. Have argued this more than once. But, the thing here is that the disclosure cannot be enabling, since it presumably violates the laws of science as we know them. I seem to remember case law to the effect that a disclosure has to be enabling to anticipate. Now, the problem that I ran into was that I was attempting to show that disclosures in issued patents were not enabled, or, more accurately, not operable. But, there is a presumption of validity in issued patents that you have to overcome, and that is hard during prosecution. No such problem with the Startrek transporter. Yet..

  9. Milhouse March 30, 2012 12:38 am

    Stranger is from 1961, not the ’30s. But Heinlein thought up the waterbed when he was spending a lot of time in hospitals, in the early ’30s, and first wrote about it in Beyond This Horizon in the mid-’40s. However this did not prevent the patent from being issued. http://www.google.com/patents?vid=3585356

  10. Kharn March 30, 2012 8:46 am

    One case discussed in a patent law class I took was an invention to use a deluge of water to clean stables, controlled via floodgates. The examiner cited Hercules cleaning the Augean stables as prior art.

  11. mtnrunner2 April 9, 2012 1:00 am

    So I guess if you’re an inventor, it pays to watch a lot of movies. Especially if you design banana hammocks.

  12. Andrea May 5, 2012 7:04 pm

    I followed up further on the claim that the inventor of the waterbed, Charles P. Hall, couldn’t defend his patent, 3,585,356 based upon Robert A. Heinlein’s prior disclosure of it in his sci-fi novels. I found 93 F.3d 1548, Ct App Fed Cir, 1996, wherein the court affirmed the dismissal of 7 of 8 of Hall’s infringement suits on grounds of laches, NOT for any reason associated with alleged prior art from the sci-fi realm or elsewhere.