Disjointed Patent Claims and the Search for Prior Art
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course Posted: September 3, 2012 @ 3:02 pm
Mistakes will inevitably happen during the patent process. If the mistakes could be minimized, however, that would take a giant arrow out of the quiver of those who seek to use misdirection and half-truths to bring down the patent system. It is unrealistic to expect a patent system that is error free, but there are some mistakes that are quite difficult to rationalize as the type of error that is inevitable.
In a patent system where there are approximately 500,000 patent applications a year with somewhere between 200,000 to 250,000 issued patents a year, it is foolish to think that everything will run with 100% efficiency and accuracy all the time. But how is it possible that claims that are horribly written and terribly disjointed can be allowed after examination by a professional patent examiner?
Currently Article One Partners is looking for prior art applicable to U.S. Patent No. 6,757,068, which relates to what is described as a sourceless tracking system. See AOP Patent Study DEV-1754. The claims of this patent are extremely broad and suffer from defects not associated with prior art. A patent like the ‘068 patent is cat-nip to the anti-patent community and an all too familiar illustration that the Patent Office makes mistakes.
I’m sure there will be a lot of takers on this study, particularly when you see the claims. The particular focus is on claims 1 and 15. Claim 15 depends from claim 14, making it likewise relevant. The relevant claims read as follows:
1. A method comprising mounting a sourceless orientation tracker on a user’s head, and using a position tracker to track a position of a first localized feature associated with a limb of the user relative to the user’s head.
* * * * * *
14. The method of claim 1 further comprising: mounting a display device on the user’s head; and displaying a first object at a first position on the display device.
15. The method of claim 14 further comprising: changing the orientation of the display device; and after changing the orientation of the display device, redisplaying the first object at a second position on the display device based on the change in orientation.
I realize this is not a part of the search request, but I became dumbfounded when I read claim 1. I have taught a patent bar review course for the last 12 years and in the live courses I am responsible for teaching claim drafting as it applies to a multiple choice patent bar exam. When you break it down to its most basic there are only a few ways a claim drafting multiple choice question can be asked, and inevitably getting these questions correct requires the would-be patent practitioner to debug claims and identify which claim is correct and which claims are incorrect. It is not rocket-science from a philosophical standpoint. If you notice an error that would result in an objection or rejection then the claim is inappropriate because the patent examiner could not allow the claim.
Claim 1 is an example of something that would be deemed inappropriate on the patent bar examination because it is horribly disjointed. It should have received a rejection under 35 U.S.C. 112, 2d paragraph. Let’s dissect the claim.
This particular method, which is not defined as anything other than “a method,” requires the mounting of a tracking device on the user’s head. The method further requires some kind of position tracker on a limb of the user. That is it. So what is the method? Somehow using the tracker on the limb to track position relative to the user’s head.
So what is the problem? Is it the user’s head that is doing the tracking? No. Resist the temptation to insert elements or language into a claim in order to have what is stated actually define a working invention. If you do insert what is not present but necessarily seems required then you are going to get the question wrong on the patent bar examination, I can’t be any more direct than that.
In order for this method to operate properly there has to be an unidentified and non-described communication between the orientation tracker on the users head and the position tracker on the user’s limb. What the method defines is a method whereby the head of the user is somehow in communication with the position tracker on the user’s limb. In other words, the claim is defective and should have been rejected.
This is a classic example of how patent claim drafting is tested on the patent bar examination. A method is given and one of the incorrect answers seems to fit but assumes something not present. When dissected the action does not match up and create a working method. It assumes something not specifically disclosed, or inartfully disclosed, in order for the method to be complete and work. There is some unidentified, mysterious force at work. On the patent bar exam a claim like claim 1 of the ‘068 patent would be deemed a wrong answer choice.
In any event, the ‘068 patent originated form a patent application filed on January 26, 2001, which claims priority to provisional U.S. Patent Application filed on Jan. 28, 2000. The search is looking for prior art in the form of U.S. or foreign patents and patent applications, as well s non-patent literature. With this particular study the $5,000 Reward is guaranteed to be paid to the researcher who submits the highest quality prior art.
Article One Partners currently has 41 open and active patent studies. Some that may be of particular interest may include those that follow. To participate as a researcher to submit prior art to these or any other AOP study you can register by visiting Article One Researcher Overview.
This Study pertains to U.S. Patent No. 6,128,415, which relates to digital image processing systems, such as digital cameras, and the device profiles that capture, transform or render color components of an image. The device profile describes properties of a device and comprises two types of data: 1) data for describing a device dependent transformation of color information content of the image; and 2) data for describing a device dependent transformation of spatial information content of the image. References of interest will focus on device profiles containing data that describes a device dependent transformation of spatial information content to an independent color space.
This Study is a request for any references published prior to October 21, 1992 disclosing the structure below, wherein R is a linear structure of (longer straight alkyl chain)-phenyl-(shorter straight alkyl chain) (this end connects to the carbon with functional groups), preferably (octyl or similar)-phenyl-(ethyl or similar).
This Study pertains to three United States Patents — U.S. Patent Nos. 5,999,939, 6,996,561 and 7,958,059 — which relate to facilitating the accurate on-line entry of information into a structured database. A nonuniformly formatted source data stream, such as a document, is submitted by a user for uploading to a structured database. The source data stream is automatically parsed to extract certain data strings for entry into corresponding fields of the structured database. Before storing the extracted data strings, the extracted data strings are returned to the user via, for example, an on-line form to give the user an opportunity to accept or to modify the extracted data strings in case the parsing of the source data stream was not accurate. The accepted and/or modified data strings are then sent back to the structured database to be stored in their corresponding fields.
This Study pertains to U.S. Patent 6,173,403 and U.S. Patent No. 5,982,889, which relate to a method for distributing information products and installing such products after an “activation,” “authentication,” or “authorization.” References of interest will describe distribution of “information products” that may include documents, publications, applications, games, music, images, and video. This distribution may be on a single medium (e.g., a CD-ROM) or electronic (e.g., via the Internet), for installation on an end-user’s computer or electronic device.- - - - - - - - - -
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.