Today's Date: November 23, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

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

View Gene Quinn's profile on LinkedIn

Tell A Friend!



#The 1 Patent Bar Review Course
LIVE or HOME STUDY ~ CLICK HERE to REGISTER
Call 888.296.5973 and mention "IPWatchdog" to save 10%


Fig. 1 of U.S. Patent No. 6,757,068.

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.

Device profiles for use in digital image processing

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.

Immunosuppressive compounds

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).

System and method for interactively entering data into a database

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.

Method for distributing information products

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.

- - - - - - - - - -

For information on this and related topics please see these archives:

Tags: , , , , , , , , , ,
Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patentability, Patents

About the Author

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.

 

10 comments
Leave a comment »

  1. Gene,

    I agree that Claim 1 of the ‘068 patent is written horribly. For example, it’s not clear to me: (1) what the sourceless orientaton tracker does; (2) what is the interaction between the position tracker and the orientation tracker; and (3) what is the position tracker associated with (if anything). Also, instead of “using a position tracker to track a position,” I would had simply said “tracking with the position tracker a position.” (I might have also come up with different phrase besides “position tracker” to minimize reduncacy and possibly confusion with the orientation tracker”.) As you said, Claim 1 is fraught with 35 USC 112, second paragraph, issues.

  2. Gene,
    While I personally agree that the claim is horribly written, & I don’t particularity like it, I have to disagree that it needs a 112, 2nd, rejection.

    The claim requires the steps of:
    (1) mounting a sourceless orientation tracker on a user’s head, and
    (2) using a position tracker to track a… the user relative to the user’s head.

    The claim is extremely broad and does not recite any connection between the 2 steps, other than the user recitation.
    However, no connection is needed for 112, 2nd, purposes. The meets & bounds of the claim can be ascertained (i.e., if you perform the 2, admittedly unconnected, steps, however, you perform them, you would infringe the claim).

    Agree that it is very broad. Disagree that one can not determine the scope or if you are infringing it.

    My 2 cents, anyway.

    MVS

  3. MVS is correct. There are no 112, 2nd issues with the claim. 112, 2nd is not a license, during prosecution for an examiner or during litigation for an attorney or judge, to demand that applicant write the claim in a manner acceptable to the examiner, accused infringer and his/her attorney, or the judge. 112, 2nd is for applicant to particularly point out and distinctly claim what applicant regards as the invention. So as to EG’s questions as to “(2) what is the interaction between the position tracker and the orientation tracker; and (3) what is the position tracker associated with (if anything),” if applicant doesn’t regard the particulars of the “interaction” beteen the position tracker and the orientation tracker to be, for the purposes of claim 1, to be what applicant regards as the invention, then applicant is not required to put it in the claim.

    I’m surprised to see Gene and EG falling into the classic examiner mindset that somehow one of ordinary skill in the art must be able to make and use the invention simply by reading the claim (i.e. that the claim itself must be enabling). When I get 112, 2nd rejections from the examiner to the tune of, “It’s not clear how element A is connected to element B” I respond simply with, “There is no requirement in 112, 2nd that it be clear, FROM THE CLAIM, how element A is connected to element B.”

    As for Gene’s “This particular method, which is not defined as anything other than ‘a method’,” I wasn’t aware that 112, 2nd required anything more than that. Are you saying that the claim is indefinite because it doesn’t have some fluffery type preamble? That’s a rather odd position to be sure.

    It’s nice to know that at least one person at the PTO understands what 112, 2nd requires. I hope MVS is shooting the typical crappy 112, 2nd rejections down whenever he can.

  4. I have to disagree with AAA JJ and MVS.

    First, allow me to specifically point out the context in which I said this was defective from a 112, 2d paragraph standpoint. I was talking about how things are tested on the patent bar examination. I can guarantee you with 100% certainty that this claim would be considered defective under 112, 2d paragraph (at a minimum) if it were to be tested on the patent bar exam. There is absolutely no doubt.

    Second, I disagree with AAA’s statement: “if applicant doesn’t regard the particulars of the “interaction” between the position tracker and the orientation tracker to be, for the purposes of claim 1, to be what applicant regards as the invention, then applicant is not required to put it in the claim.”

    That is a horribly overbroad statement said as if it is true in all cases, which is clearly is not. What you are doing is parroting MPEP 2171 and treating it as if it is an absolutely correct statement in all cases, ignoring the requirement that claims actually define a complete invention, be precise, clear and free of ambiguity. Taken to its logical extreme AAA’s statement would mean that kit claims are allowed, which is not the case unless you are specifically claiming a kit. Consider this: “A shovel comprising a handle and a head.” Is that a good claim so long as the mechanism of connecting the handle and head is not regarded by the applicant as the invention? Of course not. If the preamble were “A kit…” then this particular claim wouldn’t be as problematic from 112, 2d purposes and neither would the disjointed method claim.

    MPEP 2171 also goes on to say: “Although an essential purpose of the examination process is to determine whether or not the claims define an invention that is both novel and nonobvious over the prior art, another essential purpose of patent examination is to determine whether or not the claims are precise, clear, correct, and unambiguous. The uncertainties of claim scope should be removed, as much as possible, during the examination process.”

    The problem with claim 1 is that it does not define a complete invention. Things are left dangling in space and there is no “there” there.

    Finally, I suspect we can go back and forth on this point all day long if we wanted to, which is fine. I’m happy to do that. At the end of the day anyone who is honest with themselves, however, has to realize that this is a poorly drafted claim. It introduces unnecessary question into what the claim covers and that is not what a good claim should do.

    -Gene

  5. “… ignoring the requirement that claims actually define a complete invention, be precise, clear and free of ambiguity.”

    MVS is still correct. There is no ambiguity in the claim. It is free and clear of ambiguity. What would constitue infringement of the claim is precisely set forth. If you perform the two steps recited in the claim, you infringe the claim.

    The claims must define a “complete invention”? What is a “complete invention” because I’m not seeing that in 112, 2nd. That section of the code requires applicants to particularly point out and dinstinctly claim the subject matter regarded as their invention. I don’t see any requirement that applicants particularly point out and distinctly claim what they regard as their “complete” invention.

    BTW, I’m not parroting any section of the MPEP. As for MPEP 2171, there is still nothing wrong with claim 1. There is no uncertainty as to its scope for the exact reasons MVS laid out.

    I’m also aware of the context you set forth, i.e. that it is for patent bar examination purposes. As the patent bar questions are, as far as I know, written by the PTO, while the “correct” answer may be that the claim is defective under 112, 2nd, the correct legal answer is that the claim is not. The PTO, with the apparent exception of MVS, is chock full of people who don’t understand 112, 2nd, and many, many other sections aspects of 35 USC. Gene, you of all people should know that the PTO “party line” on what the law is is not really a convincing argument.

    ” Consider this: ‘A shovel comprising a handle and a head.'” I’ve considered it. There are no 112, 2nd issues with it. It’s broad, yes. But it’s not indefinite. It would be fairly simple to determine if an alleged infringing device infringed it.

    “Is that a good claim so long as the mechanism of connecting the handle and head is not regarded by the applicant as the invention?” If you mean is it “good” under 112, 2nd, then of course it’s “good” under 112, 2nd. What is uncertain about what the claim would actually allow the inventor exclusive rights to?

    I’ll say it again, 112,2nd is not a license for examiners, attorneys, and judges to force applicants/patentees to add limitations to claims that may be regarded as “too broad” in a misguided attempt to correct some perceived overbreadth. That is what the prior art is for. Not 112, 2nd.

    Please feel free to put your examiner cap on and write a 112, 2nd rejection to claim 1 at issue here and I will post what I would respond were I applicant/attorney handling the case. So far I haven’t seen any objection from either you or EG that is actually something 112, 2nd would require. But I’m open minded and if you can convince me that there is some 112, 2nd issue with the claim, I’ll acknowledge it.

  6. AAA JJ and MVS,

    I see your point, especially wiith regard to what the “position tracker” is associated with. What concerns me about Claim 1 is that you could also write it with simply the “mounting” step or the “using” step because those two steps don’t appear to be interrelated in any significant way (other the “user” and the “user’s head”). But when you put those two steps together, without indicating at all what the mounted “sourceless orientation tracker” does relative to using the “point tracker” in the second step, you’re left wondering what, exactly, is the mounted “sourceless orientation tracker” is doing in this method. I also wonder how Claim 1 would fair in view of Bilski.

  7. EG-

    I think in light of Bilski and other patent eligible subject matter cases there is a large likelihood that claim 1 wouldn’t even get to 112, 2d outside the USPTO. The USPTO wants examiners to push through 101 to get to 112, but the Courts don’t seem to be as interested in that. Further, there are plenty of patent examiners in Art Units that deal with business methods that would never allow claim 1.

    Whether it should be this way is one question. Whether it is this way is another question altogether.

    Cheers.

    -Gene

  8. “But when you put those two steps together, without indicating at all what the mounted ‘sourceless orientation tracker’ does relative to using the ‘point tracker’ in the second step, you’re left wondering what, exactly, is the mounted ‘sourceless orientation tracker’ is doing in this method.”

    EG, I understand your confusion, but again I think this goes to the notion that somehow the claims themselves are required to enable making and using the invention. They don’t. All the claims have to do is clearly define what is regarded as the invention. Claim 1 in this instance very clearly puts the public on notice as to what would constitute infringement.

    Whether the claim is valid under 102, 103 or 101, I have no opinion.

    And yes, the claim could have been written only with the “mounting” or “using” step. But it would still be definite. Overly broad? Yeah, probably, but that’s not an issue for 112, 2nd.

    BTW, I’m a regular reader, and usually agree with you and Gene. Not every time, and obviously not this time. I find you and Gene to be voices of sanity in the growing-ever-louder-anti-patent-hysteria sweeping the blogosphere. Please keep up the good work.

  9. Dear AAA JJ,

    No problem at all in having a different viewpoint on this issue, I welcome other “illuminating” thought (and thanks for the kind words). I guess what gives me a headache with Claim 1 is that the “mounting” step and “using” step are analogous to what we used to call in apparatus claims an “aggregation” (or sometimes referred to as “so many elements in a box). (And yes, while I’ve got a chemistry background, I did read Landis’ book on claim drafting which described such “aggregations” as being a claim drafting “no-no.”) When you have steps like these which appear to be disconnected, you start to wonder what, exactly this method is trying to do.

  10. AAA JJ, thanks for the support & kind words. :) In the AU I came up in we always told the examiners that breadth is different from indefiniteness. The TC tries to do the same, at least when cases are reviewed at sig panels & the like. Of course, individual cases/examiners will vary, unfortunately, But the general policy for really broad claims is not the 112, 2nd, route but to find good prior art.

    Gene, EG, I appreciate your positions. And for good claim drafting procedures, I personally do agree that the clearer the claims can be drafted the better for everyone. And the more detailed, the easier they are to examine. Could the claim have been drafted better? I think so. But that does not rise to the standard of 112, 2nd, for examination purposes. For test purposes, it may be a different issue. Particularly if you are trying to train practitioners to draft the claims as best they can be rafted and not just be “good enough”. But again, different standards.

    BTW, enjoy the blog but don’t get to respond as often as I would like. Though, more often than not, I do tend to agree with you anyway.

    MVS

    DISCLAIMER: Please note, none of my comments are to be considered to be any official opinions about the validity (positive or negative) of the claims quoted in the original post. Issued claims are presumed to be
    valid until proven otherwise in court or other official proceedings. I am more disguising when examiners should or should not make 112, 2nd rejections.