Prior Borat? Non-traditional Prior Art Rejections!

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.

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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).

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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 principal 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.