Confessions of the Borat Applying Patent Examiner

Yes, it was I. The former Borat applying patent examiner turned law student. See Prior Borat: Non-traditional Prior Art Rejections! I understand why this rejection has garnered such attention. The salacious image relied upon in the rejection looks almost out of place. But as a matter of prior art, such rejections are commonplace. Publications like the Borat image, referred to as non-patent literature, are relied upon merely to teach structure (i.e., compare the structure depicted in the published image to the claims). But rejections relying on NPL often require much greater leaps of logic.

For example, consider Sakraida v. AG Pro, Inc., 425 U.S. 273, 275 n.1. In this patent infringement suit, the Supreme Court, relying on the examiner’s application of an ancient tale from Greek mythology, held patent No. 3,223,070 invalid. The patent in question, entitled “Dairy Establishment,” taught a water flush system to remove cow manure from the floor of a dairy barn. The examiner applied a myth describing the fifth labor of Heracles, wherein a stream was re-routed to the floors of the Augean stables to clean up after immortal livestock. This is a clever rejection, relying on a Greek myth to describe a system that is old and known in the art that is well within the bounds of both the MPEP and the common law. Suddenly, using popular cultural references as teachings seems obvious.

If nothing other than offering comic relief, the now infamous Borat patent rejection has hopefully illustrated at least one fundamental truth to the inventor and patent practitioner alike – don’t forget to do a thorough search of non-patent literature. I won’t bore you with citations from the MPEP. We all know what the Manual says. Instead I will attempt to provide some general insights into the examination process.

The Patent Office is a far cry from the glory days described to me by many an old-timer examiner. The idea of searching through the “shoes” (repository bins for hard copy patent documents) seems antiquated. The digital realm now means your search is basically limitless from the comfortable confines of your computer. In a way, this hurt the examination process. Something special transpired when patent examiners went from patent stack to patent stack. Examiners used to interact and teach one another the art of patent searching, and therefore examining. Now the patent landscape is vast. An examiner can sit confined in their office without ever receiving any input. An examiner’s search should extend far beyond PG Pubs, Patents, and foreign patents. Basically, think prior art can be anything. The biggest challenge may instead be finding a reference with a reliable date.

Although it is probably not every day that film or pop-culture references are relied on to defeat a patent, this is undoubtedly a viable source. More importantly, what truly defines the typical search is the nature of the claimed technology; the maturity of the technology; and the ease with which claims can be searched. Some technologies lend themselves to picture searching. Imagine hitting an up/down arrow key on your keyboard for hours, flipping through thousands of patents looking for a particular structural element. Some technologies are simply rich. They have been around for a long time and have been modified, altered, and combined to the nth degree. In these cases, so many patents exist that the examiner may not have to look outside the patent literature. Biotech requires the examiner look to journal articles. Stringing together lists of search terms can be dangerous. A word search is only as good as the selected terms, but sometimes essential. And some technologies, including but not limited to “mankinis,” lend themselves to a simple Internet search.

Although methodologies may differ, the following method is a solid approach to searching any structural or mechanical device especially when an iconic scene from a film doesn’t immediately jump to mind. When I was examining medical devices I would open up a new case file and go right to the claims. Before reading the title, the abstract, the specification, or viewing a single figure, I would attack the claims element by element. After carefully reviewing all of the claims once, I would literally sketch figures coinciding to each independent claim. I would sit back and compare my sketches to the claims. I would then think about alternatives. How else might one draw the claimed device? This was essential to ascertain the breadth and scope of the claims. Then I would be certain of what the claim was and wasn’t reciting. I would be sure that I did not impart structures or relationships among different structural elements if they were not explicitly claimed. I would then consider if I needed any other drawings to cover dependent claims. I would also think about the specific terms used in the claims. What structure, meaning, or function, if any, did the terms impart? Then I would start my search. Although I always read the entire disclosure, I found it more useful to at least start my search before reading the specification. I didn’t want the specification teaching me the nature or character embodied in the device. Instead, I let the claims be my guide. This sketching method was even useful for method claims. If only Markman hearings provided such a rational approach to claim construction.

I was shocked by the effectiveness of my approach. I found myself going back to my sketches even in interviews with attorneys. Often the attorney wanted to talk to me about how the claimed invention was different than the prior art I had applied without addressing what the claims actually recited. I wondered if this was because the attorney became so far removed from the claims from having the figures, specification, prototypes, and inventor disclosures in mind.

Although the MPEP provides that Examiners should conduct an initial search which is as complete as possible, in keeping with the scope of the claims as well as disclosed features and subject matter which the examiner reasonably anticipates might be incorporated into the claims (see MPEP 714.12), the harsh reality is that in many cases the search begins and ends with the claims. The Office specifically reminded examiners of the goals of compact prosecution when it issued its Guidelines for Consideration of Responses After Final Rejection under 37 CFR 1.116(b) under the After Final Consideration Pilot (AFCP). What does this mean for the practitioner moving forward? Most practitioners will provide a representative set of claims always keeping in mind possible fall back positions properly disclosed in the specification. But it also seems that as a matter of strategy, disclosures are written as a practice in obfuscation. It is as if the applicant never wants to get pinned down on what the invention is or isn’t and/or which embodiments are being claimed.

So how to solve this problem? One approach: making sure that which you can envision being in a claim later ought to be somewhere within the original claim set, perhaps a very specific claim, to address the reality that many examiners search the claims and not the disclosure, despite what the USPTO and practitioners may desire. But again, this sort of practice seems antithetical to examiners and practitioners that seem driven by their misplaced adversarial ambitions. No doubt there are examiners that hold on to the patent defeating reference in interviews. No doubt there are practitioners that hide the ball and fight tooth and nail to claim the world without considering future invalidation. We should all be working together to drive innovation. Of course all of the digital tools employed today to perform a search are invaluable, when you sit down to draft your claims don’t forget about common sense and common cultural knowledge – whether Borat or Greek mythology.