Ms. Xie is a U.S. patent attorney and partner with Global IP Counselors. She focuses her practice on preparing and prosecuting mechanical, electro-mechanical and medical-related technology patent applications. Ms. Xie has handled US and foreign applications in the automotive, bicycle component, software and computer programming and industrial mixer technologies. Ms. Xie drafts original US applications and handles all stages of US prosecution, as well as national stage filings in the US and abroad. Ms. Xie is an active member of the American Bar Association’s Section of Intellectual Property Law. She is also a committee member of the Asian Practice Committee, the Women in IP Committee and Copyright Committee of the Intellectual Property Owner’s Association, serving intellectual property owners in all industries and fields of technology worldwide.
Generally, artificial intelligence (AI) is an automation of a thing that a human being can do, or the simulation of intelligent human behavior by a machine. In other words, AI performs what a human can but with vastly more data and processing of incoming information. Unfortunately, claiming AI in adherence to its typical definition is akin to asking for a Section 101 subject matter eligibility rejection in the United States. Europe and China have already updated their patent examination procedures for AI. If the United States sustains its current examination procedure of machine intelligence in accordance with the abstract idea doctrine under the Alice and Mayo framework established by the Supreme Court, will we be leaving this industry behind?
Did you know that your claim preamble is more likely to be limiting when you’re dealing with a method claim versus an apparatus claim? In Cochlear Bone Anchored v. Oticon Medical AB, Cochlear’s claim recited a hearing aid apparatus “for rehabilitation of unilateral hearing loss” in the preamble. Cochlear was challenged at inter partes review (IPR) where Patent Trial and Appeal Board (PTAB) found the preamble term “for rehabilitation of unilateral hearing loss” did not limit the scope of the claims. The U.S. Court of Appeals for the Federal Circuit upheld the Board’s ruling, expressly finding that the statement of intended use is not limiting because the preamble did not furnish additional structure that was recited in the body of the claims, and provided no antecedent basis for any of the limitations in the body of the claim.
While it may not be common to receive a prior art rejection for a design patent, it certainly can happen, especially if the design is broadly claimed. In utility patents, the issue of obviousness is an analysis of what a person having ordinary skill in the art would find to be obvious in light of the same or similar problem. When it comes to design patents, obviousness rests on the “ordinary observer” test, which is an analysis of the claimed design and its prior art seen as a whole instead of comparing the claimed design to the prior art design element by element. While the ordinary observer test requires a consideration of the design as a whole in the context of its environment features, the claim scope remains very important in terms of how the design will be examined.
A means-plus-function limitation is a functional limitation that claims function without structure. The claimed element presented for prosecution is pure function and not structure. This type of claiming is used often with software patents, which recite function via a series of computer implemented steps to carry out a means.