Nick’s company was doing well, and their new can opener sales were through the roof. We met to review a rejection of his utility patent application.
The patent examiner had used a couple of prior art references to reject the claims, but one document really stood out. As Nick looked it over, he made his frustration clear: “This is an old patent about a boat. We invented a can opener, Dave, not a boat! What’s wrong with this examiner?”
It did seem odd at first, but I looked through the older patent with him. In one section of the patent, they described the boat’s galley equipment. There it was – the patent had an illustration of an automatic can opener that was quite similar to the one Nick was selling. That can opener was definitely different, but it turned out our claims described both Nick’s can opener and the one on the boat. So we needed to clarify what we meant.
This was straightforward enough, as these things go, but Nick was still unhappy. “I don’t understand. We didn’t invent a boat. Why can she cite a boat patent against us?”
The patent examination process can be frustrating. Here are some pointers for better understanding situations like this one:
1. It’s About You, Not Them
Your invention must have something that’s missing in the other guy’s invention. It doesn’t work the other way around. In other words, the question is always “what’s your special sauce?” and never “what’s their special sauce?”
The examiner is searching the prior art for what you have listed in your claims. If she finds those features, then she stops looking. It’s irrelevant whether the prior art document includes other things as well.
In Nick’s example, the examiner was simply looking for the can opener. Once she found it, she didn’t (and shouldn’t) care if the can opener happened also to be on a boat.
2. Sometimes, the Examiner Does Go Too Far
In some cases, the cited prior art is so far outside the field you’re in that it doesn’t make sense for the examiner to use it against you. For example, maybe the examiner says Nick’s invention is just a combination of an everyday can opener with a safety feature she found in an old iron smelting furnace. We might argue that folks in the can opener business don’t look to the smelting industry for ideas. It’s simply not an obvious thing to do.
However, you can’t always use this “nonanalogous art” argument. For example, if the invention is *exactly* the same as yours, then it still counts against you. This is because your invention must be new in some way, or it’s not an “invention.” Also, this argument wouldn’t apply in the boat example. There, the thing used to reject Nick’s can opener claims was also a can opener. It just happened to be located on a boat.
3. Maybe the Context Suggests an Argument
As mentioned above, sometimes the prior art reference describes aspects of your invention alongside something that’s actually quite different. In some cases, this context can give you a clue about how your invention really is new. For example, maybe Nick’s can opener invention has a unique, always-on webcam feature that uses AC power and an Internet connection . If the prior art can opener is on a boat, then it probably runs on DC power from the boat’s batteries, and would be unlikely to support a connection to the Internet. This could suggest a meaningful difference we could use to clarify the claims.
If you’re wondering why the Examiner seems to be confused, or why the prior art references are on an unexpected topic, talk it over with your patent attorney. As always, feel free to contact us with any questions. We deal with this sort of thing every day, and we’re always happy to chat about your company’s IP situation.
Be sure to visit our Ultimate Guide to Patents for Your Business
Photograph © 2020 Dave Bourgeau
Blog Post © 2021 Kolitch Romano LLP
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.