Third Party Submissions

by Dennis Crouch

To the extent that folks are studying this, the following is a list of the 111 applications for which third parties have submitted prior art references under pre-issuance submission authorization of the America Invents Act.

In December, PTO Director David Kappos reported that the PTO had received 270 third party submissions.  The PTO’s figure represents the number of submissions but the report fails to mention multiple submissions per application.

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The first case from the list that I pulled-up with an Office Action is U.S. App. No. 12/829,968 owned by Alcon and that claims an implantable sensor that fits in the anteriour chamber of a patient’s eye. 

1. A sensor comprising:

a housing having a configuration that generally conforms to a curvature of an anterior chamber of a patient's eye; and

a sensing device disposed in the housing and configured to detect physiological parameters and transmit a signal representing the physiological parameters.

The anonymous third party submitted a german patent application as a reference and now that application has served as the basis for the USPTO rejection of the claims. The Office Action also rejected the claims as being indefinite based upon the claim term “generally.”  The examiner writes:

The term ‘generally’ is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and the one of ordinary skill in the art would not be reasonable apprised of the scope of the invention. As such, it is unclear what is claimed by ‘generally conforms.’

Citing 35 U.S.C. 112(a).

The examiner also rejected the claim for lacking subject matter eligibility under 35 U.S.C. 101 because the claim is “drawn to a body part.”  The examiner suggested that a cure for the perceived problem would be to claim that the device is “configured to” conform to the patient’s eye. 

105 thoughts on “Third Party Submissions

  1. Did I misremember the details of the catheter case?”

    Yup.

    My apologies then. As I noted, however, whether it was disclaimed or merely canceled, the USPTO’s obsession as to whether claimed articles of clothing or worn/inserted devices “encompass” human beings or parts of their bodies is very odd. Someone there is confused.

    Assuming a limitation reciting an embryo was simply deleted from the claim (and not disclaimed), what possible difference would that make? The claim still reads on the new catheter, whether the embryo is in the catheter or not (and there will certainly be an embryo in the catheter at some point and the catheter will not suddenly turn into a non-infringing device at that point).

  2. Have you applied BRI in your claim reading?

    Have you applied the typical examiner’s version of BRI in your claim reading?

  3. If the patent issues, and the patentee/assignee sues me for infringement for having eyes, I will definitely contact you to defend me.

  4. Good. If the patent issues, you get to keep your eyeballs. We probably all get to keep our eyeballs, because no matter what the claim says, it would be absurd to agree with me.

  5. Did I misremember the details of the catheter case?

    Yup.

    link to patentlyo.com

    (notably, the subtitle could be Cured by Integration)

    And yes, another thread where you disappear when answers should be fortchcoming from you.

  6. btw – do you recognize the difference between expressly disclaimed and removing a human embryo (as claimed) from the claim?

    I do. Did I misremember the details of the catheter case?

    Assuming a limitation reciting an embryo was simply deleted from the claim (and not disclaimed), what possible difference would that make? The claim still reads on the new catheter, whether the embryo is in the catheter or not (and there will certainly be an embryo in the catheter at some point and the catheter will not suddenly turn into a non-infringing device at that point).

  7. It’s a bit of a strain to call anything naturally occurring in the eye a sensing “device”

    Nice. But that’s not what he said, was it?

    typical IANAE crrp.

  8. Right. Because everybody with an eye is infringing this claim.

    “But this claim, read in light of the specification and consistent with the artisan’s view, clearly reads on the vertebrate eye…”

    No. It doesn’t.

  9. Believe it or not, I have heard that one before. It is one of my favorites. But I only have two ears, being a suburbanite.

  10. Yeah, and it is perfectly reasonable to assume that plaintiff’s counsel will be perfectly reasonable! When I defend an accused infringer, it costs hundreds of thousands of dollars to get the judge to read the claims in light of the specification, consistent with one of two opposing experts view of ordinary skill. I am happy to see the PTO insist on clarification before the patent issues.
    But this claim, read in light of the specification and consistent with the artisan’s view, clearly reads on the vertebrate eye, especially if the embodiments used to illustrate the invention are viewed as non-limiting. They are always non-limiting, aren’t they?
    So, I think that as long as the claim is understood and applied by the ordinary patent attorney, it covers the vertebrate eye.

  11. Does that hat have a magic hatband with (gasp) written matter?

    btw – do you recognize the difference between expressly disclaimed and removing a human embryo (as claimed) from the claim?

  12. It is not so hard to do, while avoiding incorporating any body parts as elements of the glove.

    This issue has come up before and there’s something very funky about it. Specifically, I understand the issue with a claim that literally covers a modified human body (e.g., a genetically engineered human being) or a modified human body part (e.g., an engineered cell or organ produced by injecting recombinant DNA into a patient), such that the claim is (arguably) directly infringed by the person comprising the modification. That presents what I would call a “walking infringement” problem, where a treated patient becomes the direct infringer merely by existing.

    But I don’t see what the concern is when the claimed invention is not a modified body part but simply something that can put in or around a body. The claim is infringed because someone has made, used or sold the composition without permission of the patentee. Once the object is purchased, however, the rights are exhausted and the purchaser can do whatever he/she wants with the object. He can put it in someone else’s body or on someone’s else’s body. The third party doesn’t infringe. So who cares? If this same object is not lawfully purchased, it’s use constitutes infringement whether it’s implanted or worn or not. Consider a typical patent on a novel glove or hat. Let’s say I make the glove without a license, assembling it directly on my hand or my head. I’m then accused of infringement. If the PTO’s weird logic is followed I could successfully invalidate the patent by arguing that the patentee failed to expressly disclaim my hand or head. That’s seem like an absurd result. And utterly pointless. But the PTO seems to want to go there, repeatedly (see, e.g., the recent kerfuffle with the novel catheter being ineligible because a human embyro could fit inside it and that “embodiment” wasn’t disclaimed — what the heck??).

  13. I did:

    Do you really think that just by sending a letter registered mail that you can dupe a system of screening attorneys from the unsavory practice of trying to trick them? Really? Does that actually need an answer? (Or more likely, as such an easy step never occurred to you?)

    (you might try understanding the difference between personal and business mail, and what a firm is allowed to handle (regardless of registered mail address), and then check to see where you misplaced your ethics in thinking that such a slimy trick is “ok.”

  14. what is the mechanical equivalent of “isolated”

    LOL – you better wait on that, as “isolated” by itself may not be enough.

  15. And when there’s nothing “actually wrong with the claim” but the examiner refuses to withdraw the rejection because the examiner is “building a record” and doing a “record breaking outstanding quality job” by refusing to allow a perfectly acceptable claim so that they can force applicant to make a “harmless amendment” so that the examiner can run to his SPE and say, “See, they amended!!!” and ask to allow the case, what do you do?

    I wouldn’t give a rat’s f#rt about you playing this silly game of “wink, wink, nudge, nudge” with the examiners and making your unnecessary “harmless amendments” if it didn’t build up in the examiners an expectation that I’m also going to play along. If my claim is allowable and the examiner’s position is ridiculous, I’m not going to make a “harmless amendment” just so that the examiner can say, “See, I’m forced them to amend. I’m doing a great job.”

    You shouldn’t either.

  16. Talking about body parts Davy, I gather you yourself are a bit special. I have heard told that you have not two but three ears, namely a left ear, a right ear and a wild front ear.

    Sorry. Couldn’t resist it.

  17. You could read any claim on a human body? Add the word “microprocessor” or “catheter” or screw, or hypotube, or stent, or polyurethane, and it gets a bit difficult.

    The body’s full of electronics and tubes (even tubes that expand and contract) and fasteners. Polyurethane is probably more limiting than you’d want in a claim.

    Considering the context of this discussion, imagine an examiner who very much wants to read a claim on a human body part, and find a way to draft the claim so he unambiguously can’t. In short, what is the mechanical equivalent of “isolated” for nucleic acid sequences?

  18. I’m also wondering if your counsel’s insurance carrier is aware that mailroom staff are throwing away registered letters addressed to attorneys. Please ask your counsel if his/her insurance carrier is aware of this activity and let us know the answer.

    Answer the question.

  19. Try claiming a glove without referencing a hand. It is not so hard to do, while avoiding incorporating any body parts as elements of the glove. It is commonplace to define medical devices in relation to anatomical landmarks. So long as those anatomical landmarks are overwhelming unambiguously configured and located, it is a very definite way to define a device.
    Do you see problems with this common approach?

  20. But in response you just made a “harmless amendment” right?

    Depends on what’s actually wrong with the claim, and how harmless the amendment is.

    In general, claim drafting problems have claim drafting solutions. And they’re way cheaper for the client than a pointless appeal on the grounds that “I appeal everything”.

  21. After decades of practice, I could not tell you what a device is. But it is common parlance to refer to the body and its components as machines, and that is enough to establish that, in the art, the term “device” would be appropriately understood.
    You are correct, “configured to be shaped like an eye” does not fix the problem.
    You could read any claim on a human body? Add the word “microprocessor” or “catheter” or screw, or hypotube, or stent, or polyurethane, and it gets a bit difficult.
    You could also read this claim on the tip of an EP catheter. I understand that the anterior chamber of the vertebrate eye is convex from the outside, concave from the inside (it is the volume between the cornea and the lens). The round tip of an EP catheter would “conform” and it definitely meets the sensing limitation.
    There may be many was to limit the claim to what was invented, without encompassing the human eye or a myriad of other sensors with a convex portion. Sometimes, for medical devices, you have to resort to method claims which are reliant on device limitations.

  22. “It’s a bit of a strain to call anything naturally occurring in the eye a sensing ‘device’, but I’ve seen examiners do worse.”

    But in response you just made a “harmless amendment” right?

  23. “It is trivially easy to see that the claim reads on the eyeball of any species.”

    Right. As long as you don’t bother with that whole “read in light of the specification” and “consistent with how one of ordinary skill in the art would interpret” deal. Then yeah, it’s perfectly “reasonable” to read the claim on the eyeball of any species.

  24. It is trivially easy to see that the claim reads on the eyeball of any species.

    It’s a bit of a strain to call anything naturally occurring in the eye a sensing “device”, but I’ve seen examiners do worse.

    I still have two problems with this approach. One is that “configured to be shaped like an eye” doesn’t fix the imagined problem with the claim, so the examiner clearly hasn’t thought about this very hard.

    Another problem is that you could read almost any claim on a human body part if you’re trying that hard. What about a “generally spherical housing” with a sensor inside? The claim makes no mention of a human anything, but you could read it on an eye or probably even a variety of human cells.

    How would you overcome this without unduly limiting a legitimate claim to a prosthetic medical device? You can’t claim a polymer composition, the body is full of those. You can’t claim a wired or powered sensor, the body is full of those. You could claim “configured to be inserted in a patient’s eye”, but that’s not an explicit structural limitation, and you could still read it on eye parts.

  25. I would love to find the missive that forbids use of wikipedia and the Archive. I can prove that the Archive applies very old dates to new material (using my own website), and yet examiners insist the Archive is infallible.

  26. Hadn’t thought about that: the medic’s eyeballs meet the claims: The medic’s eyeball is a housing that conforms to his eyeball (at least, his other eyeball). If he is watching a patient who is bleeding, sweating, breathing, his eyeball is sensing and transmitting the recited signal.
    Clearly, the drafter of the claim meant something else. But he did not say something else.

  27. It is trivially easy to see that the claim reads on the eyeball of any species. The sclera is a housing that perfectly conforms to the curvature of the anterior chamber of the eye (the sclera conforms to itself, and to the eye socket). Any pain nerves anywhere inside the sclera would be sensing devices. Nerves undoubtedly transmit signals. Any wound to the retina or lens would trigger a wound response, with a myriad of blood cells detecting physiological parameters and transmitting representative signals. Anatomists might be able to identify a number of other biological sensors (how the eye maintains proper pressure of the vitreous humor, for example).
    But I suppose that many patent attorneys knowledgeable about medical devices could immediately recall sensors that conform to the shape of the eye (to some extent) and that sense physiological parameters.

  28. What was the lie MM? Was it like your lies on the legal status of the exceptions to the printed matter doctrine, or that “configured to” is structural language?

    What was the lie MM? That staff can effectively screen mail for attorneys handling patent matters?

    What was the lie MM? That you are (once again) projecting yourself and accusing others of what you do (that’s not really a lie, now is it?)

    Do you really think that just by sending a letter registered mail that you can dupe a system of screening attorneys from the unsavory practice of trying to trick them? Really? Does that actually need an answer? (Or more likely, as such an easy step never occurred to you?)

  29. hanks for mischaracterizing

    I didn’t mischaracterize anything, anon. Why are you acting like such an exceptional pr–ck today?

  30. You haven’t worked in a firm with a mailroom, have you MM?

    Of course I have.

    You have no idea how a spam filter would work with snail mail, do you?

    I’ve never received spam by registered mail. Tell me exactly how your counsels “spam filter” works, anon, to screen out “bad” letters sent by registered mail from “good” letters sent by registered mail. This is the second time I’ve asked you to answer this question. Are you going to keep ducking?

    I’m also wondering if your counsel’s insurance carrier is aware that mailroom staff are throwing away registered letters addressed to attorneys. Please ask your counsel if his/her insurance carrier is aware of this activity and let us know the answer.

    Or you could just admit that you just told a big fat whopping lie, anon. ROTFLMAO!! As if that’ll ever happen.

  31. You haven’t worked in a firm with a mailroom, have you MM? You have no idea how a spam filter would work with snail mail, do you?

    Once again, you try to talk “high and mighty” out of your corner of ignorance.

  32. It’s not difficult to screen this type of incoming material – you might have to have staff that can read.

    LOLOLOL!!!!! And exactly what do you tell your “staff” to look for when they receive and open these letters?

    You do realize that your counsel will be sent the letter registered and the receipt will show that your counsel received the letter. When you claim to have not known about the material reference at trial, the receipt showing that the letter was received will be put into evidence. Then you can explain to the judge your procedures and reasoning for hiring “staff” to screen out material prior art to the judge.

    ROTFLMAO. This is a new one. I’m pretty sure you just made this up on the spot, anon. Either way, it’s hilarious.

  33. purposefully deceitful way

    There’s no “deceit” involved, anon.

    But please keep digging. Also, there’s a lot of questions for you upthread that you have ducked out of answering. I wonder why? LOL.

  34. I’ve seen the replies from the clowns who boast that they’ve never had to appeal. Never once gotten a client the claims they were entitled to.

    Heckavu job.

  35. I’ve characterized rejections as “nonsense” many times. Never had a problem getting any of those rejections withdrawn. In fact I find that “no nonsense” responses like that often produce the desired result.

    The reason examiners make nonsensical, bogus, legally meritless rejections is: 1) because the examiners think it makes them look like they are doing a record breaking outstanding quality job and 2) a lot of practioners will make a “harmless” amendment in response, or pick up the phone and call the examiner and ask, “Gee, what can I do to overcome the rejection?” Those practitioners s#ck. And they make it harder for the rest of us because the examiners get the sense that those rejections actually have merit when they don’t. “Why would they amend if the rejection is no good? I must be doing a great job.”

    Sheesh.

  36. Actually, AAA JJ, my favorite expression now for responding to absurd Examiner logic, especially in an Examiner’s Answer, is to characterize what the Examiner says as “rhetorical nonsense.”

  37. No ethical issues whatsoever

    You didn’t read either of our posts carefully enough.

    Clearly using the US mails in a purposefully deceitful way is fraught with ethical concerns (at the least).

    And last I checked, “because everybody’s doing it” is not the proper ethical screen.

  38. The unethical part is the ambush/masquerade of using somebody else’s law firm in an attempt to trick art to be of record and/or use a trumped up inequitable conduct charge (oh, that’s right, you don’t believe that IC was a scourge – too bad the Therasense court and the Office and Congress don’t agree with you).

    It’s not difficult to screen this type of incoming material – you might have to have staff that can read. For you to imply a small office betrays your own operations – a typical MM self-defeat.

  39. Wow, anon, ignorant AND rude. Newsflash, a-nothing: in the old days, sending copies of prior art to applicant’s counsel was *exactly* what one would do, and there are hundreds if not thousands of us (including Chas) who have done it. No ethical issues whatsoever. Also no guarantees that applicant’s counsel would bring this to the attention of the PTO, but the possible inequitable conduct charge should a patent be granted and then enforced without the art being made of record was usually enough to get it on file.

    In reply to Chas, the advantage of the present procedure is that you can point with specificity to relevant passages of the prior art pubs, which applicant’s counsel didn’t necessarily do. In either case, if the pub is brought to the PTO’s attention and the examiner ignores it, you may be in a worse situation than if you held on to the pub for use in a defense against the patent.

  40. … anything that looks like unsolicited prior art.

    How does one tell whether an unsolicited registered letter contains prior art or not? Just curious. How much mail does your counsel refuse to accept?

    Must be a really small office …

  41. You have, at the least, highly questionable ethical issues with what you historically do

    What’s unethical about anonymously sending material prior art to a patent applicant along with an explanation of why the art is material?

    There’s a reason why our counsel is screened from … anything that looks like unsolicited prior art.

    What’s the reason?

  42. I certainly hope that you are nothte attorney on the other end of the link.

    You have, at the least, highly questionable ethical issues with what you historically do, and at the most, possible fraud (what do you think your friend at the distant law firm is signing his name to?). The fact that you advertise yourself as associated with the Utah bar is fairly reprehensible – I certainly hope the bar does not share your view of practicing law with shams and ‘gotcha’ type tricks.

    I would love to face you in court and have you had attempted such a stunt. $anction$

    There’s a reason why our counsel is screened from unsolicited mail, even (and especially) anything that looks like unsolicited prior art. I certainly hope that most major firms protect themselves this way.

  43. Well; the 3rd party in 13/536,353 is actually attempting to rely in part on non-vetted, content-variable/editable, date-uncertain, unreliable Wikipedia and the Internet Archive.

    Didn’t the patent office order the examiners to stop using Wikipedia a few years ago? Hope they included the Archive when they did so.

  44. I’ve historically done “third-party submissions” by simply mailing the prior art to counsel for the applicant with a note explaining why it is material (this can be done anonymously by having a friend at a distant law firm send the letter). If the applicant then fail to cite the art, they run the risk of being accused of inequitable conduct. Are there any advantages to the new, formal third-party submission process that aren’t achieved by my poor-man’s version?

    Thanks.

  45. there is no harm in making otherwise needless amendments and giving up DOE

    What “equivalents” are given up by reciting “implantable” that would otherwise be available to this applicant?

  46. Are you reading “more or less spherical” into the claim?

    It’s actually way more vague than corresponding to the volume of the chamber. If you look at the patent drawings, it’s a C ring that fits inside the chamber.

    If you have to read the claim to cover that embodiment, and you know they will in litigation, it’s basically a claim to “whatever happens to fit inside”. Which should never be granted unless the “inventive” shape is better specified.

  47. Because there is no harm in making otherwise needless amendments and giving up DOE (DOE isn’t required for MM picture claims, so why should anyone else need that stuff?)

  48. Les, and we can infer it is a human eye, right? All human eyes are much the same shape and size, even from birth, I understand. Not so much variation in eye socket diameter as cranium diameter then, I suppose, regardless how in real life it seems that some people have big eyes and some have small ones.

    I was thinking that a tool with a soft sensor pad 5mm x 5mm able to adapt to the curvature of a human eye socket complies with the claim just as much as a hard spherical sensor surface of the right diameter. Are you reading “more or less spherical” into the claim?

  49. True. Given the pedantic, silly nature of some of the rejections that is certainly a possibility. I wonder if any of the reviewers is going to point out that the enablement rejection on page 12 doesn’t discuss even one Wands factors. Heck, it doesn’t even acknowledge the Wands factors. The rejection is so far from an actual prima facie case of non-enablement that it’s hard to conceive of how it could be more deficient. Maybe just a plain statement of rejection with nothing else.

    My guess is that the examiner will pass the part sig program with flying colors.

  50. Please do enlighten us with any suggestions you have.

    Get on the phone. Amend the claim to recite “implantable” or some other painless amendment along the lines that the Examiner has suggested.

  51. Often a quick phone call will straighten things out.

    You’d be amazed at how many times you say “really?” and the examiner says “lol jk, not really”. And then you get the case allowed.

  52. Though such 3rd party submissions are not specifically directed to the claims of the targeted application, seems like it still might be a strategic consideration for applicants to have just one “placeholder” claim in their initial application; with the complete claim set being entered once the 3rd party time window has closed.

  53. “Thankfully it’s really easy to address that ‘silliness’.”

    Please do enlighten us with any suggestions you have.

  54. That’s the level of your QQ on what is the primary driver of the mountains of backlog?

    The primary driver of the “mountains of backlog” is easy to fix 101 rejections in medical devices?

    That’s a new one.

    you’re in the “always blame the applicant” circle.

    Actually I’m extremely critical of the quality of examination at the USPTO and have written a great many comments articulating my reasoning in that regard. It’s also true that nearly all “silly” rejections are very easily addressed. Often a quick phone call will straighten things out.

  55. The best response to ridiculous rejections like this is to respond, with as much decorum and courtesy as you can, “Are you kidding me with this?”

    Has this approach ever gotten a case allowed for your client?

    It’s a rhetorical question.

  56. Thankfully it will cost the applicant next to nothing to address that silliness

    That’s the level of your QQ on what is the primary driver of the mountains of backlog? Then you won’t mind footing the bill, will you?

    Oh, wait, you’re in the “always blame the applicant” circle.

    Nevermind. (in the best Emily Litella tones).

  57. There are ZERO consequences for making silly rejections like this under 101.

    Thankfully it’s really easy to address that “silliness”.

    And under 112, 2nd

    Such a rejection doesn’t strike me as particularly silly.

    Heckavu job.

    Thankfully it will cost the applicant next to nothing to address that silliness, assuming there is adequate support. The obviousness of the claim, on the other hand — that’s going to be a tougher hurdle unless of course the PTO decides to look the other way. But yes, wouldn’t it be great if only the right rejections were made, and made carefully, every time?

  58. While this won’t go to applicant quality, perhaps the Office should focus on those things it actually controls (and can control legally) in its quest for application quality.

    Like, examination quality.

    That can’t be a novel thought.

  59. Max – Since it only generally conforms to the shape, and eyes are similar from patient to patient we can be sure the one of ordinary skill in the art would understand the range of shapes being recited.

  60. “Lets assume here that the examiner is correct…”

    Let’s not. And don’t say we did. The best response to ridiculous rejections like this is to respond, with as much decorum and courtesy as you can, “Are you kidding me with this?”

  61. Enhanced such “nit picking” by the examiners may be an enhanced effect of third party art submissions in an application. The examiner knows that someone else is watching that application.

  62. “Can someone explain this 101 rejection to me?”

    There are ZERO consequences for making silly rejections like this under 101. And under 112, 2nd also. So examiners make them to provide the appearance of “quality” and to “build a record” and make it look like they are doing a record breaking outstanding quality job.

    And this is from an examiner with at least partial signatory authority, i.e. an examiner whose work over a 13 bi-week period was thoroughly reviewed and was found to be competent to at least issue FAOM without supervision.

    Heckavu job.

  63. “How would you ever read this claim on a human eye?”

    I’m with you on this one, IANAE. That claim, properly read, doesn’t read on the eye or any other body part. All that “generally conforms to a curvature of an anterior chamber of a patient’s eye” does is define what the shape of the housing needs to be.

  64. Dennis, taking from these 100+ cases only those in which an OA issued after the 3rd party submission of prior art, in how many, or in what %, of those OAs did the examiner rely on art that was listed in the 3rd party submission?

  65. “Can someone explain this 101 rejection to me? ”

    Hello IANAE:

    I am a 101 Integration Expert. I can answer that question for you. Apart from a holding by the Supreme Court that the manipulation of a human body part is a Court created judicial exception (derived implicitly from the Congressional Statute of 101) the Examiners 101 rejection is improper and should be reversed.

    Any questions?

    I am here to help

  66. What struck me as new was placing a sensor here. But now you say implantable sensors are generally old. It is the location here that seems to make them unique.

    That appears to be the “theory” of the “invention.” Unless the disclosure of this application already covers all other possibilities, one could use this claim as a template and recite a multitude of other locations where a “sensor” could be placed, where the sensor is “configured” to fit where in that place. The “guy” (or gal) is the limit, as they say. The point, of course, being that all such generic claims are per se obvious from the moment that sensors and configurable, implantable “housings” exist in the prior art. There is no doubt that this particular critical moment in time passed years before the priority date of this application.

  67. MM, interesting take, this. I had assumed the configuration old. The shape of the anterior chamber is known, and I assume lenses or other such have been implanted here, conforming to the shape.

    link to en.wikipedia.org

    What struck me as new was placing a sensor here. But now you say implantable sensors are generally old. It is the location here that seems to make them unique.

    Thus, if the above is true, implantable sensors are old, but have not been used here. If not, why not? And if there was a problem of putting a sensor here, what did the inventor do to overcome that problem?

    But if there was a problem that was overcome, none of the solution appears in the claim. I think, in the words of MaxDrei, that without the claim including the solution to the problem, the claim subject matter is at least, obvious.

    Such a claim also has the problem under 112 in that it covers every sensor located in that eye location regardless that it uses the inventive means or method. I think the office might consider such a rejection.

    But all this is without having looked at the prosecution. I am just going on the claim and the apparent fact that implantable sensors are old.

  68. Strike that. The examiner also gave a 101 rejection for a claim which includes “an implantable sensor having a housing that generally conforms to a curvature of an anterior chamber of a patient’s eye.” The examiner said that this claim violates 101 because it requires “the curvature of the anterior chamber of a patient’s eye” and therefore claims a body part.

    The examiner also refused to consider numerous US Pub Apps submitted in IDSs because the IDS did not include some of the leading zeroes after the year of publication. (e.g., 2004/0073137 was not considered because the IDS identified it as 2004/073137.

    Other similar nit picking is abundant in the office action.

  69. Ignoring the 112 issue others have raised (i.e., the issue addressed in Orthokinetics), I believe the examiner is correct on the 101 issue. However, the examiner’s suggested fix is not good. In fact, it would create a 112 issue where one may not exist. The examiner’s suggestion seems to imply that the housing is specially configured to match the shape of each patient’s eye, rather than merely being shaped like the typical curvature of an anterior chamber of an eye.

    A far simpler fix for the 101 issue is to simply add “implantable” in the preamble (“An implantable sensor…”).

  70. Thank you for this posting on a very new procedure. It’s good to have a large sampling of cases approved by the USPTO to review before potentially submitting one of these.

    How did you identify the 111 Applications? Funny to see a couple of 11 series applications in the list.

    Were there any trends easily recognizable in the 111 Applications? Specific Assignees that were targeted or heavily represented Tech Centers? Looking forward to taking a quick glance at these.

  71. Broadly, the claim is to a sensor mounted in a housing that is shaped like an eye. I don’t see a 101 problem.

    Moreover, this has got to be old.

    But even it is not, I think the invention, if anything, is in the method and means the sensor uses to take measurements and transmit them.

    Thus, clearly, the vice of the claim stands out: It claims the novel feature functionally and violates 112. The inventor did not invent every method and means for sensing in such a device.

  72. The claim should fall under 112, 103 or (dare I say it?) 101.

    Dare I say: Whatev?

    Penetrating legal analysis – not.

  73. “How can you claim an entity clearly by using something not present. ”

    I have had this pop up in some of my cases. Attorneys love to make reference to things which do not exist in the claim to make their actually claimed features be relative to.

  74. “The examiner suggested that a cure for the perceived problem would be to claim that the device is “configured to” conform to the patient’s eye. ”

    I see we have our best and brightest examinertards on these cases. Or the opposite.

  75. The housing is the skin, including the eyelid, and the sensing device is the eye (which, in the claim, is not differentiated from the eye).

    That’d be my take, although I don’t personally get how the suggested fix actually fixes anything. I’d probably go with “wherein the housing is configured to be implanted in the eye”.

  76. MD: I claim: A hat having fancy feature X and having a diameter which also “generally” conforms to that of the human head. How general is generally and how much conforming suffices?

    To the extent the “fancy feature” is described functionally, it doesn’t really matter. The claim should fall under 112, 103 or (dare I say it?) 101.

    Implantable sensing devices that transmit information are very old. It’s ridiculous to suggest that a hand-wavey recitation about how the shape of the sensor is “configured to fit [where you want to put it]” should suddenly turn a plainly anticipated implantable sensor into a non-obvious sensor.

    If there’s something non-obvious about the shape of the sensor, then that shape should be described in exacting detail in the claim. This is a composition claim, after all. Otherwise what is being claimed is closer to an abstraction (“this new thing with desirable functions, only the latter of which I shall recite”) than a patent-eligible composition of matter. A method claim reciting the details of how to make a sensor with the recited features would present different issues but seems more likely to be patent-worthy.

    Is the term “patient” restricted to human patients, by the way? Gosh, I hope so. Otherwise the claim is even more ridiculous than it appears at first glance.

  77. And how about the burgeoning trade in body parts.

    When does an artificial heart stop being a perfectly claimable mechanical pump and become a body part?

  78. Lets assume here that the examiner is correct and the claims require that the device be connected to a human. Does that connection make it ineligible subject matter?

    It shouldn’t, assuming that the reason for not claiming human body parts is because we don’t want people’s bodies to infringe patent claims and be subject to injunctions and the like. Not that any judge would ever grant such an injunction.

    A patent claim that recites a bunch of patentable electronic sensors and stuff that happen to be the right shape to be next to a human eye are no more problematic than any other claim with a DNA/RNA sequence or the word “comprising” in it. Or a claim reciting a glove or a hat.

    Unless somebody can articulate what the real problem is that this silly “new” rule is supposed to address?

  79. MaxDrei, Look up the case about a child car seat and what is generally acceptable in a claim.

    Can we please have better trolling?

  80. OK – The best interpretation of the claims is that they do _not_ require that device be physically attached to the a patient’s eye. But, the examiner seems to believe that a reasonable interpretation of the claims does require that connection.

    Lets assume here that the examiner is correct and the claims require that the device be connected to a human. Does that connection make it ineligible subject matter?

  81. Even if you consider that a person’s eye is a “sensor”,

    If you consider such, you are done, as the preamble without more allows the claim to read on a body part.

    Did you mean for that to be such a softball? Was this an invitation to not comment and leave your post standing alone?

    Re: How is “shaped liked an eye” worse than “configured to be shaped like an eye?” – it’s not.

    However, that’s a slight twist to what is actually posted by Prof. Crouch. If you have a device configured to conform to a patient’s eye, then you have introduced enough language to separate the device from the patient’s eye.

    and (LOL) feel free not to respond in order to show your brilliance.

  82. Is the eye that of one particular patient, or just any patient? Do all patients have the same eye curvature? How can you claim an entity clearly by using something not present. This reminds me of the case about the can carton blank which defines the blank in terms of the diameter of the can.

    I claim: A hat having fancy feature X and having a diameter which also “generally” conforms to that of the human head. How general is generally and how much conforming suffices?

    And how about the burgeoning trade in body parts. Suppose I’m the patient and the medics are using sombody else’s spare eye to sense my ocular cavity? Is his spare eye i) a body part and ii) a “sensor”?

  83. The examiner also rejected the claim for lacking subject matter eligibility under 35 U.S.C. 101 because the claim is “drawn to a body part.” The examiner suggested that a cure for the perceived problem would be to claim that the device is “configured to” conform to the patient’s eye.

    Can someone explain this 101 rejection to me? I don’t know what’s more bizarre – the suggestion that the claim is problematic, or the suggestion that the proposed amendment would fix the problem.

    How would you ever read this claim on a human eye? Even if you consider that a person’s eye is a “sensor”, surely it isn’t the anterior chamber of the eye that has all the sensing devices in it.

    Open question for all the self-professed 101 experts on the board: how is “shaped like an eye” worse than “configured to be shaped like an eye”?

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