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Patents are Subjective

 

What If . . .

What if you could do a blind study at the U.S. Patent Office and give the same patent application randomly to ten different examiners at the U.S. Patent Office. Would you get the same result more than once? Maybe - and it would be an interesting experiment which I would love to see carried out. It is doubtful that this will happen any time soon, but by accident I did get the chance to have a patent examined twice by two different examiners with two different results.

Before continuing, for some background reading you may also be interested in a corresponding article: https://www.patentlawny.com/what-are-the-chances-my-patent-will-issue/

A Tale of Two Examiners

Now on to the case at hand. Take a look at:

Patent 1: Vertical and horizontal simultaneously and selectively expandable structure Patent no: 9,938,044 Issued: April 10, 2018

Patent 2: Vertical and horizontal simultaneously and selectively expandable structure Patent no: 10,279,956 Issued: May 07, 2019

Here's what happened - Patent 2 was actually filed first.  Then the client said "can we expedite examination?"  Sure, yes, you can do that but it has to be at the time of filing so let's refile your patent application.  We did that and got it Patent 1 allowed quickly.  Some time later, Patent 2 came up for examination with the same exact text and claims.  Typically, Patent 1 and 2 would go to the same Examiner who would notice and issue a rejection of the second patent.  In this case, it went to a completely different "art unit" (a different team of examiners that work together) and the new Examiner examined the case as if Patent 1 didn't exist.

Interestingly, both Examiners,, Stephen Castellano and Kareen Kay Thomas have about an 80% allowance rate at the time of this writing.  However, what they were willing to allow and how they rejected the claims was quite different.

How They Rejected

The patent application is for a nifty box which you can use in the trunk of your car or to hold an air conditioner in your window.  It really could be used for a lot of things - it expands/contracts in both the X and Y direction.  The inventor is quite creative. 

In Patent 1 the Examiner took issue with how we worded claims 8, 9, 11, 18, and 19.  Briefly, this had to do with arguments within English grammar about whether the pieces were "directly" connected to each other or not, whether a bar across an opening constituted a "partial closing" of a side, and other such findings.

Yet in Patent 2, the Examiner found no issues with how the claims were written that were cited in Patent 1.  Instead, the Examiner agreed implicitly that they were all fine.  Instead, the Examiner found a problem with claim 1!  Claim 1, the Patent Office said, was unclear because of the language "four separate peices slidably connected to two others of said four seperable pieces."  Sigh.

More Important: Is the Technology Obvious or Does it Deserve a Patent?

Well, this too depends - at least in scope.  For Patent 1, the Examiner initially rejected all of the 19 claims submitted saying it's obvious in view of a prior patent alone or when combined with another reference (which, in another bit of irony has an inventor name which matches one of the inventor's partners).  .We had to review the rejection depth, hold an interview with the Examiner and come to an understanding, all of which cost more money, in order to get a patent that was further limited to, for example, a claim that has "each said part of each of said four pieces [with] a diagonal bar."  It's not as great as we had hoped, but it's a patent nonetheless.

Then, out of nowhere comes the second examination by the second Examiner.  Expecting this to be a rejection, rather, the Examiner cited one of the very same references to support a rejection, but only for four of the 19 claims.  The other 15 claims, including some very nice ones, were indicated as allowable!  Amazing!

Alright, but that still leaves open the possibility that the second Examiner just didn't find one of the other prior references.  After all, a patent can even be invalidated after issuance if another reference is found showing that your concept isn't new or is obvious.  Further, there's a duty to tell the Examiner of all references that you know about so we paid the late fee and submitted the references to the Examiner.  

Now the Examiner came back with the same objection to how claim 19 was worded - finally, some consistency (we had "the" written where it should not have been - such is patent law ... it's precise ... when we're in the mood for irony). However, the Examiner still said that 10 of our 19 claims were allowable including much broader claims even after reviewing the exact same prior references!  Frankly, we agree ... it just would have been even more expense to go additional rounds with the first Examiner to try and get more claims allowed.

The claims allowed include, for example, the following (simplified for your reading experience):

- A box independently expandable in both a horizontal and vertical direction comprising:
four separate pieces, each forming a quadrant of the box;
each of the peices slidably connected to two other pieces;
the pieces forming part of walls of a box which becomes double walled when the box is collapsed.

Conclusion

Examination of patent applications is subjective.  Mullti-million dollar business decisions are often made based on what a government worker getting paid sometimes as little as about $50k/yr decides about a patent application.

Patents are granted based on what's "new" (35 USC 102) and what's "unobvious" (35 USC 103).  While reasonable people will probably agree if something is new or not, we won't always agree on whether if we combine two different references together ... will be think of the new idea or not?  Even once patents are issued, they are often overturned and often judgments against patent infringement are often overturned.  Still, a patent can be extremely useful because patent litigation is so expensive and usually avoided by would-be infringers.  Is there really anything new under the sun?  It depends which lawyer you want to argue the case for you ... and perhaps whether a higher power directs your work to the right Examiner.  Patents can be scientific ... and can also require a lot of praying.  Go figure.

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