Uncertainty and Ambiguity Leads to a 112, 2d Rejection


In a patent system where there are approximately 500,000 patent applications a year with somewhere between 200,000 to 250,000 issued patents a year, it is foolish to think that everything will run with 100% efficiency and accuracy all the time. But how is it possible that claims that are horribly written and terribly disjointed can be allowed after examination by a professional patent examiner?

Take for instance U.S. Patent No. 6,757,068, which relates to what is described as a sourceless tracking system. The claims of this patent are extremely broad and suffer from defects not associated with prior art. A patent like the ’068 patent is cat-nip to the anti-patent community and an all too familiar illustration that the Patent Office makes mistakes.

Claim 1 reads as follows:

1. A method comprising mounting a sourceless orientation tracker on a user’s head, and using a position tracker to track a position of a first localized feature associated with a limb of the user relative to the user’s head.

This patent and claim has become topical recently because Article One Partners has launched a prior art study seeking patents and non-patent literature that could be useful to invalidate this and other claims of the patent.  Aside from whether this claim may capture the prior art and be invalid, I think it suffers from another infirmity.

As many know, I have taught in the PLI ptent bar review course for the last 12 years and in the live courses I am responsible for teaching claim drafting as it applies to the multiple-choice patent bar exam.  Claim 1 of the ‘068 patent is an excellent example of something that would be deemed inappropriate on the patent bar examination because it is horribly disjointed.  It should have received a rejection under 35 U.S.C. 112, 2d paragraph.

This particular method, which is not defined as anything other than “a method,” requires the mounting of a tracking device on the user’s head.  The method further requires some kind of position tracker on a limb of the user.  That is it.  So what is the method? Somehow using the tracker on the limb to track position relative to the user’s head.

So what is the problem?  Is it the user’s head that is doing the tracking?  No.  Resist the temptation to insert elements or language into a claim in order to have what is stated actually define a working invention.  If you do insert what is not present but necessarily seems required then you are going to get the question wrong on the patent bar examination, I can’t be any more direct than that.

In order for this method to operate properly, there has to be an unidentified and non-described communication between the orientation tracker on the user’s head and the position tracker on the user’s limb.

It is true that MPEP 2171 presents two requirements to satisfy 112, 2d paragraph, saying:

There are two separate requirements set forth in this paragraph:

(A) the claims must set forth the subject matter that applicants regard as their invention; and

(B) the claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent grant.

Thus, some may say that it is up to the applicant to determine whether the missing connections are what is regarded as the invention.  In fact, I have been having that debate specifically relative to this patent with a few.  But remember, MPEP 2171 also goes on to say:

Although an essential purpose of the examination process is to determine whether or not the claims define an invention that is both novel and nonobvious over the prior art, another essential purpose of patent examination is to determine whether or not the claims are precise, clear, correct, and unambiguous. The uncertainties of claim scope should be removed, as much as possible, during the examination process.

The problem with claim 1 is that it does not define a complete invention. Things are left dangling in space and there is no “there” there.  Despite MPEP 2171, applicants are not allowed to leave out missing connections to create a broader claim scope when those missing connections create uncertainties and ambiguities.

Finally, regardless of whether this claim is or should in real life be susceptible to a 112, 2d paragraph rejection, it is clear to me that this is the perfect illustration of where such a rejection would be appropriate insofar as those who write the patent bar exam are concerned.

The moral of the story is this: for those who are taking the patent bar exam, you need to remember that just because you can get a claim issued in real life does not mean that claim is considered ideal.  A claim you can get in real life may well be one that those writing the patent bar exam would deem to be inappropriate, thereby leading to an objection or rejection.  Thus, just because you are familiar with patent claims in the real world does not mean you can take patent claim multiple-choice questions for granted on the patent bar exam.


Written by Gene Quinn of IPWatchdog.com


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