May 2008 Archives

The Deputy Director of the USPTO met with representatives from U.S. automakers on May 6, 2008 as part of a tour to seek input from various parties regarding design patent protection for automobile components.

 Currently, components of automotive vehicles, such as headlights, mirrors, and body panels may be protected by design patents. Manufacturers of spare parts and body shops using such parts to repair vehicles may be liable for patent infringement.

 Legislation introduced in the House of Representatives on March 13, 2008 would amend 35 USC 271 by adding an exception from infringement for component parts of an article of manufacture that would solely be used to repair the article of manufacture so as to restore its original appearance. Proponents of the legislation, including independent parts manufacturers and insurance companies, argue that eliminating design patent protection of spare parts best serves the public interest by lowering costs associated with repair of damaged vehicles.

The CAFC has requested oral arguments from two amici for its hearing of Ex parte Bilski: Regulatory Datacorp and the Financial Services Industry group.

 The RDC argues for a broad interpretation of patentable subject matter, interpreting the term "process" in 35 USC §101 to encompass any art, method, or process, that falls outside of the prohibited subject matter of abstract ideas, physical phenomena or laws of nature. FSI, on the other hand, interprets "process" narrowly, with a process being patentable subject matter only in cases where it results in a physical transformation, or is tied to a machine in a non-conventional manner. A "token" mention of a machine would not, therefore, render a mental process patentable.

The CAFC will hear Bilski en banc at 2:00 PM on May 8, 2008.

Fu disclosed an imaging member for use in electrophotography containing a surfactant composed of a poly(fluoroacrylate)-graft-poly(methyl methacrylate). The USPTO rejected this application as obvious under 35 USC §103(a) in light of several patents, including a patent to Yamamoto, which disclosed a genus of surfactants having a perfluoroalkyl radical without specifically mentioning the compound disclosed by Fu, and a patent to Yoshida, which disclosed a fluorine-containing surfactant that was a poly(fluoroacry1ate)-graft-poly(methy1methacrylate).

 The Board of Patent Appeals affirmed the obviousness rejection. Applying KSR v. Teleflex, the court found that the prior art, specifically the Yamamoto and Yoshida patents, established a prima facie case of obviousness as to the Fu invention. Furthermore, the genus of surfactants disclosed by Yamamoto, while broad, contained a finite number of species and thus one having ordinary skill in the art would have "anticipated success" in trying the claimed surfactant species. Additionally, no secondary indicia of non-obviousness, such as teaching away from the invention by the prior art, were offered by the applicants.

In a precedential holding, the board stated: "We expressly reject the notion that a claim reciting a species is per se patentable when the prior art discloses a genus encompassing a broad but finite number of known options which include the claimed species. We hold that such aper se approach would be contrary to the clear command of our reviewing court. That is not to say, however, that an applicant would never be entitled to a patent in a situation as here. For example, KSR and Graham, as well as a myriad of precedents of our reviewing court, teach that secondary considerations such as unexpected results may confer particularly when that disclosure indicates a preference leading away from the claimed compounds."