While the dog days of summer are over, today is National Dog Day here in the US. The mutt pictured on this post is my little buddy. As you can see, she loves running on the wide open Oregon beaches and generally turning herself into a wet mix of hair and sand.
And since this is (mostly) a patent prosecution blog, let’s looks at a recept PTAB decision on an inventive dog harness (serial # 14/254,642).
As we have discussed in the past, unreasonably broad interpretations by the Office can take issues that are clear to kindergartners and turn them into years long and expensive back and forth paperwork at the USPTO. Often the issue is that the Office would like more specificity, but the applicant simply has none because there is no further specificity in the specification, and thus adding more is prohibited under Section 112 and the prohibition regarding adding new matter. So why doesn’t the application just write a more detailed specification? There are many reasons, one of which is that virtually every word has uncertainty and so defining every word only leads to more words. It is impractical to have a specification that perfectly defines every feature. This is especially true when the words that often end up in dispute are words everyone understands - “on”, “at”, “above” … and so on.
Here, the term in dispute was “pouch”. The invention relates to a dog harness for deterring jumping. The fabric pouch (22) is shown in FIG. 1 below. Specifically, the specification describes a fabric prosternum panel 22 that “can be a single layer of material, but preferably, it comprises a pouch having inner and outer sides.” The pouch also “has an upper opening 28 that communicates with the interior of the pouch for the insertion and storage of the straps… when not in use.”
You can see where this is going - the Examiner cites a references that merely has a folded piece of fabric and argues that that constitutes a pouch since the application specifies the pouch “only” requires inner and outer sides and an opening along with functional language.
The problem for the examiner here is actually that the applicant does not state that the additional description is a “definition” of a pouch, and thus it does not broaden the term beyond its normal meaning. Rather, the specification gives some of the details of how the pouch is formed. The specification never says that those details are exhaustive and that a pouch need only have those features to be a pouch. It would be like explaining that an engine has pistons - but of course that does not mean that you only need pistons to make an engine.
The applicant actually provided a clear drawing of the pouch in FIG. 5 (reproduced below):
The examiner actually went so far as to claim a loop of a strap in the prior art constituted the pouch.
The PTAB confirmed that the examiner’s interpretation was improper:
Appellant argues, and we agree, that the Examiner's rejection is deficient because Holt does not sufficiently disclose a "fabric pouch" that would overlie the forechest of the dog and interconnect the neck collar and the brisket cinch at a harness anchor point below the dog's chest, as recited in the claims. See Appeal Br. 4--5; Reply Br. 4--5. For the teaching of such a "fabric pouch," the Examiner takes the position that Holt's "element #40 is folded over to create a pocket #42," which the Examiner considers to be a "pouch," sufficient to "satisfy the broad structural limitations of [the] claims regarding a fabric pouch/fabric panel." Ans. 8. Although we appreciate the Examiner's observation that there is a "lack of structural definition of the pouch in the claims" (id. at 9), the recited element must nevertheless be a "pouch," as that term would be understood by one of ordinary skill in the art ( a small bag or an enclosed space). On this point, we agree with Appellant that Holt does not sufficiently disclose a "fabric pouch" as claimed. The identified structural elements from Holt appear to overlie the forechest of a dog and interconnect the neck collar and the brisket cinch. 2 Ans. 8 ( citing Holt, Fig. 2, and identifying elements 40, 42, 44, 46, which collectively interconnect collar 20 and cinch 30). However, from a review of the disclosure of Holt, these structural elements are chest strap 40, which interconnects collar 20 and cinch 30 via loops 42, 44 (preferably formed by doubling/folding respective ends of chest strap 40 back over on themselves), and which may include padded chest piece 46. Holt, col. 4, 11. 6-28, Fig. 2. Critical to the issue before us, while these elements include "loops," we discern no structure that would be considered a "pouch," as claimed.
Many rejections, and many appeals, deal with issues exactly like this one. So when someone says mechanical patents are easy - you can explain to them how the problem of language and meaning enable someone intent on rejecting an application a million ways to create arguments about how one word really means something else, particularly “simple” words, like “pouch.”
Fortunately for this applicant, they were not deterred by the cost and delay in an appeal. The patent is set to issue Sept. 3 - not quite in time for national dog day but better later than never.