Archive for January, 2009

Using Dependant Claims to Overcome Relevant Art

Greetings inventors, investors, patent drafters and anyone interested in patents! This is Rabbi, Dr. Yosef Freedland, surgeon, and patent attorney; leader of the medical device team Appelfeld Zer Fisher writing to you from the beautiful border of Ramat Gan, at the border of Bene Brak.

Everything looks dandy here from the 16th floor of the BSR building.

We are still into snails that are being compared to an ultrasound probe that locates foreign bodies in a three-dimensional matrix.

At our last exciting blog installment, you were forced to limit your three-dimensional matrix that could be used anywhere, or on anything; to a living body, and wherein the probe includes transducers for registering reflected beams at short range.

More Problems: you didn’t know about it when you wrote the patent, but there happened to be a three-dimensional fetal ultrasound for use on pregnant women. Unfortunately this fetal ultrasound includes reflected short range beams and is used on a living body. Oy vey!

The examiner just happens to find this fetal probe patent and you get a response from the examiner that not only includes the diamond probe, the fishermen probe, but also the fetal probe. How didn’t you know about this patent to a fetal probe, when even a non-professional search should turn up anything related to probes used on living people? Maybe it wasn’t published before you filed your patent and so you did know about it.

Solution: Fortunately you anticipated that there might be some patent out there where ultrasound is used for imaging a living tissue of a fetus. So what you did when you wrote the patent is you included claims that limit your ultrasound probe to finding inanimate objects in a living tissue. For example, your array of transducers produce beams in a sequence or configuration that reflects only upon reaching a substance with greater hardness than the tissue of a fetus. So if it turns out that the examiner found existing art that invalidates your above noted independent claim, you had in a limitation available to combine into the independent claim. For example, you wrote a dependent claim to a probe that includes a durometer that is configured to distinguish between hard and soft objects.

January 31, 2009 at 11:20 pm Leave a comment

Limiting The Scope of Claims to Avoid Irrelevant Art

Greetings inventors, investors, patent drafters and anyone interested in patents! This is Rabbi, Dr. Yosef Freedland, surgeon, and patent attorney; leader of the Medical Device Team at Appelfeld Zer Fisher — writing to you from the beautiful border of Ramat Gan, at the border of Bene Brak.

We are still into snails, but first a word from our creator.

Adam was wandering around the Garden of Eden feeling very lonely, when he heard a loud voice ask him, “What is wrong with you?” Adam said he didn’t have anyone to talk to, and he was feeling very lonely.

Then the loud voice said he was going to give him a companion and it would be a woman. The voice continued, saying; “this person will cook for you and wash your clothes, she will always agree with every decision you make. She will bear your children and never ask you to get up in the middle of the night to take care of them. She will not nag you, and will always be the first to admit she was wrong when you’ve had a disagreement. She will never have a headache, and will freely give you love and compassion whenever needed.”

Adam thought that sounded great, so he asked “What would a woman like this cost me??”

The voice answered, “an arm and a leg.”

Adam thought about that for a moment. He thought that would be a pretty high price to pay, so he then asked, “What can I get for just a rib???”

The rest is history . . .
—————————————————————

Now you still have a problem. It just so happens that fishermen lower and ultrasound probe into a lake and locate fish. When you write the patent you don’t know about this fishing probe possibly because the client was using his last penny to write a good patent and didn’t search the patent database to the full extent.  

Problem: Fish-locating ultrasound probes travel through a matrix including a liquid which is the lake water and reflect off fish. Let’s even assume that the fisherman is provided with a display that shows three-dimensionally where the fish are located. This makes your ultrasound probe invention invalid because your claims could be used to describe the fisherman fish probe.

Solution: you had more claims that depend on the first claim and limit your three-dimensional matrix to living tissue. In this way if the examiner cites a patent to a fisherman fish probe you could combine one or more of these dependent claims into your first claim. In this way, these claims will serve as our snail shell that protects the slug inside.

January 30, 2009 at 10:13 am Leave a comment

Independent Claims and Dependent Claims

Greetings inventors, investors, patent drafters and anyone interested in patents! This is Rabbi, Dr. Yosef Freedland, surgeon, and patent attorney; leader of the Medical Device Team at Appelfeld Zer Fisher — writing to you from the beautiful border of Ramat Gan, at the border of Bene Brak.
Everything looks dandy here from the 16th floor of one of the BSR buildings (there are two BSR buildings. The first is called BSR 1 and the second is called BSR 2 – pretty catchy, huh?).
Before getting back to snails, snail slugs and snail shells, we will pause for a brief news item:

BANKING PROBLEM EXPLAINED

Young Chuck moved to Texas and bought a donkey from a farmer for $100.00.
The farmer agreed to deliver the donkey the next day.
The next day he drove up and said, ‘Sorry son, but I have some bad news, the donkey died.’
Chuck replied, ‘Well, then just give me my money back.’
The farmer said, ‘Can’t do that. I went and spent it already.’
Chuck said, ‘OK, then, just bring me the dead donkey.’
The farmer asked, ‘What ya gonna do with him?
Chuck said, ‘I’m going to raffle him off.’
The farmer said ‘You can’t raffle off a dead donkey!’
Chuck said, ‘Sure I can Watch me. I just won’t tell anybody he’s dead.’
A month later, the farmer met up with Chuck and asked, ‘What happened with that dead donkey?’
Chuck said, ‘I raffled him off. I sold 500 tickets at two dollars apiece and made a profit of $898.00.’
The farmer said, ‘Didn’t anyone complain?’
Chuck said, ‘Just the guy who won. So I gave him his two dollars back.’
Chuck now works for Goldman Sachs.

Anyway, back to snails:

In a patent claim set, there is an independent claim and many dependent claims.

The independent claim describes the invention in the broadest possible fashion and the subsequent claims that depend on the independent claim create more and more limitations so that if you have to you can protect your invention you can limit the invention to the boundaries of the snail shell. But only if absolutely necessary.

Our independent claim might be directed to an ultrasound probe configured with a specific array of beams that can be interpreted by a controller to provide a display (or read-out) of objects in a three-dimensional matrix.

Problem: your independent claim covers the above noted diamond locator.  But it just so happens that there is a patent or an article that you don’t know about. And guess what this patent or article describes an invention that uses ultrasound to locate diamonds in dry dirt.

Solution
: your next claim that depends on your independent claim might be to limit your ultrasound probe to find objects in a matrix of including fluids.

Now you want to make the ultrasound beam have some structure that allows it to function in conjunction with a three-dimensional matrix including fluids. So this claim might read that your invention is the same invention in your independent claim, but includes at least one ultrasound transducer that provides ultrasound at a wavelength that passes through a matrix including fluid.
Another dependent claim might be added to state that the ultrasound wave length is additionally configured to reflect off harder objects within the three-dimensional “softer” matrix which includes fluid.
By writing claims that are more limited (and backing them up with a full description) you have a “shell” to protect your basic invention of an ultrasound probe for use in a clinical setting.

January 29, 2009 at 10:49 pm 1 comment

The Logic Behind Claim Drafting

Greetings inventors, investors, patent drafters and anyone interested in patents! This is Rabbi, Dr. Yosef Freedland, surgeon, and patent attorney; leader of the Medical Device Team at Appelfeld Zer Fisher — writing to you from the beautiful border of Ramat Gan, at the border of Bene Brak.

Snails, snails, nothing but snails. Well, actually not. This blog also deals with grasshoppers: A grasshopper walks into a bar and says, “Bartender, give me a drink.”

The bartender can’t believe his eyes and says, “Oh my Gosh, I can’t believe this, you’re a talking grasshopper!  Do you know we have drink named after you?”

The Grasshopper replies, “You have a drink named Steve?”

Now for the claims.

In the claims you usually go in the opposite direction from the description where you first, optionally, described a focused use and configuration of your invention and after this is fully clear and complete you added additional configurations and uses for your invention.

In claims, you write initial claims that define your ultrasound probe in the broadest possible terms. Subsequent claims limit the invention more and more so that if you need to, you could use the subsequent claims to create a protective snail shell.

So, your strategy is to first create a slug that can roam everywhere and eat anything. Then you create a snail shell that you can put your snail slug into and thereby protect your invention in a more limited form.

So subsequent claims might build on the first broad claim to a compact ultrasound probe that can be used anywhere on any surface or for locating any object. Subsequent claims limit your invention to an ultrasound probe that finds objects in a living body and proceed to define further limitations the body; all which are “fall-back” positions that can protect your invention like a shell protects the snail slug.

January 29, 2009 at 11:31 am Leave a comment

Describing Patent Embodiments

Greetings inventors, investors, patent drafters and anyone interested in patents! This is Rabbi, Dr. Yosef Freedland, surgeon, and patent attorney; leader of the Medical Device Team at Appelfeld Zer Fisher — writing to you from the beautiful border of Ramat Gan, at the border of Bene Brak.

We are still into snails.

And during our last exciting adventure, you decided that your ultrasound probe may have additional applications, for example locating and viewing objects that are buried in the earth. So your ultrasound probe could be used in locating diamonds in a diamond mine.

And so you initially describe the invention in its use for the human body with all its associated configurations, ultrasound algorithms, use with KY jelly and other fluids, using the simple console and/or how to interpret the screen or print-out. When you cover all bases on your “preferred” embodiments, now comes the time to describe other uses (and configurations) for the probe. For example your probe, if configured with 24 transducers in a ring having a diameter of between about 1 and 2 feet, or even less that 1 foot or more than 2 feet –  can be used in locating diamonds.

Be sure to include factual material that supports this use, for example that the probe uses a “high surge” energy mode to get through a meter-or-so (about 3 feet) of dirt to locate diamonds.

With respect to our snail you would first describe a snail sitting on a leaf and eating away, how the snail eats the leaf, and how the snail moves using muscles that function in wave-form. Then you might describe where your snail roams and how the snail “tread” adapts to the various terrains. For example the snail may roam over dirt, sand and/or rocks. Additionally, you may describe how a snail has adaptations that allow the snail to eat food besides leaves. You may even describe how the snail makes and ejects fluid during movement.

 

January 28, 2009 at 10:49 pm Leave a comment

Drafting a medical patent – part 1

Greetings inventors, investors, patent drafters and anyone interested in patents!

This is Rabbi, Dr. Yosef Freedland, surgeon, and patent attorney; leader of the Medical Device Team at Appelfeld Zer Fisher — writing to you from the beautiful border of Ramat Gan, at the border of Bene Brak.

Let’s take an imaginary invention and see how you might describe and write claims for this invention. Let’s say for example that you have an ultrasound probe that can locate foreign objects in a human body.

For example the little boy comes into the doctor’s office and has swallowed a stone. The doctor uses the ultrasound probe to locate the stone and be sure that the stone is moving through the intestines and has not gotten stuck on the way, for example by lodging near the appendix, causing appendicitis and resulting in emergency surgery to prevent, or clean up, an intestinal blow-out.

Great invention!

An office-based low cost diagnostic tool that can find foreign objects in the intestines, ears or nose AND possibly a tool that can provide an early warning of an enlarge appendix in an office setting, thereby ruling out a stomach ache in the hit list for appendicitis. Additionally or alternatively, the doctor can use the ultrasound probe to confirm that the stone has passed out of the colon when the probe no longer can locate the stone.

Now this ultrasound probe may have additional applications, for example locating and viewing objects that are buried in the earth. So your ultrasound probe could be used in locating diamonds in a diamond mine.

BTW, if you don’t like writing claims and drafts, you can key into something else, and escape from the drudgery.

January 28, 2009 at 2:51 pm Leave a comment

Welcome to my blog on medical device patents

Greetings inventors, investors, patent drafters in all associated people!

By way of introduction my name is Yosef Freedland and I am the leader of the Medical Device Team at Appelfeld Zer Fisher (AZF) Patent attorneys. I am a patent attorney and have been drafting patents since just before the onset of Y2k.

I am also a surgeon and have rabbinical ordination.

My specialty is mechanical and electronic devices and specifically devices that are used in medicine. BTW I am dictating this with DragonDictate so this “blog” will be more of a stream of consciousness than if I was typing.

At any rate, this is my first Post. Please don’t laugh (LOL); it is an honest attempt to encompass some very complex issues in a non-complex Post, I hope.

To patent attorneys who read this Post and subsequent blogs from “The Border Patrol”, feel free to throw in some additional tips and/or anything else that you want, including criticism. One advantage of writing a blog is that at least you can’t criticize the pattern of the tie I wear. J

BTW, I am writing to you from the beautiful border of Ramat Gan, at the border of Bene Brak so the title of this Blog may have more than one meaning; which we can discuss later. I think what I’ll do is start with a simple explanation in a first Post and develop it to cover more complex issues in subsequent Posts.

Today I would like to start with explaining the description of an invention and structuring claims in the application.

A patent application is like a snail which has a shell that is attached to a living creature, the living creature we will call a slug. The slug moves all around and slowly but surely covers a lot of ground. However when push comes to shove, the slug pulls itself into the shell, providing the slug with protection.

Similarly, your invention should “move around” and cover all sorts of sizes and specification of similar devices, varied applications and/or configurations that are related to the invention.

However, when push comes to shove, you may need that snail shell into which the slug retracts; in order to protect the invention. Something we all should have done with our socked-away savings.
[…] to be continued […]

January 28, 2009 at 2:40 pm Leave a comment


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