Posts filed under ‘Patent Prosecution’
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. Before we get into snails, we’ll consider something faster, a 2009 Bugatti Veyron 16.4
A hip young man goes out and buys the best car available: a 2009 Bugatti Veyron 16.4. It is the best and most expensive car in the world, and it sets him back $1.24M. He takes it out for a spin and, while doing so, stops for a red light. An old man on a moped (both looking about 90 years old) pulls up next to him. The old man looks over the sleek, shiny surface of the car and asks, “What kind of car ya’ got there, sonny?”
The young man replies “A 2009 Bugatti Veyron 16.4. It cost $1.24M.”
“That’s a lot of money” says the old man, shocked. “Why does it cost so much?”
“Because this car can do up to 320 miles an hour!” states the cool dude proudly.
The moped driver asks, “Can I take a look inside?” “Sure,” replies the owner.
So, the old man pokes his head in the window and looks around. Leaning back on his moped, the old man says, “That’s a pretty nice car, all right!”
Just then, the light changes, so the guy decides to show the old man what his car can do. He floors it, and within 30 seconds the speedometer reads 320 MPH.
Suddenly, he notices a dot in his rear view mirror. It seems to be getting closer! He slows down to see what it could be and suddenly, whhhoossh! Something whips by him, going much faster!
“What on earth could be going faster than my 16.4?” the young man asks himself.
Then, ahead of him, he sees a dot coming toward him. Whoooooosh! It goes by again, heading the opposite direction! And, it almost looked like the old man on the moped! “Couldn’t be,” thinks the guy. “How could a moped outrun a Bugatti?”
Again, he sees a dot in his rear view mirror! Whooooosh Ka-BbblaMMM! It plows into the back of his car, demolishing the rear end. The young man jumps out, and good grief, it is the old man!!! Of course the moped and the old man are hurting for certain. He runs up to the dying old man and says, “You’re hurt bad! Is there anything I can do for you?”
The old man groans and replies “Yes. Unhook my suspenders from your side-view mirror!”
BACK to our patent writing:
It was only after the patent was in its first draft that the client suddenly found an article about a “new” fetal ultrasound probe, perhaps without specific information on how it works. And since the patent for the fetal probe was unpublished, you couldn’t get any information on how the fetal probe works.
Just in case the fetal probe uses an array of transducers that produces and interprets beams having a short reflection, you decided to add claims about detecting hard objects AND, equally important, to add description about how your foreign body ultrasound probe makes this distinction.
It just so happens that your ultrasound probe includes a device that works similar to a durometer which is defined as “an instrument for measuring the degree of hardness; especially, an instrument for testing the relative hardness of steel rails and the like.”
We made sure that the description includes a definition of a durometer and a description of your durometer works in conjunction with out ultrasound probe. You also included figures that show how your ultrasound beams focus can be focused to cross at very close range or a farther range. This provides us with two backup positions by which to protect your invention. Of course the fetal ultrasound probe does not include a durometer. Additionally you suspect that the beams associated with the fetal ultrasound probe either cannot be focused.
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.