WHEN THE CITED PRIOR ART IS NOT RUN OF THE MILL

The patent system consists of granting inventors exclusive rights for a limited period of time in exchange for disclosing an invention that must bring technological progress to society. This technological progress is determined by the fulfilment of patentability requirements, essentially novelty and inventive step. The assessment of these requirements is carried out by comparison with the state of the art, which is defined as:

“Anything that has been made accessible to the public in Spain or abroad before the filing date of the patent application by a written or oral description, by use or by any other means”. (Spanish Patent Law 24/2015)

In the search reports drawn up by patent examiners during the patent granting procedure, patent documents and scientific publications are often cited as prior art for the inventions that are the subject matter of patent applications. It has also become increasingly common in recent years to cite videos, usually published on the youtube platform.

However, even in patent granting procedures and in the application of the PCT (Patent Cooperation Treaty), very heterodox citations can sometimes be found in search reports.

The case of a citation from a Donald Duck cartoon that affected the patentability of an invention and prevented it from being granted is widely known in the patent world. The invention related to a process for floating a sunken ship, involving the introduction of a large number of floating elements through a tube, which was used in 1964 in the port of Kuwait to refloat a sunken cargo ship full of sheep, whose decomposition threatened to endanger the city’s water supply. The patent was granted in the UK GB1070600 and in Germany DE1247893 unlike what happened in the Netherlands. There, the “legend” goes that a Dutch examiner refused the patent application NL6514306 on the basis of a Donald Duck strip called “The Sunken Yacht” which showed how Donald and his nephews refloated a sunken ship by inserting ping-pong balls through a tube into the ship.

THE BIBLE

A recent linkedin post reminded me of this case by disclosing a patent search report drafted at the European Patent Office citing the Bible as prior art. It is the European patent application EP3886614A1. The invention that is the subject matter of the patent relates to a method for binding dust and particles generated in the cigarette manufacturing process. The Bible is not actually cited in the search report but in the written opinion and not as a relevant document but just to show that winnowing or separating the grain from the chaff has been known since the dawn of time.

Harvesting, threshing, separating and winnowing are as old as the crop itself. An ancient and fairly well known account of this is found in Matthew 3:12:

¹² His winnowing fork is in his hand, and he will clear his threshing floor, gathering his wheat into the barn and burning up the chaff with unquenchable fire.”

This publication revived my interest in heterodox prior art and I have found other examples.

For instance, the patent application US2014156034 also lists the Bible as one of the prior art citations. If the citation is not what you usually find in a search report, the invention is not very common…. either.

Here is the independent claim:

The claim is difficult to understand, but could be summarised as the use of “inter-universal” consciousness to improve the quality of an industrial process.

One of the citations with which the examiner “attacked” the patentability of the invention was one of the best-known passages from the Holy Gospels: John 2:1-11.

The following is the excerpt from the written opinion where the examiner argues how this “prior art” questioned the patentability of the invention:

“Jesus produced wine (of the best quality) from water. Jesus’ mother and the servants were involved in this story. Suffices to say, their consciences fields must have been inherently connected, as claimed.”

THE COMIC

Another sector to which some of these unusual state-of-the-art citations belong is that of comics. Superheroes abound, but in addition to the well-known case of  Donald Duck and the refloated ship, I have also found another case in which a Disney cartoon was cited as prior art. It is the patent application US3935743A, which relates to a temperature indicator that is embedded in a transparent candy or sweet. The candy is supported on a plastic “stick” and the temperature indicator consists of cavities filled in with edible materials that melt at different temperatures.

Once again a Donald Duck cartoon is included in the prior art cited by the USPTO patent examiner.

Unfortunately, it has not been possible to obtain the Donald Duck strip published in the Washington Post in 1951.

The patent application GB2117179, refers to a device to be placed on doors so that pets can alert of their presence to the people inside the house and the British patent examiner cited a story of the well-known British comic character “Dennis the Menace” in the publication “The Beano”.

The patent application US4952913A relates to an anklet or bracelet for monitoring people (e.g. who are under house arrest or who cannot approach certain people or places), whose use is now widespread, perhaps not so much in 1989.

The patent examiner cites a Spiderman comic book, published in a US newspaper, as relevant:

The patent application US2019314980 concerns a truly unique invention, a system of poly-limbs intended to assist the user in handling and transporting objects. The figure reproduced is very illustrative of the possible uses of these additional members.

This is the first claim of the patent application US2019314980:

1. A soft poly-limb system, comprising:

a first actuator segment, a second actuator segment; and a third actuator segment forming the soft poly-limb, wherein each of the first actuator segment, the second actuator segment, and the third actuator segment comprise a plurality of ring reinforced actuators; and

a control system whereby a user may control the soft poly-limb.

and this is the fourth claim:

4. The system of claim 1, wherein each actuator segment is tapered such that the soft poly-limb is tapered.

As an example of a tapered member, the USPTO patent examiner cited an “Iron-Man” comic book to “attack” the inventive step of the invention defined in claim 4.

Iron Man is also the protagonist of a well-known case in the patent world. The Patent application in question is GB2559971, which relates to a single-person flight system.

The 2008 Iron Man movie is cited in the search report as relevant prior art, and reference is made to one scene in particular, when Tony Stark uses the flight system.

LITERATURE

I have always been very interested in the relationship between patents and literature. In fact, I have written on the subject, about literary works in which patents play some kind of role. On this occasion, however, I look at literature from the other point of view, patents whose search report cite literary works as prior art.

The patent application US2013073968 relates to a system that provides user location information for various purposes such as parental control. Such applications are in widespread use today. Perhaps they were not so popular in 2013, when this application was filed and the USPTO examiner cited George Orwell’s “1984”, a dystopia written in 1949, some of whose predictions are already part of our daily lives to some extent.

In particular, the examiner cites that part in which the “thought police” control the population by means of a tele-screen and a communication network.

Mark Twain was himself an inventor and a firm believer in the patent system, and is well known in the patent world for the phrase he included in his work “A Yankee in King Arthur’s Court”; “A country without a patent office and good patent laws was just a crab, and couldn’t travel any way but sideways or backwards”.

It can be added to his relationship with patents and inventions that one of his works, his short story “The celebrated jumping frog of calaveras county” was cited by a USPTO examiner to “attack” the inventive step of an invention, that of PCT application WO2006004767, which is a system and method for betting on the intermediate points of a race.

The story features a character who bets on all kinds of situations, usually involving animals.

The USPTO examiner cites the story as an example that betting on all kinds of facts and events and various aspects of them has been known since antiquity.

SCIENCE FICTION

Science fiction stories usually take place in the not too distant future and the author usually foresees how technology will evolve in that future. When talking about non-traditional prior art, the main problem is that these disclosures often lack sufficiency of disclosure, in other words, they do not describe the invention or technology in question fully enough for an expert to be able to put it into practice. The article “enabling science fiction” reflects on the sufficiency of disclosure of science fiction and provides examples of patented inventions that could have been inspired by works of science fiction. Precisely one of the examples discussed in the article is the science fiction literary work “From the Earth to the Moon” by Jules Verne and this work was cited as relevant prior art in the PCT patent application WO2008010180 which relates to a procedure for launching a spacecraft.

The examiner of the European Patent Office used “From the earth to the moon” to show that claims 1-7 were not novel.

The examiner of application US2009082686 was not at all averse to citing “science fiction” as prior art. The subject matter of the patent application is a system for facilitating the programming of tasks to be performed by a robot for use in the healthcare sector.

In his argument, the examiner cites two works of science fiction; a short story by Isaac Asimov “strange Playfellow” and Star Wars Episode V: “The Empire Strikes Back”. The use of nurse and medical robots is disclosed in both cases.

The next case has also been previously reported in the world of patent professionals. It is the waterbed, as we know it today, invented and patented by Charles Hall. He filed a patent application for his first invention with very broad claims, which was rejected. The prior art said to have been used by the USPTO examiner to deny the application consisted of various works by the well-known science fiction writer Robert A. Heinlein; Beyond This Horizon (1942), Double Star (1956), Stranger in a Strange Land (1961),Expanded Universe (1980) where waterbeds were described in all sorts of detail. Heinlein also predicted something similar to today’s internet in his science fiction works.

Charles Hall later filed patent application US3583536, where he claimed his invention in a more limited form, in more detail. 

When it comes to science and technology, one cannot forget the “Star Trek” series. The Application US2006196991 concerns an individual flight device.

The USPTO examiner cites the captain’s chair from the starship Enterprise.  He uses that chair to “attack” the inventive step of claim 7, where it is stated that the device control tools are located on panels that fold out from the arms of the flight device.

JAMES BOND

The James Bond film series features a wide variety of technological devices, usually ahead of the technology available when the films were shot.

Patent application GB2273053 relates to a small device with compressed air inside that can be used to breathe underwater in emergencies, such as a car or plane crash.

The UKIPO (UK Patent Office) examiner cited the film “Thunderball” (1965), where James Bond uses a very similar device in a “submarine battle”, as prior art.

THE LEONARDO DA VINCI CODICES

The Leonardo Da Vinci codices, despite their antiquity, are clear candidates for citation in patent search reports, even though patent examiners prefer patent documents and scientific literature from recent decades.

Patent application DE102008033007 concerns a flat rectangular part that allows the construction of all kinds of self-supporting structures.

The patent examiner of the DPMA considered a fragment of Da Vinci’s Codex Atlanticus describing a transportable bridge constructed from cylindrical wooden parts to be relevant for the examination of the patentability of the invention. Anyway, this document had been cited by the applicant himself in his description of prior art.

CONCLUSION

Although you may have seen some examples of peculiar prior art in this article, actually the vast majority of prior art citations that can be found in the search reports that are drafted during the patent granting procedure are patent documents and scientific non patent literature. Anyway, I hope this collection of “peculiar” citations to be interesting, especially for patent examiners.

Leopoldo Belda Soriano

En español

Proofread by Ben Rodway