Patent It Yourself - PDF Archive

198 | Patent it YOURSELF
related application and incorporate it by reference just
in case you need to rely on anything in it. For example,
if you’ve filed a PPA, type, “This application claims the
benefit of PPA Ser. Nr. xx/xxx,xxx, filed 20xx xxx xx by
the present inventors, which is incorporated by reference.”
If the application is a continuation-in-part of an earlier
application, type, “This application is a CIP of Ser. Nr.
xx/xxx,xxx, filed 20xx xxx xx by the present inventor,
which is incorporated by reference.” If you want to refer
to a technically related case, type—for example—“This
application uses the frammis vane disclosed in my patent
x,xxx,xxx, granted xxxx xxx xx, which is incorporated by
reference.”
You can omit this part if you don’t have any related
applications.
c. Federally Sponsored Research
If your invention was made under a government contract,
include the required contract clause here. You can omit this
part if you don’t have any Federally Sponsored Research.
d. Sequence Listing or Program
If you’ve included a CD-ROM to provide a program listing,
refer to it here. If your invention uses a biological sequence,
refer to it here and state where it can be found. You can omit
this part if you don’t have any Sequence Listing or Program.
e. (1) Background—Discussion of Prior Art
Here, discuss the problem that your invention definitely
solves, the way the problem was approached previously (if
it was approached at all), and then list all the disadvantages
of the old ways of doing it. Your application will be more
interesting if you can write this section as a story describing
the history of the field and its sorry state up to the present.
For example, you can start as follows: “Originally bicycles
were made with a fixed transmission ratio. This made
pedaling up hills difficult. This problem has been partially
solved by the implementation of derailleur mechanisms,
but these had and still have significant problems.” Then
list the derailleurs that were used in the past and their
disadvantages. Again, look at prior-art patents to get an
idea of what was done. If you can, tell why prior-art people
failed to solve the problem and why a solution is needed.
But be sure that every prior-art approach you discuss was
definitely known, because by listing approaches in the prior
art section you are making a full admission that all of such
approaches are old.
Beware of admitting that any problem in the prior
art was recognized. If it wasn’t recognized and you state
otherwise you will deprive yourself of credit for recognizing
the problem and enable the examiner or an adversary to cite
more prior art against you. If you do want to list a problem
that you found, give yourself credit for recognizing it—for
example, “I have found that derailleurs often broke down
because their linkages were too flimsy.” Don’t say what the
prior art can’t do because this can make your invention or
the problem that you discovered look obvious.
I suggest you cite all prior-art U.S. patents, published
patent applications, foreign patent publications, and nonpatent
literature in a four-part table, in the same format as
on the PTO’s Information Disclosure Statement (IDS) form,
PTO/SB/08a. Then discuss (knock) these references later in
narrative paragraphs. This makes it easier for the examiner
to review your prior art and for you to fill out your IDS
later. See an example in the specification of the sample
application, Fig. 8G below.
While the PTO doesn’t want needlessly derogatory
remarks about the inventions of others, you should, as
much as possible, try to “knock the prior art” here in order
to make your invention look as good as possible. Keep your
statements factual (for example, “The derailleur in patent
3,456,789 to Prewitt, 1982 May 3, had a limited number
of discrete gear ratios”) and not opinionated (don’t say,
“Prewitt’s derailleur was an abject failure”). If applicable,
tell why prior-art people didn’t think of any solution before
and why a solution is needed. Do not discuss any detailed
structure or operation of any prior art in this section
(unless you provide a suitable figure—see next paragraph),
since detailed mechanical discussions without the benefit
of drawings will be incomprehensible to most people.
Occasionally, you may have such a completely unique
invention that there’s really no prior art directly germane
to your invention. If so, just state the general problem or
disadvantage your invention solves.
If you’ve provided a prior-art figure, you can discuss
(and knock!) it here. Use reference numerals to refer to
the individual parts of the prior-art device. Alternatively
you may discuss (and knock) your prior-art figure in the
“Description of Invention” section.
You must also file an Information Disclosure Statement
(see Chapter 10) listing all of the prior-art publications
(including U.S. patents and published patent applications)
you’re aware of, together with copies of any non-U.S. patent
publications.
If your invention doesn’t solve a specific problem—for
example, it’s a new game or toy—you won’t be able to state
any problem that your invention solves. However, you still
can discuss the closest prior games or toys and mention
some faults or disadvantages of them.
Since this is a discussion of the prior art, you should not
discuss your invention or any of its advantages here.