LEDs Magazine Review - Beriled

with the examiner to get a patent issued).Before concluding that something obvioushas been patented, examine the claims allowedto issue a patent. The title, abstract and descriptionin the specification may make the claimseem unreasonably broad and obvious.However the actual claims, which define theboundaries of the patent protection, may bevery limited and include a non-obvious elementor combination.To overcome an obviousness rejection, anapplicant must show that there was no teaching,motivation or suggestion known to thosein the technical field (“those of skill in the art”)to combine the technologies, and/or that evenif there was such teaching, motivation or suggestion to combine thetechnologies, the combination would not equal all of the elements inthe claims of the patent application. For example, just because paints,canvas and brushes were known, the Mona Lisa was not obvious.Another way to overcome an obviousness rejection is to show thecombination constituting the invention yields “surprising and unexpectedresults”. If putting a device A that creates a fog together withdevice B that produces a pink light results in a blue beam then this isan unexpected result. Paper and adhesives may each be known, but acombination of paper with an adhesive border on one side that is sticky,Unless subject matteris covered in theclaims of an issuedpatent, it is notprotected by thepatent. Parts of thespecification notappearing as claimedelements cannot beenforced.LEDSMAGAZINEbut readily peels off may not be obviousbecause an adhesive with such a function wasnot known in the art.In hindsight, many inventions may seem“obvious”, but the courts have rejected“impermissible hindsight”, developed byknowledge of the patent application as supportfor patent claim rejections. It is easy to think“anyone could have made that combination”,but the examiner must use legal criteria to makethat call. To find out how a patent escaped orovercame obvious rejections, it is necessaryto examine the “prosecution history” (filehistory) that relates to the debate between theexaminer and the applicant to obtain a patent,from the filing of the patent application in a patent office to thepatent issuing.Reviewing the prosecution history may reveal how an obviousnessrejection (which is almost always made during patent prosecution)was overcome by an applicant’s arguments. Other informationobtained from the prosecution history includes the meaning of claimterms (claim interpretation and limitations), which is based on literalmeaning in view of explanations in the specification and commentsin the prosecution history; and what prior art was consideredbefore the patent issued that was not found by the examiner to destroyPRECISION OPTICSWe have the largest range of stock optics for Lumiled,Cree,Osram and other LED manufacturers...• Side emitters, spot and line optics• Custom or stock lenses• Optical design service availablewww.carclo-optics.comsales@carclo-optics.comSome products are also available fromCarclo Technical Plastics (Slough) Ltd.111 Buckingham Ave. Slough, Berkshire, England SL1 4PFTel: +44 (0)1753 575011 Fax: +44 (0)1753 811359ledsmagazine.com August 2006© Copyright 2006 IOP Publishing Ltd www.iop.org and Cabot Media Ltd. All rights reserved13