Looking at Patent Law: Opportunity Prospecting by Analysis of Analogous Patent Art

Inman

2022

In this installment of the “Looking at Patent Law” series, we present a case study of the prosecution of U.S. Patent No. 9,616,142 directed towards “Electrochemical Eradication of Microbes on Surfaces of Objects” jointly assigned to The Research Foundation for the State University of New York and Syracuse University. This case was chosen to coincide with the focus of this issue of Interface on diversity and inclusion in electrochemical technology, science and engineering. Notably, several of the inventors are female, including Dr. Esther S. Takeuchi who is a prolific inventor with numerous awards, honors and recognitions. The case study begins with a brief synopsis of the background of the invention followed by 1) a discussion of the patent applications associated with the invention, 2) inventor assignment and power of attorney designations, 3) submission of an information disclosure statement and duty of candor, 4) summary of office actions, 5) summary of applicant response to non-final rejection, and 6) allowance of the patent application. With this case study, we hope to de-mystify the patent prosecution process and better prepare electrochemical and solid-state scientists, engineers and technologists to interact with their patent counsel regarding their inventions.

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confidence: 99%

Looking at Patent Law: Patenting an Electrochemical Invention for Eradication of Microbes from the Surfaces of Implants—A Case Study

Inman

2022

“…Recall from our previous article, 1 the prosecution history (i.e., examination record) of a patent application is publicly available in the file wrapper of the United States Patent and Trademark Office (USPTO) Patent Application Information Retrieval (PAIR) system. 2 With the USPTO PAIR system as the primary source of information for this case study, we illustrate the prosecution "events" encountered during the examination of U.S. Patent No.…”

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confidence: 99%

Looking at Patent Law: Patenting an Electrochemically Mediated Oxidation Reaction on Electrode Arrays–A Case Study

Inman²

2022

In this installment of the “Looking at Patent Law” series, we present a case study of the prosecution of U.S. Patent No. 7,507,837 directed towards “Process for Performing an Isolated Pd(II)-Mediated Oxidation Reaction” assigned to CombiMatrix Corporation of Mukilteo, Washington. This case was chosen to coincide with the focus of this issue of Interface on the Organic and Biological Electrochemistry (OBE) division of the Electrochemical Society (ECS). Notably, Prof. Kevin Moeller, a co-inventor on the subject patent, is a member-at-large of OBE. The case study begins with a brief synopsis of the background of the invention followed by 1) a discussion of the parent and child patent applications associated with the invention, 2) inventor assignment and power of attorney designations, 3) summary of office actions, 4) summary of applicant response to non-final rejection, and 5) allowance of the patent application. The case study discusses double patenting and the applicant’s response by filling a terminal disclaimer to traverse the rejection. With this case study, we hope to de-mystify the patent prosecution process and better prepare electrochemical and solid-state scientists, engineers and technologists to interact with their patent counsel regarding their inventions.

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confidence: 99%

Looking at Patent Law: Detecting Crevice Corrosion in Seawater Piping Systems Using an O-Ring Sensor-A Case Study

Inman²

2022

In this installment of the “Looking at Patent Law” series, we present a case study of the prosecution events of U.S. Patent No. 5,865,971 directed toward “Sealing Ring with Electrochemical Sensing Electrode." This invention aligns with several divisions of the Electrochemical Society (ECS), including Corrosion (CORR), Industrial Electrochemistry and Electrochemical Engineering (IE&EE), and Sensor (SENS). Notably, the development team for the o-ring crevice corrosion sensor included many members of the ECS. The case study begins with a brief synopsis of the background of the invention followed by 1) summary of key drawings and the specification of the invention, 2) inventor assignment and power of attorney designations, 3) submission of the Invention Disclosure Statement (IDS) and associated Duty of Candor, 4) summary of the non-final office action (NF-OA) and rejection, and 5) applicant response and allowance of the patent application. The case study illustrates the use of a professional search of the prior art and the applicant providing a summary of the prior art in a “Statement of Relevancy.” The “Statement of Relevancy” allowed the applicants to provide a convincing summary of the prior art to the USPTO and to craft well-defined claims avoiding rejections based on lack of novelty and obviousness. With this case study, we hope to de-mystify the patent prosecution process and better prepare electrochemical and solid-state scientists, engineers and technologists to interact with their patent counsel regarding their inventions.