Published 27/09/2017 by staff
On August 25, 2017, the Patent Trial and Appeal Board has decided Ex parte McAward. The case revolved around the patentability of James Gerard McAward’s invention of a “water leakage detectors...which are easily connectable to flexible water hoses, and, can be coupled together to monitor leakage from hot and cold supplies.”
Claims 1-20 were deemed indefinite, while Claims 1-7 and 10-20 were deemed unpatentable by the examiner in the Final Action because of lack of novelty and/or obviousness over prior art identified by the examiner. Appellants James Gerard McAward et al. sought review from the Patent Trial and Appeal Board.
The following is the excerpted Claim 1, chosen to represent Claims 1-20 as the rest stand or fall with the claim:
“1. A water detector comprising:
flow connectors carried by the housing including a spin-on female pipe connector at an inflow end and a spin-on male pipe connector at an outflow end;
at least one water presence sensor carried by the housing;
an electrically actuatable valve, carried by the housing, and having first and second states; and
control circuits, carried by the housing, coupled to the sensor and valve, and, responsive to a leakage indicating signal from the sensor, the circuits actuate the valve causing it to change state wherein the control circuits detect flood conditions, shut off a malfunctioning water branch to a home appliance and communicate to a premises alarm communication device or home automation system via a wireless link and wherein the water detector is configured to be reliable installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption.
The examiner challenged the “metes and bounds” of McAward’s invention, which according to the examiner were not clearly defined within Claim 1. Rather than providing additional description of the invention being claimed, McAward’s claim further describes the skill level required to utilize the apparatus by stating that the water detector is “configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber and cost effective adoption.” The language does not capture the structure of the invention. There is no language specifically claiming the subject matter.
Furthermore, it is claimed that no tools are needed for installation, but including this quality does not further describe the apparatus’s structure because it does not specify which tools are not needed. Again, rather than specifying the structure of the invention, the claim refers to the minimal skill level needed to utilize the invention. It is also noted that a “homeowner” can easily install the apparatus; however, a “homeowner” encompasses a varied collection of people who represent a wide range of skills.
In addition to the aforementioned points, Claims 1-7 and 10-20 were rendered unpatentable over the combined teachings of Walter (US 7,549,435) and Kaplan (US 7,403,839). McAward’s claimed water detector comprises “a housing [and] flow connectors carried by the housing including a spin-on female pipe connector at an inflow end and a spin-on male pipe connector at an outflow end.” Per the patent Examiner, Walter “fail[s] to explicitly show or teach the limitations wherein the flow connectors include ‘a spin-on female pipe connector at an inflow end and a spin-on male pipe connector on an outflow end’” but “it would have been obvious to modify the flow connections of the device of Walter to be ‘spin-on’ connectors...”
Furthermore, the patent Examiner found that the process of wireless communication to a remote device forewarning a possible flood was well known in the art, and states that “it would have been obvious ‘to use wireless communication in the device of Walter to allow remote and convenient wireless communication between the control module of the valve and a remote monitoring system, as it is taught by Kaplan” (19).
For the above reasons, the Patent Trial and Appeal Board affirmed the patent Office’s decisions of rendering Claims 1-20 as indefinite, and Claims 1-7 and 10-20 as unpatentable for being obvious.
The USPTO is responsible for ensuring that each patent clearly defines what is claimed so that other inventors are aware of where their patents’ boundaries lie. After being considered indefinite, a process is initiated during which the applicant has the opportunity to respond with amendments or evidence that the patent claims are sufficiently definite. Doing so in turn ensures that the rights gained through the patent are consistent with the inventor’s contribution to the field, and that the public seeking to invent have a clear understanding of what has already been done.
Full Ex parte McAward decision can be read here: https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20McAward%202017_08_25.pdf
Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject Matter
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial Industry
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?
Marin1/28/2016 9:10:56 PM
How Unpredictability Can Affect Obviousness Challenges
Marin1/28/2016 9:15:16 PM
The Patent Trial and Appeal Board Designates Two Decisions as Precedential
M. Cionca and I. Kim2/4/2016 5:55:16 PM
Software Inventions Are Still Patentable!
Marin Cionca2/16/2016 6:34:53 PM
In IPRs, patentees have to show that substitute patent claims are patentable
I. Kim PhD2/26/2016 8:47:51 PM
The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
Iris Kim, PhD3/25/2016 8:34:14 PM
Challenging a Claim’s Validity with Different Standards of Claim Construction
Marin Cionca5/17/2016 8:57:23 PM
Patent Claims Rejection Based on Inherency
Iris Kim, PhD6/1/2016 7:04:50 PM
The Patent Trial and Appeal Board Designates Five More Decisions as Precedential
Marin Cionca9/6/2016 9:26:12 PM
Patent Case Law: New Example of Software as Patentable Subject Matter
Marin Cionca9/15/2016 9:47:39 PM
Patent Law Alert: Federal Circuit Opens Door for More Software Patents
Marin Cionca2/21/2017 12:30:52 AM
Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable
Marin Cionca4/25/2017 9:48:49 PM
Monetization of Patents: How to Make Money with Patents
CIONCA - Staff6/15/2017 5:32:14 PM
Patent Law: Challenging the Patent Claim Definiteness Requirement
CIONCA - Staff6/28/2017 8:26:07 PM
Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution
CIONCA - Staff8/9/2017 5:39:58 PM
Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable
CIONCA Staff8/20/2017 3:16:11 PM
CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
staff9/15/2017 9:33:30 PM
staff9/27/2017 5:00:12 PM
Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience
staff9/27/2017 5:12:07 PM
CIONCA - Patent and Trademark Law Attorney
Staff9/28/2017 7:27:22 PM
Staff11/3/2017 4:20:04 PM
An Introduction to Provisional Patent Applications
11/10/2017 6:47:44 PM
An Introduction to Design Patent Applications
11/17/2017 1:24:20 PM
An Introduction to Patent Searches
12/1/2017 8:01:27 PM
An Introduction to Patent Cooperation Treaty Applications
12/26/2017 6:04:25 PM
CIONCA Sets Foot in San Francisco
1/2/2018 7:47:09 PM
The Lanham Act: Disparagement Provision Violates the First Amendment
CIONCA Team1/17/2018 8:12:06 PM
A Fork in the Road: Production or Protection?
CIONCA Team2/16/2018 4:07:48 PM
Fashion and Intellectual Property
3/8/2018 1:25:46 PM
Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance
3/20/2018 12:50:05 PM
Andrei Iancu - New Director of the USPTO
CIONCA Staff4/13/2018 9:10:04 PM
It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision
CIONCA Staff4/20/2018 5:25:25 PM
USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
5/4/2018 7:37:51 PM
The Hague System for Protection of International Designs
CIONCA IP5/17/2018 9:54:58 PM
Marin Cionca Presents at OCIPLA May 2018 Luncheon
7/3/2018 7:44:33 PM
Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation
Marin Cionca7/31/2018 6:50:05 PM
My patent expired? Can I still sue for patent infringement?
Staff8/16/2018 4:24:01 PM
Correcting or Changing a Patent After Issue Through the Central Reexamination Unit
Staff8/31/2018 7:26:58 PM
Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout
CIONCA Team Member9/17/2018 4:33:20 PM
Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.
Marin Cionca10/1/2018 7:42:12 PM
Can I Register a Color as a Trademark or Service Mark?
CIONCA Team Member10/16/2018 6:50:31 PM
A Double-Edged Sword: Benefit of Priority or Longer Patent Term
CIONCA Team Member11/19/2018 1:07:51 PM
The Appeals Process
Marin Cionca12/8/2018 8:35:06 PM
IP Assets - Procurement, Enforcement, Monetization
CIONCA Team Member12/18/2018 6:12:48 PM
Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname
CIONCA Team Member1/4/2019 4:12:21 PM
In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement
Marin Cionca1/23/2019 9:45:30 PM
Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent
CIONCA Team Member2/5/2019 7:22:27 PM
TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC
CIONCA Team Member2/19/2019 7:12:46 PM
Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims
Marin Cionca3/1/2019 9:36:50 PM
USPTO Director Andrei Iancu Visits Orange County!
CIONCA Team Member3/21/2019 3:49:43 PM
Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.
CIONCA Team Member4/3/2019 7:25:37 PM
The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential
Marin Cionca4/17/2019 3:48:33 PM
What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?
CIONCA Team Member5/7/2019 7:13:41 PM
The Federal Circuit Defines a Technological Invention
CIONCA Team Member5/20/2019 8:25:57 PM
PTAB Designates Cases as Precedential
Marin Cionca6/11/2019 8:43:17 PM
Can I Successfully License My Invention?
CIONCA Team Member6/27/2019 7:41:52 PM
Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.
CIONCA Team Member7/5/2019 2:22:42 PM
In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications
CIONCA Team Member8/5/2019 2:29:33 PM
Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation
CIONCA Team Member8/19/2019 7:46:17 PM
In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction
CIONCA Team Member9/4/2019 7:20:46 PM
Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.
We’d love to hear from you…we just need a little info
about your plans to take over the world!
P.S…Feel free to call us! (800)985-9198
Thank you for your message. We will respond within 24-72 hours. Thank you.