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Patent Law

: Benefit of Hindsight

Pondering the Unclaimed

By Alloy Comprising

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In Ex Parte Spriesterbach, the Board of Patent Appeals and Interferences upheld the rejection of all Applicant's claims.

What happened? The Applicant sells Zn-Al wires used for thermal spraying and discovered the addition of small amounts of indium (up to 500 ppm) to a zinc alloy wire having from 8 to 33% aluminum improved its corrosion resistance. Accordingly, Applicant filed a patent application on the improvement.

In the application, however, Applicant only filed claims to a wire having the specific composition. Upon examination of the claims, the USPTO found a Japanese reference, relating in no way to thermal spraying but nevertheless disclosing cylindrical test bars of an alloy intend for use as a sacrificial anode with the same composition. Thus, the claims were deemed anticipated (and obvious).

Instead of filing claims only to a wire, Applicant could have included claims to a method of using the wire, i.e. thermal spraying. These hypothetical claims would not have been anticipated by and likely would have been non-obvious over the Japanese sacrificial anode reference. Also, Applicant could have included claims to a method of manufacturing the wire, i.e. by casting, rolling and drawing. In contrast, the Japanese anodes were merely cast. Also, Applicant could have included claims to a coating having the specific composition, since that is the ultimate end product of the inventive wires. A little pondering the unclaimed, either at filing, during prosecution or before appeal, might have led to one or more of these solutions.

Full post as published by Benefit of Hindsight on September 29, 2008 (boomark / email).