Specifically, Ng has recently filed a series of five innovation patents, while local RAINBOW LOOM distributor Funtastic Limited sent letters placing Headstart International Pty Ltd and Moose Enterprise Pty Ltd, distributors of the competing CRA-Z-LOOM and FUNLOOM products in Australia, on notice of the prospective patent rights. Headstart and Moose fired back by filing notices at the Australian Patent Office, along with numerous prior art documents and other information, contending that Ng’s innovation patent claims are invalid.
First examination reports have now issued in relation to all five innovation patents. In four cases, all of the claims have been found to lack novelty (and innovative step) in view of various prior art documents, most of which were raised in the submissions made by Headstart and Moose. All four of these patents include claims directed to the loom device itself, and the difficulty faced by Ng is that there is little structural difference between a loom suitable for use in weaving together rubber bands, and many older looms that have been used for weaving yarn.
For example, one of the documents cited against all of the innovation patents is US patent application publication no. 2008/0156043, entitled ‘Knitting Loom and Method of Use’.
‘Method’ Clams Are NovelThe fifth innovation patent is no. 2014100530, entitled ‘Method of Creating a Linked Item’. As the title suggests, this patent has claims directed to the method of using the loom specifically to create items from linked rubber bands, and is thus not anticipated by prior art methods of weaving strands of yarn, even if the loom is structurally similar. The only objection that has been raised in this case is to a lack of clarity in the wording of the claims, and it appears that this should be relatively easy to overcome via a minor amendment.
Problems With ‘Apparatus’ ClaimsAlthough all claims of four of the innovation patents have been rejected based on prior art, it appears likely that Ng will be able to overcome the majority of these rejections by careful amendment of his claims. In three of the four cases, the claims are directed to a loom device ‘for use’ in methods of creating links using rubber bands. In this context, the word ‘for’ is interpreted as meaning ‘suitable for’, and therefore does not provide a strong limitation on the scope of the claims.
For example, a prior art loom originally intended to be used for weaving yarn may nonetheless be ‘suitable for’ weaving together rubber bands, even if nobody had previously thought of putting it to that use. In this case, if the prior art loom comprises the same structural features as are recited in the patent claim, then the claim is anticipated, even though the use may be new (and even inventive).
However, such objections may commonly be overcome by amending the claims to include some more meaningful relationship between the device and the new use. In some cases, the phrase ‘when used for’ may be sufficient.
Claims Supported in Earlier Specifications and DrawingsWhat the Australian examiner has declined to do (despite encouragement in the submissions filed by Headstart and Moose) is to find that the claims of the innovation patents are not adequately supported by the earlier patent applications on which they have been based.
All of the patents ultimately claim the benefit of US provisional application no. 61/410,399, which was filed on 5 November 2010. An Australian standard patent application, no. 2011324026, resulted from the national filing of an International Application claiming priority from the US provisional. All five innovation patents are divisionals of this standard application, filed between March and May 2014.
The scope and wording of the claims in the innovation patents differs from the earlier applications, and they have presumably been drafted to ensure that they encompass the CRA-Z-LOOM and FUNLOOM products.
Headstart and Moose had urged the examiner to find that the innovation patent claims are not adequately based on the earlier applications, applying the new (post-Raising the Bar version of section 40) rules requiring a disclosure that is ‘clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’, and that the claims are ‘supported by matter disclosed in the specification’.
In this case, the innovation patents would not be entitled to divisional status, and the claims would not have a valid claim to any earlier priority date than the date of filing each innovation patent application. This would mean that the RAINBOW LOOM itself, as well as the competing products, and the earlier publications of Ng’s patent applications, would all be prior art to the claims, necessarily making them invalid.
The examiner agreed that the term ‘offset pins’ used in the innovation patent claims does not appear in the parent application, or in the original US provisional, but found that the arrangement in question was clearly illustrated in the drawings.
Conclusion – Is the Battle Hotting Up?Based on the nature of the objections raised in the five examination reports, one of Ng’s innovation patents seems almost certain to be certified, while the prospects for the remaining four appear reasonable.
Once an innovation patent is certified, it is enforceable, and Ng would have the option of commencing proceedings for infringement in the Federal Court of Australia. However, certification also opens an innovation patent up to opposition proceedings, so Headstart and/or Moose could take this opportunity to try to grab the initiative.
Either way, so long as there is a substantial amount of money to be made in selling rubber band weaving kits, examination of the patents is likely to be just the first round in a longer dispute. It will be interesting to see who takes the next shot.