September 17, 2016

Backgrounds — The Less Said the Better

By Bryan K. Wheelock, Principal

Prosecutors are repeatedly being told by the Federal Circuit, and we are gradually learning, that the less said on the Background the better.  Whether it is by admitted prior art, criticisms of the prior art that work a disclaimer, or objects of the invention that limit the scope of the claims, backgrounds can do more harm than good.  Usually the less said the better.

The Background of U.S. Patent No. 8,007,204 is one that might be improved by brevity, although its problem — irony — is not as fatal as those listed above.  The ‘204 Patent is directed to a Floating Structure for Support of Mixed Use Facilities.  One of the problems of the prior art identified in the background are the restrictions of intellectual property laws:

Moreover, because of national copyright, patent and trademark laws within a nation, one goal is to establish libraries and manufacturing plants that are free of intrusion from the intellectual property laws of a land-based society.

The solution is a floating structure in the middle of the ocean, protected, of course, by patent issued by a land-based society.

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