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Archived updates for Thursday, December 27, 2007

TGIF for the Top Ten Silly Patents of 2007

Captured by The Troll Tracker from the endpage of The New York Times Magazine on December 9, 2007; featuring, among others, U.S. Patent 7,182,378 for "Assist tool for chopsticks:"

Silly? Someone at The Times must get a lot of practice with their Ramen noodles.

Also check out the Troll Tracker's Top Ten Patent Trolls of 2007 and Patent Troll Tracker Haiku Contest Results

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USPTO Discontinuing Paper Notices

On December 26, 2007, the United States Patent and Trademark Office (USPTO) announced that the last separate weekly publication in paper form of Patent and Trademark Office notices will be December 25, 2007. The last annual publication in paper form of the consolidated listing of notices pertaining to USPTO practices and procedures will be December 25, 2007. Volume/page numbers will be displayed in the notices in the weekly eOG:P beginning January 1, 2008. The first annual publication in the eOG:P of the consolidated notices pertaining to USPTO practices and procedures will be December 30, 2008.
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Archived updates for Friday, December 21, 2007

"Controlled Amount" Limited by One-Sentence Definition in Specification

In Sinorgchem v. ITC & Flexsys America (December 21, 2007), the Federal Circuit relied on the just the itallicized portion from the specification in U.S. Patent No. 5117063 to define the claimed “controlled amount:”

Control of the amount of protic material present in the reaction is important. Generally, when the reaction is conducted in aniline, water present in the reaction in an amount greater than about 4% H2 O, (based on volume of the reaction mixture) inhibits the reaction of the aniline with the nitrobenzene to an extent where the reaction is no longer significant. Reducing the amount of water to below the 4% level causes the reaction to proceed in an acceptable manner. When tetramethylammonium hydroxide is utilized as a base with aniline as the solvent, as the amount of water is reduced further, e.g., down to about 0.5% based on the volume of the reaction mixture, the total amount of 4-nitrodiphenylamine and 4-nitrosodiphenylamine increases with some loss in selectivity so that more 2-nitrodiphenylamine is produced but still in minor amounts. Thus, the present reaction could be conducted under anhydrous conditions.

A “controlled amount” of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when aniline is utilized as the solvent.

The upper limit for the amount of protic material present in the reaction varies with the solvent. For example, when DMSO is utilized as the solvent and tetramethylammonium hydroxide is utilized as the base, the upper limit on the amount of protic material present in the reaction is about 8% H2 O based on the volume of the reaction mixture. When aniline is utilized as a solvent with the same base, the upper limit is 4% H2 O based on the volume of the reaction mixture. In addition, the amount of protic material tolerated will vary with type of base, amount of base, and base cation, used in the various solvent systems. However, it is within the skill of one in the art, utilizing the teachings of the present invention, to determine the specific upper limit of the amount of protic material for a specific solvent, type and amount of base, base cation and the like. The minimum amount of protic material necessary to maintain selectivity of the desired products will also depend on the solvent, type and amount of base, base cation and the like, that is utilized and can also be determined by one skilled in the art. [paragraph break added]

In the lower proceedings, the ITC held that the language “e.g., up to about 4% H2O based
on the volume of the reaction mixture when aniline is utilized as the solvent” should not
be considered part of that definition for two reasons. First, the ITC dismissed the 4% limit as merely an example that did not apply to all situations in which aniline was used as the solvent. Second, the ITC found that the 4% language was inconsistent with Example 10 (which appears identically in both the ‘063 and the ‘111 patents), a “preferred embodiment,” which uses more than 10% water in a reaction where aniline is the solvent.

According to opinion by Circuit Judge Dyk,

Where, as here, multiple embodiments are disclosed, we have previously interpreted claims to exclude embodiments where those embodiments are inconsistent with unambiguous language in the patent’s specification or prosecution history. Telemac
Cellular Corp. v. Topp Telecom, lnc., 247 F.3d 1316, 1326 (Fed. Cir. 2001); see also N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005). In Telemac, the district court looked to the specification to determine the meaning of the claim term “communication means,” since that term was written in the claim in
“meansplus-function” form. 247 F.3d at 1324. Telemac challenged the district court’s construction on the basis that it left certain embodiments inoperable. Id. at 1326. We held that the description of those embodiments did not call for a different construction. Id. Instead, we held that those embodiments “could not provide the structure or the scope of the claims. Id. See also Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1327 (Fed. Cir. 2002) (“where the prosecution history requires a claim construction that excludes some but not all of the preferred embodiments, such a construction is permissible”) (emphasis added).

It is moreover significant that Example 10 does not specifically disclose the amount of water used in the reaction. Instead, the amount of water used in that reaction can only be determined by a complex calculation.4 In stark contrast, the patentees in Tables 2 and 6, accompanying Examples 3 and 8 respectively, specifically disclose the amount of water used in those reactions. ‘063 patent col.9 ll.32-48, col.11 ll.25-33. In Example 3, for example, the amount of water added to the reaction where aniline is the solvent ranges from 2.2 to 4.7%, and illustrates the effect of water on the yield of 4-NDPA and p-NDPA. Table 2 shows that the yield dropped from 0.18 mmole to 0.05 mmole, an unacceptably low level, as the amount of water added was increased from 3.45 to 4.7%. Similarly, Example 8 illustrates the effect of the amount of water added to a reaction where DMSO is the solvent. Water added there ranged from 2.3 to 14.7%, and again shows that the yield dropped to an unacceptably low level when more than 8% water is added. Significantly, Example 10 is not even directed toward illustrating the control of the amount of protic material to be used in the reaction. . . . Under these circumstances, the fact that the calculated amount of water in Example 10 exceeds 4% where aniline is used as the solvent is entitled to little weight, and cannot override the clear definitional language set forth in the specification. . . .

However, as noted by Circuit Judge Newman in her dissent, if “the entire specification including the specific examples is consulted, rather than selected snippets, the correct claim scope is apparent from the specifications.”
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"Must Fit" Invalidates Community Design

According to Alicante News Online, a Community design has been declared invalid for the first time on the grounds that its form and dimensions were necessary in order to make it fit with another product. The contested Community design 000232996-0001 had been registered for the product “fluid distribution equipment” including 4 views, with the first one as follows:

The Invalidity Division reportedly concluded that “the RCD subsists in features of appearance of a fluid distribution equipment which must necessarily be reproduced in the exact form and dimensions in order to permit the fluid distribution equipment in which the RCD is incorporated to be mechanically connected to the head of a hotmelt application system so that either product may perform its function. Therefore, the RCD is to be declared invalid according to Article 25(1)(b) CDR in conjunction with Article 8(2) CDR.”
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New European Duties Expected for Trademark Royalties and License Fees

According to a report by Rouse & Co. International a recent meeting World Customs Organization Technical Committee on Customs Valuation decided that trademark royalty and license fee payments should in the future be included in the dutiable value of imported goods:
The outcome of the most recent WCO Customs Valuation sub-committee deliberations is expected to be documented in April 2008. . . . We would expect the latest changes to be adopted promptly by Customs authorities, at least in Europe. How quickly they will be adopted in other countries remains to be seen. However, if
European authorities are seen to be raising significant amounts of revenue from
the imposition of additional duties, other countries will probably be quick to follow.

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TradeMark, Patent Law, and Hague Treaties Get U.S. Senate Approval

According to IPO Daily News on December 20, 2007,

the U.S. Senate gave its advice and consent to ratification of three treaties protecting intellectual property rights: the Singapore Treaty on Trademarks (signed by the U.S. on March 28, 2006), the Patent Law Treaty (PLT) and Regulations (signed by the U.S. on June 1, 2000) and the Geneva Act of the Hague Agreement Concerning the Registration of Industrial Designs (signed by the U.S. on July 6, 1999).
The report did not state whether those treaties will require implementing legislation
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PCT Fee Adjustments for January 1, 2008

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office, that due to an adjustment in the exchange rate of the U.S. dollar with regard to the Swiss franc, the dollar amount of the following fees for international applications filed in the RO/US and IPEA/US will increase, effective 01 January 2008.
$1194 - International filing fee (first thirty pages)
$1109 - International filing fee (first thirty pages - filed in paper with PCT-EASY file on diskette, CD-R or DVD-R or filed electronically without PCT-EASY zip file)
$1023 - International filing fee (first thirty pages - filed electronically with PCT-EASY zip file)
$13 - Supplemental fee for each additional page over first thirty pages
$5200 - Sequence listing and/or sequence-related table on electronic medium only (PCT AI Section 801)
$171 - Handling fee (Chapter II fee associated with filing Demand for International Preliminary Examination)
The new amounts will be posted at:
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USPTO-JPO Patent Prosecution Highway Opens January 4

The United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) will implement the Patent Prosecution Highway (PPH) on a full-time basis, beginning January 4, 2008.

Under the PPH, an applicant receiving a ruling from either the JPO or the USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in corresponding applications. By basing the prosecution in the second office on patentable results from the first office, applicants can expect to obtain patents in both offices faster.

Updated requirements for participation in the USPTO-JPO PPH at the USPTO will soon be made available at: Until then, check out the Printable Form SB/20 ( Patent Prosecution Highway Request Form)

Requirements for participation at the JPO can be found at:
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Internet Prior Art Must Not Be Temporal

In "When is an Electronic Document a Printed Publication for Prior Art Purposes?", Wynn W. Coggins Group Director of Technology Center 3600 at The United States Patent and Trademark Office notes that

Prior art disclosures on the Internet or in an on-line database are considered to be publicly available as of the date the item was publicly posted. This is provided that the item is dated and not temporal, and can be indexed for subsequent retrieval. An example of a temporal item is a web broadcast that cannot be saved, retrieved or printed, e.g., a live simulcast feed that is not archived, and a "streaming" audio or video that "flashes" across the screen.

Websites can be used as references if posting dates can be found, and those posting dates predate the invention.

Examiners utilize commercial databases and the Wayback Machine to help establish website posting dates in order to qualify the website as prior art. The Wayback Machine finds archived web pages back to 1996 (each archived page is dated), and it covers many, but not all, web pages. Find archived pages for:

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U.S. Patent Application Size Increasing

Professor Crouch looked at a sample of 10,000 patents issued between January 1977 and December 2007 and counted the number of words in the description of the claimed invention. Based upon his graph, it looks like the length of the U.S. patent application is increasing at a rate of about 200 words per year since 1990.
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Archived updates for Thursday, December 20, 2007

TGIF for Price Insensitivity in Law and Love

"One study found that clients will not switch firms until the prices in the old firm are 34% higher than its competitors," writes Rees Morrison in Law Department Management, citing the J. Prof. Serv. Marketing, Vol. 3, 27-28 (1987) and Susan Samuelson, Law Firm Management: A Business Approach, Sec. (Little, Brown 1992). "For a law firm trying to horn in on a competitor’s turf, that is a staggering economic gap." At least until there's a change in client management, when some of the factors affecting price insensitivity might get "reevaluated." "Specialized knowledge is willingly paid for; prices are difficult to compare; high cost is often viewed as a sign of superior quality; legal fees represent a small proportion of income; and switching costs are substantial," notes Morrison.

And if you thought legal services were expensive, you might be interested in knowing that another study puts the average "fixed fee billing rate" for marriage at $1.5 million. According to Robert Frank writing for the Wall Street Journal on December 14, 2007, this matrimonial "preferred service provider negotiated arrangement" also varies by gender and age:

Asked how much a potential spouse would need to have to be money-marriage
material, women in their 20s said $2.5 million. The going rate fell to $1.1 million for women in their 30s, and rose again to $2.2 million for women in their 40s. Ms. Smock and Russ Alan Prince, Prince & Associate's founder, both attribute the fluctuation to the assumption that thirty-something women feel more pressure to get married than women in their 20s, so they are willing to lower the price. By their 40s, women are more comfortable being independent, so they're willing to hold out for more cash. Men have cheaper requirements. In the Prince survey, their asking price overall was $1.2 million, with men in their 20s asking $1 million and men in their 40s asking $1.4 million.
"My wife is fond of saying that when you marry for money, you have to earn every penny of it," notes one client who probably paid dearly for that bit of specialized knowledge. "Fortunately, I am still in debt. "

Thank Goodness It's Friday (and still time for more shopping),

--Bill Heinze
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Patents Issued per 100,000 Employees by State

Thanks to Michael White at the The Patent Librarian's Notebook for noting that the "State Science and Technology Institute (SSTI), a nonprofit organization that supports economic development through science, technology and innovation, has released a new report showing the ranking in number of patents issued per 100,000 workers for U.S. states and the District of Columbia from 2001-2006."

Idaho was first for 2006 with 266.8 patents per 100K workers. Mississippi was last with 13.6.
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Archived updates for Wednesday, December 19, 2007

TM Picture Paints One Thousand Words

"This case illustrates the power of pictures. One glance is enough to decide the appeal. . . .
[N]o one who saw these cans side by side could be confused about who makes which:"

Source: Top Tobacco, L.P. v. North Atlantic Operating Co., Inc. (7th Cir. Dec. 4, 2007)

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YOSEMITE BEER Geographically Descriptive for Goods from Eighty Miles Away

InIn re Spirits of New Merced, LLC, Serial No. 78710805 (December 12, 2007), the U.S. Trademark Trial and Appeal Board affirmed a refusal to register YOSEMITE BEER as being primarily geographically descriptive for alcoholic beer originating in Merced, California, 80 miles from Yosemite National Park.

In order for a mark to be considered primarily geographically descriptive, it must be shown that (1) the mark's primary significance is a generally known geographic location; and (2) that the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. As for the goods/place association, the Board noted that "Applicant's evidence and arguments in this regard are quite persuasive."

Early in the prosecution of its application, applicant took the position that Merced, "where the beer is brewed, is physically and historically linked to and associated with the nearby Yosemite National Park." (Response, April 3, 2006.) In addition, applicant submitted geographical information about Merced along with various promotional materials of the city to support this association, that is, "to confirm [Merced's] relationship and proximity to Yosemite National Park." (Response, March 10, 2006). . . .

The consumers for applicant's beer, including the residents of and visitors to Merced, would reasonably believe that the beer came from or near Yosemite and that there was some association or connection of the beer with Yosemite. Applicant argues that "it should not be penalized for its relative proximity to the Yosemite National Park." (Brief, p. 9.) However, the purpose of Section 2(e)(2) of the Act is not to punish a particular business for using a geographic name, but rather to leave geographic names free for all businesses operating in the same area to inform customers where their goods or services originate. See In re MCO Properties Inc., 38 USPQ2d 1154, 1156 (TTAB 1995). There is no question that "Yosemite" is a term that applicant's competitors in Merced are entitled to use to describe the geographic origin of their beer.

Under the circumstances, nothing more need be shown by the examining attorney in order to establish a goods/place association. See In re Opryland USA Inc., supra at 1413 (TTAB 1986) ("[I]n that the evidence shows a substantial part of appellant's commercial activities emanate from or are related to Nashville, Tennessee, and that city is not obscure or remote, it is unnecessary for the Examining Attorney to establish by other evidence that a services/place relationship exists between appellant's services and the city of that name.").

Even if, as applicant claims, the label on applicant's beer were to state that YOSEMITE BEER is produced in "Merced," the relationship of that city with Yosemite will cause the public to make a goods/place association of the beer with Yosemite. It would not be unreasonable for consumers to even assume, correctly or incorrectly, that applicant's beer is made from water drawn from the "clear streams" in the park, or perhaps from the river that flows from Yosemite into Merced.
The applicant also submitted nearly two hundred third-party registrations for marks that include the names of other National Parks (e.g., "Yellowstone" and "Rocky Mountain"), the names of rivers (e.g., "Snake River") to support its argument thatht the USPTO has "consistently found in permitting such marks to register that the public is not confused or deceived." However, the board was not convinced:

We point out that the issue under Section 2(e)(2) is not whether consumers will be "confused or deceived," but rather, as noted earlier, whether applicant has a right to exclude others from using the term to describe the geographic origin of their goods or services. Moreover, apart from the fact that applicant's generalizations about National Parks and the other types of places named in the third-party registrations are entirely unfounded, these registrations are
irrelevant to the question of whether commercial activity takes place in
Yosemite, or, for that matter, to any question concerning the registrability of
applicant's mark.

. . . Here, the evidence shows that both goods are offered and services are rendered in Yosemite National Park, and that the city where applicant is located actively fosters a connection between the city and Yosemite, such that for purposes of our analysis consumers would regard them as part of the same geographic area. In establishing a goods/place association between beer and Yosemite, the examining attorney need not show that the public would actually make the asserted association, i.e., that the public actually believes the beer is made in Yosemite National Park. See In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1146 (TTAB 1993) ("even assuming for the sake of argument that the public does not believe that NANTUCKET NECTARS soft drinks are actually manufactured on Nantucket (and of course they are not), nevertheless, these goods originate from a company" that has a significant connection to Nantucket). Rather the examining attorney need only show, as she has done here, a "reasonable basis" for concluding that the public would make the goods/place association. In re Loew's Theatres, Inc., supra at 868. The facts that there are restaurants serving beverages in Yosemite and that applicant is located in or nearby the Yosemite region and promotes an association with Yosemite, establish a goods/place association of beer with Yosemite. Consumers would likely believe that applicant's beer had its origin in or was in some way connected to Yosemite.

Decision: The refusal to register under Section 2(e)(2) is affirmed.

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Three Points for Improved Invention Documentation and Evaluation

INVENTION IDENTIFICATION - A commercial embodiment for the invention needs to be clearly identified, preferably in the form of drawings and a claim outline listing several elements that have not been previously combined in the same manner, in order to satisfy the novelty requirement for patentability. (More on the "nonobviousness" inventive step requirement below.) Once a claim outline has been identified, then inventorship can be confirmed by examining individuals' contributions to the conception and/or enablement of those features. Mere experimental results that might suggest how to configure a commercial modification are not enough. All of the possible variations and permutations should be identified in the disclosure along with the "best mode" contemplated by the inventor(s) for carrying out the invention. A summary presentation format for helping to evaluate whether the cost of patent protection is justified will then typically include
  • the 2-3 (structural and/or functional) items that would be combined at the "point of novelty" in the claim
  • the closest prior art that we know of (to confirm point of novelty, and give some feel for patentability)
  • the main advantageous/unexpected/ technical and commercial results that the combination provides (for patentability and rating)

PRIOR ART IDENTIFICATION - The disclosure must also identify all closely-related earlier activities, including earlier invention disclosures by the same organization, products, and patent applications, publications by anyone, and other publications and dates of public uses and/or offers for sale of similar technology. Without such prior art identification, there is no way to know what scope of protection might be available for the invention, and/or how difficult it will be to obtain any such protection, and what the deadline is for getting the application on file. If pertinent prior art is not discovered until after the application is filed (by the patent office) or after the patent is enforced (by a competitor), then the original justification for the patent will likely have been incorrect, especially if the application is refused, or the patent is invalidated. "Intentional" failure to disclose makes any resulting patent unenforceable, and intent may be inferred at a later time the benefit of hindsight

INVENTIVE STEP SUPPORT - The invention disclosure should also include an explanation concerning why the new combination of elements provides advantageous, and preferably unexpected results. These will impact patentability and rating. Persuasive legal arguments will likely have to be made two to ten years after the application is filed in multiple applications filed around the world. These non-obvious arguments are slightly different in every jurisdiction, but generally follow the same broad rationales, such as

  1. Combining prior art elements according to known methods to yield predictable results;
  2. Simple substitution of one known element for another to obtain predictable results;
  3. Use of known technique to improve similar devices (methods, or products) in the same way;
  4. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
  5. ‘‘Obvious to try’’—choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
  6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art; and
  7. Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

Under the latest U.S. patent examination guidelines, once the Patent Examiner makes any of these "prima facie" findings, usually by combing prior art references, it is then up to the applicant to submit persuasive rebuttal evidence and argument for overcoming the rejection. For example, in the case of a claim to a new combination of conventional elements, applicants must be able to persuasively argue that

  1. one of ordinary skill could not have combined the claimed elements by known methods (e.g., due to technological difficulties);
  2. the elements in combination do not merely perform the function that each element performs separately; or
  3. the results of the claimed combination were unexpected

It is also important to keep in mind that prior art is not strictly limited to the four corners of the technical documents being applied, but further includes specialized understanding of one of ordinary skill in the art, and the common understanding of the layman. The Patent Office will therefore also rely on things like “official notice,” “common sense,” and “design choice” for material that is not literally discussed in the text of a publication.

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Unitary Material Strap Not Equivalent to Sectioned Stretchability

In Wleklinski v. Targus (December 18, 2007, nonprecedential), the Federal Circuit held that there was no infringement under the doctrine of equivalents for a single unitary piece of inherently stretchable fabric where the claim requiring "auxiliary strap means" (left) with end sections (22, 24) "made of a relatively non-stretchable material" and the center section (20) "made of material which is longitudinally stretchable."

According to Circuit Judge Schall,
Neither did the district court err in granting summary judgment of no infringement under the doctrine of equivalents. We agree that there exist more than "insubstantial differences" between the accused products and the claimed
invention; this precludes a finding of infringement under the doctrine of
equivalents. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S.
605, 610 (1950) (requiring mere insubstantial" differences for the doctrine of equivalents to apply). As the district court found, the Targus strap, which has
an auxiliary strap means composed of a single unitary material made of the same
fabric, is the fundamental opposite of the claimed invention, in which the
auxiliary strap means requires separate sections made of different materials.
Likewise, a finding of infringement under the doctrine of equivalents would
impermissibly vitiate claim limitations. See Freedman Seating Co. v. Am. Seating
Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005) ("[A]n element of an accused product
or process is not, as a matter of law, equivalent to a limitation of the claimed
invention if such a finding would entirely vitiate the limitation."). Here,
Claim 1 requires separate center and end sections that are made of different
materials; finding equivalence with a single strap lacking separate sections and
different materials would impermissibly vitiate this limitation.
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Archived updates for Tuesday, December 18, 2007

Comparison of Defensive Publication Mechanisms

In "DEFENSIVE PUBLISHING: A STRATEGY FOR MAINTAINING INTELLECTUAL PROPERTY AS PUBLIC GOODS," Stephen Adams and Victoria Henson-Apollonio discuss the five areas for special consideration for organizations that want to take the defensive publication route: form,accessibility, timeliness, unambiguous publication date, and the rights arising from a disclosure. The article ends with a table comparing the aspects of various defensive publication mechanisms, and concludes
In short, if the main concern is to reach a specific audience but there is little interest in using the publication as prior art to trigger the rejection of a patent claim, then self-publication is likely the most cost-effective means of disclosure. But other options should be considered if an organization’s main goal in publishing is to defeat a potential patent application. In this case, using a commercial company that specializes in publications that reach the attention of most patent examiners is the recommended course.
Read more on "Writing technical disclosures, "Getting started with technical disclosures," and
"Solving business problems and managing risk with technical dislcosures" from the Securing Innovation Blog by (which offers a defensive publication service at
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Archived updates for Monday, December 17, 2007

WTO Talks Tie GI Protection to Genectic Resource and Traditional Knowledge Issues

According to William New writing for Intellectual Property Watch on December 17, 2007, a proposal from the European Union at an informal meeting of World Trade Organization conferees would limit registration of geographical indications to members who are above a certain share in world trade, leave open the decision of which products would be covered by the register, remove an 18-month deadline for any challenges to be filed, and eliminate the requirement for countries to monitor all registrations for opposition:
A group of countries with fewer GIs to protect again opposed the EU proposal despite the changes, sources said. The group of 17 supporting a 2005 “joint proposal” for a voluntary register of wines and spirits GIs entered in a database includes Argentina, Australia, Canada, Chile, Japan, New Zealand and the United States.

Meanwhile, new support for the EU effort appeared from countries seeking an
amendment to the WTO to require patent applications to include the disclosure of
the origin of genetic resources and traditional knowledge. Those supporting the
linkage of the two issues include Barbados, China, India, Morocco, and Turkey. A
developing country official said countries were pleased with the EU’s removal of
an “onerous administrative burden and costs.”
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Impact of IDS Rule Changes Varies by Art Unit

Using a group of 80,000 patents issued in 2006, Professor Crouch at Patehtly-O looked at how the twenty citation limits in the impending Information Disclosure Statement rules might impact the various art units and the USPTO as a whole:

From my sample, 25.1% of issued patents list more than 20 references. Patents listing more than 20 references have an average of 28 references. Some of these references may be cited by the PTO — However, the vast majority of references in patents citing 20+ are cited by the applicant. . . . The rules will almost certainly have a disparate impact on various art units within the PTO because some art units typically receive more cited references than others. . . . There is also some correlation with the number of references cited and the expected examination delay within the PTO.
Among the art units in his data:
Machine elements and power, Art Unit 3680
Expected Delay to OA (Months) - 24
Percent of Patents with >20 Refs - 14.8%
Average Number of Refs - 13.6

Power generation and distribution, Art Unit 2830
Expected Delay to OA (Months) - 19.4
Percent of Patents with >20 Refs - 15.3%
Average Number of Refs - 14.8

Organic chemistry, Art Unit 1620
Expected Delay to OA (Months) - 24.1
Percent of Patents with >20 Refs - 33.1%
Average Number of Refs - 24.1

Computer networks, Art Unit 2140
Expected Delay to OA (Months) - 40
Percent of Patents with >20 Refs - 41.9%
Average Number of Refs - 27.8

Organic compounds, Art Unit 1610
Expected Delay to OA (Months)- 29.9
Percent of Patents with >20 Refs - 41.0%
Average Number of Refs - 30.4

Medical instruments, diagnostic, Art Unit 3730
Expected Delay to OA (Months) - 28.5
Percent of Patents with >20 Refs - 40.9%
Average Number of Refs - 35.7

Molecular biology, bioinformatics, Art Unit 1630
Expected Delay to OA (Months) - 25.9
Percent of Patents with >20 Refs - 54.8%
Average Number of Refs - 44.2
"Heretofore, patent applicants have found it more efficient to simply dump untold numbers of prior art references into the PTO hopper without detailed analysis for fear of inadvertently omitting the most pertinent reference," adds Professor Wegner. "With the extreme cost in attorney time to meet the new IDS Rules, the default may switch to making a meticulous pre-citation review to focus upon only the truly most relevant prior art. But, a substantial effort will be required for this exercise, too, to fully meet the duty of disclosure."
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Archived updates for Thursday, December 13, 2007

TGIF for Sporting Anonymity

"I don't know whether to be flattered by the attention or insulted by the amount." -- The Patent Troll Tracker on Ray Niro's alleged offer to pay $5000 to anyone who would unmask his arch-critic.

"Yes, this is what our patent system has been reduced to." -- Techdirt on recapping the flap.

"There is sport in unmasking anonymous blawgers . . . ." -- Legal Blog Watch

"Thank Goodness It's Friday." -- I/P Updates
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Operations Research Analysis Shows USPTO Backlog Due to Non-Final Rejections, Not Continuations

In "Improving Patent Examination Efficiency and Quality, An Operations Research Analysis of the USPTO, Using Queuing Theory," 17 Fed. Cir. B. J. 133, 163 (2007), George Mason University Assistant Professor of Systems Engineering & Operations Yifan Liu and J.D. Candidate Ayal Sharon examined the queueing theory phenomenon known as "starvation of priority queues" in an attempt to validate the USPTO leadership’s concern with excessive continuation filings. Before conducting their simulation, they assumed that these concepts would demonstrate the efficacy of limiting the number of RCEs and continuing applications for the following reasons:
  1. A priority queue processes higher priority items first, giving them a shorter
    queuing delay – but at only at the expense of longer queuing delays for lower-priority arrivals. Since the USPTO gives higher priority to RCEs and continuing applications than to regular new applications, large numbers of RCEs and continuing applications should result in disproportionate waiting times for regular new applications.
  2. At the very least, a limit on the number of continuing applications would be desirable because continuing applications can produce multiple generations of unlimited numbers of high priority offspring. RCEs and multiple non-final office actions both contribute to the risk of starvation, but pose less potential risk than continuing applications because they do not produce parallel offspring (branching feedback).
Their model of a priority queue with both feedback and branching showed that

. . . the [current] USPTO model is saturated and is overwhelmed. Some sort of policy change is needed to lower the total traffic intensity.

. . . based on the current statistics, the results from limiting continuing applications seem similar to the results from limiting RCE applications. Prohibiting second and later generations of continuation application, as the only policy change, will not have much impact. It may help somewhat to prohibit all continuations, but the system will remain saturated, and as with eliminating RCEs, it is unfair to the applicants.

This is not to say that the USPTO does not need safeguards to prevent an excessive use of continuation applications from becoming a workload problem in the future. A policy limiting continuation applications would be similar to the “admission control policies” used to limit the number of arriving items in computer operating system priority queues. What this analysis shows, however, is that based on current statistics, such a policy will not currently have much of an effect.

. . . we find that the excessive number of non-final rejections per application is the main cause of the system’s saturation. The sensitivity analysis performed in appendix IV supports this conclusion. This number of excessive non-final rejections in each round of prosecution dwarfs the number of second and later RCEs and continuation applications. Reducing the number of non-final rejections per application is the most effective way to improve the throughput of the USPTO. This will help reduce the primary burden on the system — the large number of regular amended cases that remain alive in the system due to repeated non-final rejections.

. . . if we keep the current policies on RCE, continuations, and nonfinal rejections, we would need to increase the number of examiners by a factor of 1.2230 in order to decrease the total intensity from 1.2230 to 1. This would mean hiring 4215 x 0.2230 = 940 new examiners.139 (The USPTO goal for fiscal years 2005 and 2006 was to do exactly that.)

Hiring additional examiners is a problematic solution. Our hiring calculations are based on a on a "steady state" assumption that the growth rate of applications will remain proportional to the growth rate of the examining corps. However, for many years the incoming rate of applications has been rising, and is expected to continue to rise in the future. This means that the number of patent examiners would need to grow at least at a rate proportional to growth rate of new applications, ad infinitum. An exponential growth in hiring is not a sustainable solution. The USPTO has recognized that hiring is not a viable long-term solution to the problem.

We were surprised by the results of the simulation. We expected the results to show starvation of the priority queue, caused by the RCEs and continuations. Instead, we got the unexpected result that the large number of non-final rejections per round of prosecution is the major cause of the backlog of applications.

Given the limitations of time and scarcity of data, our model was very simple in terms of mathematical complexity. A more detailed analysis was beyond the scope of this modest student note. The authors hope that this note will encourage further research along these lines, both inside and outside the USPTO.

In reviewing the article, Professor Wegner also quotes a "respected senior corporate executive, now retired" who adds emperical support to the finding with his own
computer docket study of all of several thousand patent applications prosecuted since 1999 for the client, only 46 applications had a second (and only second, no third) RCEs filed therein. All but one of those 46 second RCEs were necessitated by being in applications in which more than one serial final action (2, 3, 4, 5 and even 7 final actions) had been made by the examiner, in violation of "compact prosecution." Only one single application file was found in which a second RCE was not filed in response to a second or greater examiner final action. It is respectfully submitted that this study is a more than large enough statistical sample size to prove the point.”
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Highlights of EPC 2000 and the London Agreement

According to Rupert Symons & Robin Browne (of Leaman & Browne) in their Decemeber 13, 2007 presentation to the APLF on "EPC 2000, The London Agreement & Saving Costs for European Patents,"

On EPC 2000 (starting December 13, 2007):
  • Swiss type claims are no longer necessary, e.g. “The use of X for the manufacture of a medicament for treatment of disease Y”.
  • Now can claim: “Product X for use for treatment of disease Y.”
  • Protocol on Interpretation of Art 69 EPC provides new Article 2 on equivalents: "For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims”
  • Prior filed but unpublished EP or EP(PCT) applications may now be cited against all designated states in EPs filed after 13 December 2007 ("rarely important")
  • Can now file by reference to a previously filed application stating just filing date ; application number; the Office in which it was filed. Certified copy then due in two months with translation, if necessary.
  • Can add or correct priority claims within 16 months from priority date
  • No need to file a translation of priority document unless it is relevant to patentability.
  • EPO will only search the first invention, so put the most important independent claim first; can no longer pay extra search fees
  • EPO now uses same examiner for search and examination. However, unduly broad or speculative claims may not be searched
  • Divisionals can be delayed until prior to grant of parent – but not later!!!
  • Four months to pay grant fee and file French and German claims translations, but further processing is available.

On The London Agreement:

  • No country having English, French or German as an official language can require a further translation.
  • For other member countries, no translation of the description may be required provided that it is in a preferred language. However, English is likely to be the preferred language for most countries, translations of the claims into each official language is likely to be required, and enabling legislation is yet to be passed in most countries.
  • The Agreement will only apply to EPs granted after it comes into force.

On Reduced Costs:

  • Claims Fees - Save $75.00 per claim
  • Using EPO as ISA/IPEA for PCT-Euro - Save $500
  • Attend to formal requirements after claims agreed - Save - $1500
  • Manipulate Renewal fee – pay one central fee
    Potential Savings during prosecution ~20%
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Drug Patents Not Driving Profits

According to Jim Bessen writing for Technological Innovation and Intellectual Property on December 27, 2007,

As economic theory predicts and as previous research has found, prices decline sharply when competing makers of generic versions of the previously-patented drug enter the market. Normally, lower prices increase demand for a product. However, Frank [Lichtenberg speaking at the Conference on the Economics of Competition and Innovation] found that the total quantity of patented drugs sold actually declines and this is true even when he controls for substitute drugs.

The explanation? Marketing.

. . . This suggests that much of the profit made by pharmaceutical firms is not, in fact, a return on their R&D, but is, instead, a return on their marketing investments. And if you ever harbored the illusion that the market for pharmaceuticals provided a model of well-informed consumers, think again.

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Challenge to USPTO Deputy Undersecretary's Qualifications Dismissed

The complaint was recently dismissed in Aharonian v. Gutierrez (D. DC) where the the appointment of Margaret Peterlin to the position of Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office was alleged to be unlawful because she is not a “citizen of the United States who has a professional background and experience in patent or trademark law” as required under 35 U.S.C. § 3(b).

According to the Momorandum from Judge Robertson:

Here, Congress has given only the broadest of instructions – that the Deputy
Director should have “a professional background and experience in patent or
trademark law.” 35 U.S.C. § 3(b). The statute is silent as to the content of
those terms. Were the decision subjected to APA review, the Court – not Congress
– would be the ultimate source of the standards by which the qualifications of
Ms. Peterlin would be judged: Is a law degree necessary? Is it sufficient? Are
law school courses in intellectual property a requirement? Is certification to
practice before the USPTO? Is law firm experience? How many years? If Congress
had intended the extraordinary situation in which judicial review would reach to
the very qualifications of agency officers for their policymaking positions, its
statute would not be drawn “in such broad terms that . . . there is no law to
apply.” See Citizens to Preserve Overton Park v. Volpe, 401 U.S. 402, 410
(1971) (citation omitted).
According to her official biography,

Before joining the USPTO, Ms. Peterlin was Counsel for Legal Policy and National Security Advisor for the Speaker of the U.S. House of Representatives, J. Dennis Hastert. In this role, she advised the Speaker, House and Senate leadership, and senior staff on legislative policy and strategy, including judiciary issues such as IP protection, and international relations issues.

She previously was General Counsel to Richard Armey, Majority Leader of the U.S. House. She clerked on the Fifth Circuit Court of Appeals for Judge Jerry E. Smith. Ms. Peterlin also served as an Officer in the U.S. Navy for four years, working in the communications field.

A native of Daleville, Alabama, Ms. Peterlin holds a bachelor of arts from the College of the Holy Cross. She earned a legal degree cum laude from the University of Chicago, where she was the founding Editor in Chief of The Chicago Journal of International Law. She is a member of the New York State Bar and lives in Virginia.

Is it any wonder why she's smiling?

But what does she know about queing theory?

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Archived updates for Wednesday, December 12, 2007

USPTO Information Disclosure Rules Expected Within Six Weeks

[Although] the content of the rules as they will be adopted is not known . . . As proposed, the rules required an "explanation," which included an "identification" and "correlation," of all prior art references if more than 20 references were submitted or for any reference of more than 25 pages. Based on past experience, the rules are likely to be announced by the USPTO within 2 to 6 weeks and take effect some weeks later.

More specifically, the original proposal included
  • Before a first Office action on the merits, requiring additional disclosure for English language documents over twenty-five pages, for any foreign language documents, or if more than twenty documents are submitted (documents submitted in reply to a requirement for information or resulting from a foreign search or examination report would not count towards the twenty document limit);

  • Permitting the filing of an IDS after a first Office action on the merits only if certain additional disclosure requirements have been met; and eliminate the fees for submitting an IDS.

  • Updates to the additional disclosure requirements would be required as needed for every substantive amendment.

  • Revising the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.
More information on the original proposal is available here, with more links to supporting materials available from Peter Zura's 271 Patent Blog.
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No Injunction Against Export of Machine that Performs Patented Process

In MPT v. Marathon Labels (December 12, 2007, not citeable as precedent), the Federal Circuit reversed an injunction prohibiting sales for export of a machine that performed a patented process. According to the opinion by Circuit Judge Moore:
At the outset, it must be acknowledged that the MPT patents in suit were method
of use patents, not apparatus patents. The injunction as written prohibits all
sales of the Smart Surface Placard (SSP), (the apparatus) even those to resellers who sell the apparatus for use outside the United States. None of the parties contend there is infringement for sales of the SSP to Mexico, or for sales of the SSP to a reseller in the United States who resells the SSP in Mexico. The patentee has repeatedly stated before this court and the district court that sales of Defendants’ SSP for use outside the United States do not infringe the MPT method patents. Given the parties’ admissions, the district court’s injunction is overly broad and therefore an abuse of discretion. Given the parties’ admissions, the district court should not enjoin sales of the SSP to locations outside the United States, and should not enjoin sales of the SSP to resellers who sell to locations outside the United States. Therefore, we reverse the grant of the injunction as written and remand for further
Read the lower court decision, via Professor Crouch's "Patently-O," with new job postings here.
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Archived updates for Monday, December 10, 2007

Not All Patent Applications Are Created Equal

According to the USPTO's Patent Public Advisory Committee Annual Report for November 30, 2007,

Not all applicants require the same turnaround. Even individual applicants may not need identical timing on each application filed. As a public entity, the USPTO cannot duplicate all the flexibilities available to private-sector entities. However, it is possible that one size does not fit all in the patent system.

A needs-based approach would provide the Office with a market-driven pendency system that fulfills the needs of the vast majority of the applicants while ensuring that the Office does not have to provide unnecessary, costly and arbitrarily short examination times while providing a realistic base for all non-essential applications.[Footnote 12: Restrictions should be put in place to prevent applicants from opting for longer pendency times solely as a means of expanding the scope of filed claims and reintroducing "submarine patents" back into the system.] Therefore the Committee recommends that the Office develop an exploratory, data driven, market based examination model for evaluation, taking fully into account the needs of the public and third parties. Again, all successful business organizations have market based delivery models that provide for the needs of their constituents, the Committee believes that the Office would be well served to evaluate such models itself.

The Patent Public Advisory Committee was created to advise Congress on the "policies, goals, performance, budget and user fees of the United States Patent and Trademark Office with respect to patents." The Committee’s duties include the preparation of an annual report submitted to the Secretary of Commerce, the President, and the Committees on the Judiciary of the Senate and the House of Representatives.
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USPTO PAC: Quality Examination Begins with Applicant's Search

According to the USPTO's Patent Public Advisory Committee Annual Report for November 30, 2007, patent "quality" is dependent upon five essential components:
  1. providing a meaningful definition of quality;
  2. accessing the best prior art;
  3. accessing the best information available to the applicant;
  4. assessing the appropriate level of examination resources necessary for highly complex applications; and
  5. attracting and retaining the most qualified workforce.

With regard to the third item, where applicants can perhaps make the most immediate contribution to patent quality, the Report notes that

The Office’s need for the most complete set of relevant prior art cannot be overemphasized. In our collective experience, the applicant often has access to
the most relevant prior art and is in the best position to distinguish the claimed invention over this prior art.

Unfortunately, when the Office receives numerous highly technical patent applications with little or no relevant prior art, not only is proper examination difficult, but a serious question of applicant’s motivation is raised. As examples, applications have been submitted for inventions in the crowded art units of electronics and automotive technology, many of which did not cite even one piece of prior art. Since neither art area is new, one wonders how the applicant overlooked the relevant prior art.

In instances such as these, we would argue that examination should not go forward. At the other end of the information-disclosure continuum, the Office sometimes receives applications with prior art submissions so voluminous as to completely overwhelm any examiner having, on average, 21.2 hours for application review. Extreme cases of this "data dumping" include applications having tens of thousands of pages divided among a thousand references or more.

This "super-sized" application fails to provide any discussion of cited references relevance or priority to the application and as such, is a significant impediment to the examiner’s ability to timely analyze and consider the references, much less to craft a meaningful response. In such "super-sized" applications is it fair to the system and the public for any presumption be afforded to these "dumped" references? Too little or too much information both present serious challenges to examination quality, and both abuses are created solely by applicants. These abuses must be prevented if the system is to function properly for the benefit of the public.

. . . While the Committee is not recommending a blanket search requirement, it does note that applicants are already under an obligation of full disclosure, so that additional guidance from the USPTO in rules should assist in eliminating any ambiguity applicants might have with respect to "full disclosure" of information in their possession. The Committee leaves to the Office the conditions and timing of a special pre-examination search requirement. Finally, the Office should consider the ramifications of the Inequitable Conduct theory on any proposed rules.

. . . Candidly, a further cause of ever-increasing pendency is clearly applicants’ behavior itself. From the filing of the nth continuation application, to the presentation of an excessive number of claims, to the late filing of information disclosure statements (IDS), to the failure to file any illuminating information, or the inclusion of large numbers of less relevant references in such statements, applicants severely and directly impact an examiner’s ability to perform focused, timely and quality examinations. Such behavior must be brought under control in a manner that is fair to applicants.

The Patent Public Advisory Committee was created to advise Congress on the "policies, goals, performance, budget and user fees of the United States Patent and Trademark Office with respect to patents." The Committee’s duties include the preparation of an annual report submitted to the Secretary of Commerce, the President, and the Committees on the Judiciary of the Senate and the House of Representatives.

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Archived updates for Monday, December 03, 2007

USPTO Trademark Document Retrieval Website Moving

According to the USPTO's Electronic Business Center,
The Trademark Document Retrieval (TDR) is now available at a new link: Links from Trademark Trial and Appeal Board VUE (TTABVUE) and Trademark Application and Registration Retrieval (TARR) to TDR will remain unavailable until Saturday afternoon, December 1, 2007.

"The USPTO has indeed moved TDR over to its own server that is not vulnerable to high usage of PAIR," notes electronic filing guru Carl Oppedahl on his TARR Listserv. "The good news is that TDR will again be reliably available. The bad news is that our various private client web pages and intranet pages have dozens of links to TDR pages for particular files" that will noe have to be updated.

See the EBC's "Planned Events" site for additional information. See their "System Alerts" site for information about planned or unplanned system changes and availability and a link to the current time in Washington, DC.
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Archived updates for Saturday, December 01, 2007

"Curved Member" Claim Unsupported by "Ball Bearing" Disclosure

In In re Paul Lew (November 29, 2007, nonprecedential) the Federal Circuit held that substantial evidence supported the Board’s determination that Lew’s amendments to replace the term "ball bearing" with the broader term "curved member" were not supported by the initial disclosure.
According to the nonprecedential opinion by Circuit Judge Gajarasa:
. . . the Board properly framed the question as whether Lew’s disclosure of only "ball bearings" is sufficient, in light of the initial disclosure, for a person of ordinary skill in the art to have determined that Lew was in possession, as of the initial filing date, of using any "curved member" in place of the ball bearings. See Noelle, 355 F.3d at 1348; TurboCare, 264 F.3d at 1118.

There is no language in the original written description that would suggest that using "ball bearings" was only one specific embodiment of Lew’s invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (explaining that it will usually be clear from reading the written description whether "the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive.") To the contrary, each time "the invention" is described, including in the summary of the invention and the abstract, it is stated to include "ball bearings." See, e.g., App. at 4 ("[I]t is a principle object of the present invention to provide a hub clutch bearing assembly that provides for a nearly instantaneous coupling of hub inner and annular sections across ball bearings . . . ."); App. at 4 ("[T]he hub of the invention facilitates torque transfer through a multitude of ball bearings that are each housed in contoured pockets . . . ."). This court has consistently viewed such language as "strong evidence" that the inventor intended his invention to be limited to embodiments containing such an element. See Scimed Life Sys., Inc. v. Advanced Cariovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001).

Moreover, the original written description could be read as suggesting that the spherical nature of the ball bearings was important to the proper functioning of the invention. The written description discloses that a key improvement of the invention over the prior art is that there is less "scrubbing of the bearing surface" and that therefore the clutch will deteriorate less rapidly, because "[a]s the ball bearings . . . tend to roll in the contoured pockets during free-wheel the engaging surfaces of each of the ball bearings will vary between each engagement." At the very least, the spherical nature of the ball bearings would appear to maximize this ability to roll and engage different parts of the bearing surface.
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