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Sorenson ‘184 Patent Faces Final Rejection
| February 1, 2010
U.S. Patent No. 4,935,184 to Sorenson has been the subject of more law suits, to this author’s knowledge, than any other U.S. patent. It claims a method for injection molding “a thin-walled, hollow plastic product,” and has been asserted against processes for making numerous commercial products.
Two ex parte reexamination requests were filed against the ‘184 patent in 2007 and later merged into a single proceeding. The three primary examiners in that merged proceeding have now issued a final rejection of claims 1-2, 4, and 6-10 (claims 3 and 5 not being under reexamination).
There are three distinct rejections:
• claims 1, 2, 4 and 10 are anticipated by U.S. Patent No. 3,178,497 and claims 6-9 are obvious over that reference in view of other prior art;
• claims 1, 2, 4 and 10 are anticipated by Echterholter and claims 6-9 are obvious over that reference in view of other prior art; and
• claims 1 and 10 are anticipated by JP 60-119520 and claims 6-9 are obvious over that reference in view of other prior art.
The examiners additionally replied in detail to the ‘184 patentee’s previous attempts to distinguish these references. The ‘184 patentee may now traverse the final rejection or pursue an appeal at the Board of Patent Appeals and Interferences.
The case is interesting also from a theoretical viewpoint because the ‘184 patent has expired. Accordingly, the claims were construed in the “District Court-manner,” rather than receiving their “broadest reasonable construction” as is customary in normal prosecution and in reexamination of unexpired patents. The “broadest reasonable construction” approach normally taken by examiners in reexamination is one of the principal advantages enjoyed by an accused infringer in the Patent Office, as compared to District Court.
Also noteworthy is the fact that the examiners also relied upon constructions given certain claim terms in earlier court proceedings.
If the rejection of the claims is ultimately maintained, the ‘184 patentee will not be able to continue its pending law suits based on those claims.
