PAPER: FD4 MARKS AWARD : 61. The skilled person is familiar with insect traps and is likely a designer or manufacturer of insect traps.

Transcription

1 PAPER: FD4 MARKS AWARD : 61 Construction The skilled person is familiar with insect traps and is likely a designer or manufacturer of insect traps. What would such a skilled person understand the claims of A to mean? Claim 1 1a "An insect trap" - Sets the scene, means that the claim defines a product (so isn't a method or process) 1b "Comprising a housing having an opening through which insects can enter housing" - "comprising" = including but not limited to - "housing"- in embodiments is a box with a roof R, floor F, front, rear and side walls W1-W4 that form an enclosed space (see pg4, lines 35-36) - Claim 3 defines "the floor of the housing" without antecedent basis, so implying that the "housing" of claim 1 has "a floor". - As the insects "can enter the housing", the housing must "form an enclosed space" and must therefore have walls that enclose the space, and at least one of those walls is "a floor" due to claim 3. - This is consistent with the cited description, detailed embodiments and claim 3. - pg 4, line 34 recites "a housing 2 having a single opening 3", but claim 1 only defines "an opening". - no reason to limit claim 1 to a single opening, so "an opening" = one or more openings. - The opening(s) must extend through one of the walls (see above) so that "insects can enter the housing", as defined in claim 1. - "having" is similar to "comprising" - the housing has an opening but can also have other features (e.g. the walls, as discussed above) 1c "the housing containing a source of passive insect attractant" - "the housing" - see 1b above 1

2 - "containing" - means within the enclosed space of the housing (see 1b), because this is the usual meaning of "contain", and is consistent with the embodiments, see e.g. pg 5, lines 4-5 "located within". - "A source" - quite functional and will depend on what the "passive insect attractant" is. Only description is of " a body" (see pg 5, lines 4-5), but this is defined in claim 2, or a "matrix" (pg 4, line 2), but this is "preferred". - "source" is anything capable of fulfilling function of emitting the "passive insect attractant" because the attractant must be diffused in order for the insect trap to function (see pg 5, lines 21-22) - because insects must detect attractant (see pg 3, line 32) to pg 4, line 3). - "Passive" - "means that no electricity is required" (pg 3, lines 20-21) but this refers to "passive traps" (e.g. fly paper) and not the attractant. Is word used with same meaning? - Pg 3, line 30 - "passive source of attractant a source of insect pheromones". - Contrast to pg 3, lines 22 to 23 - "active traps... comprise a lure, such as a blue UV light" - which would require electricity. - seems logical that "passive" in claim 1 means that no electricity is required. - "Insect attractant" - only example given is insect pheromones (see pg 3, lines 30 to 31) or insect sex pheromones (pg5, lines 4-5). But insect pheromones are defined in claim 2, and are described as preferred on pg 3, line 30, so "insect attractant" must be broader than this. - "passive insect attractant" means something that attracts insects without needing electricity to function. 1d "The volume between the opening and the source of insect attractant providing an insect fly path" - "the volume" must be within the enclosed space of the housing (see 1b) as the source of insect attractant is within the housing (see 1c) - "the volume" is at least a part of the enclosed space defined by the housing. - "providing" - if its an empty space then that is all that is "provided" - a space for insects to fly through. Seems to be all that is required, so no need for any features/structure so long as insects can pass from the opening towards the attractant. 2

3 - But the fly path may be "interrupted", as defined in claim 3 and as per embodiments where screen 5 blocks the route of insects I reaching the attractant 7 (see Fig 2). - Also, pg 6 lines 3 to 7 and Fig 3 describe an embodiment where baffles 9 extend to provide a "tortuous" flight path. - The volume may have features/structure or be defined between said features/structure. - "insect fly path" - equivalent to "insect flight path" described on pg 5, lines and pg 6, lines 3 to 7. - In both cases, the insect flight path is "interrupted" by the screen 5 that kills the insects. - However, this feature is defined in claim 4 so is not a requirement of claim 1. - The "insect fly path" extends from the opening towards the attractant, but may or may not be interrupted by the screen. 1e "a screen located within the housing" - Only logical to read that the "insect trap comprising"... "a screen...", so the screen may be on part of the housing or may not be. - "screen" - pg 5, lines "the screen 5... comprises a steel mesh 51 and a plastic surround 52". - Although mesh & surround not defined in claim 1 or any other dependent claims, seems logical that the "screen" must be or have a mesh or similar arrangement through which the attractant can disperse but the insects can't pass through. - Otherwise attractant won't reach opening of embodiments and/or insects would not be killed. - "screen" requires at least a mesh like member having openings - The screen is located within the housing so is within the enclosed space (see 1b) - In embodiments parts of screen, including the handle 6, protrude outside of the housing 2 (see Figs 1 & 2), so there is no reason for the whole of the screen to be within the housing - some part(s) may protrude from the housing. - The screen of claim 1 need not be "located at an angle", because this is defined in claim 3 and described as "preferable" on pg 4, line 8. 3

4 Also the screen of claim 1 need not be "coated in an adhesive", because this is merely an "advantageous" feature - see pg 4, line 13. 1f "and a source of electrical power to electrify the screen" Claim 2: - the "insect trap comprising"..."a source of electrical power..." - Source could be "a dedicated source" or "mains electrical supply" - see pg 4, lines Could be "batteries or low power generators, rather than mains power" - see pg 5, line 37 - pg 6, line 1. - Could be any source of electrical power. - In order to "electrify the screen" the screen must comprise a conductive material. Only example is a "steel mesh" (pg 5, line 8), but skilled person would understand that any metal could replace the steel, so no reason to limit claim to just steel. - Screen also requires electrical contacts to connect to power supply, as explained on pg 5, lines screen is metal and comprises electrical contacts. - "to electrify" means not claimed in use - it is just capable of being electrified. - However, the "insect trap comprises..." "a source of electrical power" - This implies that the power source is part of the apparatus, but this clearly isn't possible for mains supply except when in use. - However, it would be clear to the skilled person that such language is intended to cover a plug/socket for connecting to mains (rather than the whole electricity system) or batteries/generators, as explained earlier. 2a "An insect trap according to claim 2" - means that claim 2 includes all of the features of claim 1 2b "Wherein the source of insect attractant is a body containing one or more insect pheromones" - "the source of insect attractant" - see 1c. - "is" - means that it is this, not only comprising or including - "body" - consistent with language on pg 4, line 4-5 and lines 21-22, but there is little description of the a body. 4

5 - pg 4, line 2 mentions a "matrix material which is doped with... insect pheromones", so the body could be a matrix material (although this is only described as preferable). - have to construe functionally, (sufficiency?) and function of "body" is to emit/release pheromones; in to the housing - see pg5, lines 21 to "body" is not really any narrower than "source" of claim 1. - but body must also be able to "contain" the pheromones - "one or more" = any number of, but at least one. - "insect pheromones" - defined on pg 3, line 30 to pg 4, line 4. - May be natural or synthetic - pg 4, lines Have to be, or be the same as, "chemicals secreted by an insect to cause a change in the behaviour of another insect". Claim 3 3a "An insect trap according to claim 2" - means that claim 3 include all the features of claims 1 and 2. 3b "Wherein the screen, or a portion thereof, is angled with respect to the floor of the housing" - "the floor" - no antecedent basis - dealt with in 1b - housing must have a floor. - "the screen" - see 1e above. - "or a portion thereof" = or a part of the screen. - "angled with respect to the floor" - pg 4, line 8 - "screen is located at an angle" - preferred embodiment. - pg 5, lines 15-17; "the screen 5 is longer than the height of the housing 2 so it is located at an acute angle with respect to the floor F of the housing 2": detailed embodiment. - No description of only a part of the screen being at an angle (sufficiency?) but skilled person would understand the claim language to mean that only a part of the screen could be angled. 5

6 Claim Requires: - No requirement for any particular angle, but probably doesn't mean 180 o (i.e. parallel) or 90 o (i.e. perpendicular), as pg 5, line 6 describes an 'acute angle'. - Also skilled person would understand that purpose of the angle is to direct the dead insects towards the floor, as explained on pg 4, lines angle must be such that insect fly path (I) and screen (5) interact so that insects fall downwards after the insects hit the screen (5), and do not sit on the screen (5), as shown below: NOT: Claim 4: 4a "An insect path according to Claim 3" - error - obviously meant to state "An insect trap", as per 1a, 2a +3a from which claim 4 depends. AMEND - Claim 4 includes all features of claims 1, 2 & 3. 4b "Wherein the screen interrupts the insect fly path". - "insect fly path" defined in 1d. - means that the screen, which is angled (as per claim 3) extends across the path of insects travelling from the opening to the body containing pheromones, as per embodiment described on pg 5, lines 24 to 26 and shown in Fig 2. - It is possible that the screen 5 must extend entirely across the enclosed space of the housing between the opening and the body in order to achieve this, and as shown in Fig 2 and described. 6

7 - But the skilled person would understand that this is not strictly necessary, as long as the insects are prevented from reaching the body by the screen. Claim 5 5a "An insect trap according to claim 1" - Means that claim 5 includes all the features of claim 1. 5b "further comprising a removable container located below the screen for receiving dead insects. - "further comprising" = the insect trap also includes, but is not limited to - "removable container" - normal meaning is a container (body capable of holding something) that can be removed from the insect trap, and this seems to be consistent with the described embodiments. - In particular, see pg 4, lines (-"tray" = "container") and pg 5, lines 1-2 ("tray 4" = "container"). - "container" could be a tray, but no need to limit to only trays. Must be removable from insect trap. - "located below the screen for receiving dead insects" - "below" the screen so that dead insects fall in o container during use (see pg 4, line 12 + pg 5, lines 26-28). - so "below" refers to position during use of the insect trap. Claim 6 6a "A screen for capturing insects in an insect trap" - 2nd independent claim - doesn't refer to claims 1 to 5, so could be any "insect trap". - "for" = suitable for, not necessarily intended for. - So "screen" must be capable of "capturing insects in an insect trap" - i.e. can be used in a trap - not clear if this means the "trap" must have any particular features, but probably not - description on pg 4, lines is only optional - "may". 6b "the screen comprising a flat mesh secured to a frame" - "the screen" - see 6a 7

8 - "comprising" = including but not limited to. - "a flat mesh" o only steel mesh disclosed (pg 5, line 8), but could be any metal for same reasons as set out in part 1f & discussed further below. - "flat" is clear, means planar, i.e. mesh can't be curved. - "secured" - in example, method of securing is not disclosed (sufficiency) so the skilled person would understand that any means of securing/attaching are suitable. - "a frame" - surround 52 is a "frame" and is connected to mesh 51 on every side - see Fig 4. - But no reason to limit claim 6 to this. - frame need only support the mesh. 6c "the mesh being coated in an insect adhering material" - Example "insect adhering material" is an adhesive - see pg 4, line 13, which is preferably "electrically conducting" - see pg 4, lines & pg 5, lines It's not clear whether the adhesive must be "electrically conductive" if the electrical mesh is to work, but it will be assumed not at the moment, so the "insect adhering material", which may be an adhesive, doesn't have to be electrically conducting. 6d "and being electrically conductive" Infringement - refers to mesh being electrically conductive. - only example of mesh is "steel mesh" - see pg 5, line 8, but as discussed in 1f, the skilled person would understand that any metal could be used. MARKS AWARDED 16 Does product shown in Fig A of document B, and described from pg 10, line 25 to pg 11, line 23 of Fig A (hereinafter called "Trap 1") fall within the scope of the claims of Patent A? i.e. does Trap 1 include the features of the claims? 8

9 Claim 1: 1a 1b Yes - pg 10, line 27: "Our first insect trap". Yes - pg 10, lines 26-27; " a simple enclosure with an opening at one end (Insect Entrance)" - Enclosure = housing - it encloses a space and has a floor partly formed by flaps F1, F2, F3 - See Fig A. - Opening is an "insect Entrance", so insects can pass through. 1c Yes - pg 10, lines "and a source of pheromones... (T)he source is a cotton pad soaked in a pheromone containing solution". - Pheromone is example of A, so must be a "passive insect attractant" 1d 1e 1f Yes - clear that insects fly from opening (insect entrance) as far as they can towards pheromone - as explained on pg 10, line 30 to pg 11, line 1, and pg 11, lines of B. Yes - any/all of meshes 1 to 3 are "screens". Yes - see pg 11, lines "electrical connection". Claim 2 As discussed in construction section, only a plug/socket is sufficient to satisfy this part of the claim. Claim 1 is infringed by Trap 1 2a Yes - See above 2b Yes - pg 10, lines 27-28: "The source is a cotton pad soaked in pheromone - containing solution" Claim 3 cotton pad = body Claim 2 is infringed by Trap 1. 3a 3b Yes - see above No - no description of such an angle and Fig A shows perpendicular arrangement, which is excluded from meaning of "angled" (see construction section) Claim 3 is not infringed by Trap 1. 9

10 Claim 4 4a 4b No - claim 3 not infringed Yes - all meshes 1-3 "interrupt" the path of insects between the opening and the pheromone - see Fig A + pg 10, line 29 to pg 11, line 4. Claim 5 Claim 4 not infringed by Trap 1, but only because of dependency on claim 3. 5a Yes - see above 5b No - no 'removable container' in Trap 1. - only has flaps 1-3, which aren't "containers". Claim 5 not infringed by Trap 1. Claim 6 For this claim, consider screen in Trap 1 individually or as part of trap. 6a 6b Yes - meshes 1-3 are 'screens' and can clearly be used in an insect trap. No - apparently no 'frame' - pg 11, lines 6-7, "the meshes (M1, M2, M3) are glued or otherwise secured to the inside of the enclosure". 6c 6d No - no mention of such a feature Yes - meshes are electrified, so must be conductive. Claim 6 not infringed by screen(s) of Trap 1. Does Trap 2 (Fig B + pg 11, line 25 to pg 13, line 13 of B) include the features of the claims of Patent A? Claim 1 1a Yes - pg 11, line 26: "Our second insect trap" 1b Yes - same as Trap 1, see pg 11, lines c yes - Pheromone (same as Trap 1) - see pg 11, line 27 10

11 1d Yes - see pg 12, lines 3 to 5: "In the direction of travel of an insect, that is running from the opening to the source of pheromone" 1e Yes - Due to 1f, "Ball of wire" must be "screen" (i.e. not the meshes). pg 11, lines "The ball of wire comprises plural metal strands extending between upper and lower metal contacts". ball of wire is like a mesh. NOTE: Court may well consider that ball of wire is not a "screen" as it doesn't have wires in a direction across/around, only between upper and lower parts. 1f Yes - pg 12, lines "electrically connected". See construction of 1f - plug/socket is enough for this feature. Trap 2 appears to infringe claim 1. Claim 2 2a Yes - See above. 2b Yes - see pg 17, line 27 Claim 3 Trap 2 infringes claim 2. 3a 3b Yes - See above Yes - if "ball of wire" is "screen" (see claim 1), then due to shape of ball at least some "portions" of the ball will satisfy the angle requirement. Claim 3 infringed by Trap 2. Claim 4 4a Yes - See above 4b Yes - See pg 12, lines Claim 4 is infringed by Trap 2. 11

12 Claim 5 5a Yes - See above 5b No - No mention of a removable container in B. Claim 6 Claim 5 not infringed by Trap 2. 6a Yes - either mesh screens M21, 22, 23 or ball of wire? 6b Yes - but only mesh screens M They are flat before insertion in to enclosure, and has a frame (solid portion) See pg 12, lines 1 to 14. 6c 6d No - No mention of such a material or function. Not clear - mesh could be metal, but isn't electrified in use. claim 6 not infringed by Trap 2. MARKS AWARDED 21 Validity Prior Art The following prior art has been identified: - Background art mentioned in A - i.e. the fly paper and active trap of C. - Background disclosed in C - i.e. toxic substances. - Embodiments of C - Background disclosed in D - i.e. fly paper - Embodiments of D. The fly paper (background of A and D) is not relevant to any of the claims, as it does not have any of the required features. Similarly, the background of C talks about toxic substances, but these are not "insect traps", so are also not relevant. Novelty of Claims Vs. C - C published before filing date of A, so is full prior art. 12

13 Claim 1 1a Yes - see pg 15, lines 3-4: "Trap" and "other insects" 1b Yes - housing assembly 12 defines interior 15 with opening 17. See Fig 2. 1c 1d 1e Yes - pg 15, lines "preferably" a light "but other lures can be used". Pg 16 lines Carbon dioxide or food, which are "passive". Yes - see pg 16 lines 9 to 17 - fleas attracted through opening 17 in to hollow interior 15. Yes - grid 39 = screen. 1f yes - grid 39 is electrified - see pg 17, line 33. Claim 2 claim 1 lacks novelty over C. 2a 2b Yes - see above No - no mention of pheromones. - Double check with client that CO 2 isn't a pheromone. Claim 2 novel over C. Claim 3 3a No - Claim 2 novel 3b No - flat bottom 47 of pan member 45 must be 'floor' of housing, and grid 39 is flat on bottom 47. Claim 4 Claim 3 is novel over C 4a 4b No - see claims above. No - grid 39 does not extend across fly path - its in the bottom of the housing - see Fig 2. Claim 4 is novel over C Claim 5 5a Yes - See claim 1 above 13

14 5b No - pan 45 is a 'removable container', but it isn't 'located below' the grid - the grid is in the pan. Claim 6 Claim 5 is novel over C. 6a Yes - grid 39 is a "screen" 6b yes - grid 39 is secured to base member 37 6c yes - pg 15, lines "a trapping medium which may be a body coated with a stick substance... can be, and most preferably is, and electrified grid". But pg 17, lines 1-3 suggest these are alternatives, but pg 15 is clear so is disclosed. 6d Yes - grid is electrified in use. Claim 6 lacks novelty over C. Novelty of Claims Vs D (Attracta) D is full prior art. Claim 1 1a 1b 1c Yes - See pg 19, lines insects are trapped. No - no enclosed space. No housing, but pheromones disclosed which are a "passive insect attractant". See pg 19, lines d No - no such volume 1e) No - no housing 1f No - no electricity in Attracta. Claim 1 is novel over D. Claim 2 2a No - see above 14

15 2b Yes - pheromones provided in adhesive on mesh - see pg 20, lines 1 to 2. Claim 3 Claim 2 only novel over D due to dependency 3a 3b No - see above No - no floor or housing, but screen does undulate. Claim 3 novel over D. Claim 4 4a No - see above 4b No - no insect fly path - see claim 1 Claim 5 Claim 4 novel over D. 5a 5b No - see above No - no such container Claim 5 novel over D Claim 6 6a Yes - mesh = screen, and Attracta is a fly trap. 6b No - mesh is not flat, it undulates - see Drawing 1 6c Yes - mesh is coated with adhesive - see pg 19, line 32 6d Yes - aluminium mesh mentioned - pg 19, line 32 Claim 6 new over D Validity - Inventive Step Skilled person - see 1st page of construction section. MARKS AWARDED 14 Common general knowledge - possibly fly tape, as if is mentioned in A and D, but not clear if anything else might be common general knowledge. 15

16 Claim 1 Found to lack novelty over C, but could be possible that carbon dioxide or food are not considered to be 'passive insect attractants'. If this were the case, then claim 1 may lack inventive step because C teaches that "other lures can be used" (see pg 15, lines pg 16, line 18), and from D the skilled person learns that "pheromones attract insects" (pg 19, lines 20-26) and are "the most effective in attracting insects" - pg 20, lines Therefore, it would be quite obvious, and within the abilities of the skilled person, to use pheromones in C. Claim 2 If claim 1 lacks inventive step for the resons set out above, so does claim 2. Claim 3 None of the prior art discloses this arrangement. Therefore, only obvious if the skilled person would do this based on his common general knowledge. Doesn't seem likely because of arrangement of C (grid in bottom) wouldn't suit an angled screen. Claim 3 probably inventive. Claim 4 Is it obvious to the skilled person to move the grid of C to between the opening and the lure (light)? Would obviously still work, because the insects would fly in to the grid. But there is nothing to prompt the skilled person to do this. probably inventive - check with client. Claim 5 No obvious way to arrange a removable container below the grid of C, except to separate grid from the pan 45. Obvious? not sure - check with client. Claim 6 Base member 37 might not be considered a "frame", as it doesn't surround mesh. Obvious to provide such a frame? 16

17 No clear advantage of frame, so probably just a workshop modification - check with client. Sufficiency: MARKS AWARDED 7 - No real disclosure of how a "body" or "matrix" can contain the pheromone(s), but skilled person probably capable of solving this on their own, so no sufficiency issue here. - There is also no description of only a portion of the screen (5) being angled, as defined in claim 3. - But again probably obvious to skilled person that screen could be bent, for example: angled portion No sufficiency issues. floor MARKS AWARDED 1 Amendment - Probably amend to claims 2 + 4, which is supported by description (i.e. support to omit claim 3) by the summary - pg 3, line 30 and pg 5, line 25 - requirement for "angled screen" for these features. - Discuss with client - most likely to be valid and infringed by both Trap 1 & Trap 2. - Correct error in part 4a and antecedent basis of "the floor" in claim 3. Memo to Client MARKS AWARDED 1 - Claims are infringed, so you could enforce against Insects Away (IA) now, but validity issues do exist. - If you chose to enforce, could probably get an interim injunction to prevent display at the Trae Fair and import/sale of Trap 1 and Trap 2. But would have to risk high costs if later A was found invalid. - If IA were to import and start selling, they would commit the following infringing acts: 17

18 - importing (if they own while importing - may be 3rd party) - Keeping - offering to dispose - disposal Retailers stocking their product would also infringe by keeping, offering and disposing. Maybe inform retailers of presence of Patent A - don't threaten. - End users exempt - private & non-commercial use. Can amend UKIPO, but this would be opposed by Insects Away. Probably best amendment options open. - Check on status of other applications - can we enforce against them globally? Gives greater coverage, but very expensive. - How important to keep them off market? - Any interest in offering licence? - Could ask for a very high royalty? - Don't give undertaking requested by IA - could preclude future enforcement. - Best to reply stating that patent is valid and covers Trap and Trap 2. If they file revocation action, can amend claims then. Seek advice from US/FR/DE agents regarding overseas rights. As IA (don't want to enter litigation" they may well give up, pay a licence fee (if offered) or try to design-around. MARKS AWARDED 1 18