If you are into patents, the chances are that you may have come across the term called ‘prior art’. Prior art is any knowledge or disclosure of the technology that exists already.
When we hear prior art, we think of patent documents, research publications, books, etc. However, to your surprise, there have been examples where comic stories, videos, sitcoms, websites, sci-fi movies, etc. were cited as prior arts against patent applications.
In this article, we will see 8 examples of unusual prior arts that just hammered the prospects of respective patents.
1. Donald Duck And Sunken Ship
This deserves our first mention in the list. Who’d have thought that one day a comic story might help in solving critical real-world problems?
The Sinking of Ship and The Problem
The story involves a ship called ‘Al Kuwait’. On September 14, 1964 ‘Al Kuwait’ turned upside down at the docs of Kuwait’s harbor. It was carrying around 5000 sheep at that time and all went down with it. Further, drowned sheep started decomposing in the water.
Since drinking water for the city of Kuwait was supplied from the Harbor, the fear of health hazards due to possible contamination of drinking water made it necessary to raise the ship.
Therefore, a solution had to be found to raise the ship before it was too late.
Raising The Sunken Ship
The Danish inventor Karl Kroyer (also spelled as Karl Krøyer) came up with the creative idea. He proposed to pump plastic balls made of expandable polystyrene foam into the ship through a tube.
On December 31, 1964, a total of 27 million plastic balls weighing 65 tons were pumped. Finally, the ship came up as the balls worked as buoyant bodies.
The total cost of this successful experiment was around $345,000. It may sound costly experiment to you, however, according to New York Times article (March 8, 1965, page 58), this actually saved most of the $ 2 million dollar insured value for the insurance company.
After this incident, Inventor Kroyer again used this method. This time, he raised a ship called Martin S of Svendborg which stood at the bottom of a harbor in Greenland.
Since this idea appeared to be fulfilling patentability requirements, Mr. Karl decided to file for a patent.
The Patents
For his creative & useful innovation, Karl Kroyer received patents in the United Kingdom (GB1070600(A)) and Germany ((DE1247893)).
You can look at figure 1 of Kroyer’s Patent given below to get an idea about this invention.
Let’s first look at the patent matter in brief. As per figure 1, ship 2 is the rescuing ship/ salvaging ship carrying buoyant bodies such as plastic balls. These bodies are pumped through tube 3 to sunken ship 4. When enough number of bodies are pumped, sunken ship 4 is raised to the surface.
As the patent right is territorial in nature and has to be applied individually in different jurisdictions, Kroyer approached Dutch Office for a patent (NL 6514306). Interestingly, this patent application was not approved for a whacky prior art. Yes, you read that right.
It was a comic story that destroyed the chances of getting a patent for such a creative solution.
The Donald Duck & The Sunken Yatch
The story of Donald Duck titled The Sunken Yatcht first appeared in 1949. This 10- page Disney comic story written, drawn, and lettered by Carl Barks, shows uncle Donald and the nephews raising a ship by filling it with ping pong balls pumped through a tube. You can look at the story depicted in figures below.
Since the inventor, Karl Kroyer claimed ‘buoyant bodies’ to be pumped through tube and we know that ping pong balls are buoyant bodies. Therefore, the Donald Duck story would have served as a novelty-destroying prior-art for Kroyer’s patent application.
This incident is a favorite example of patent attorneys when they talk about unusual prior-arts that were cited by a patent office. However, it remains unclear whether the Donald Duck story was actually used as prior art in the rejection of the patent application (NL 6514306) by the Dutch Patent Office.
This can not be confirmed because the documents related to the rejected patent application have been destroyed by now. Moreover, the Dutch Patent Attorney who represented the case has passed away several years ago.
Another rumor around this case is that the inventor kroyer himself got this idea from the American Millionaire Howard Hughes. In 1938, Hughes used ping pong balls in his plane to prevent it from sinking in case he had to make a forced landing on the water.
Another case, where a different Donald Duck cartoon was cited was for the patent application US3935743A. You can look at the snapshot where the USPTO examiner has cited Uncle Donald story.
2. Dennis The Menace AND GNASHER
This case relates to a patent application GB2117179. It was titled “Entry Signal System for Pets”.
These days, pets are very common and it is found that very often pets remain unattended when they need our attention.
This invention referred to a device that could be placed on doors. This way, pets could tell the people inside the house that they are at the door.
You can look at Fig. 7 below to get an idea about the working of the invention.
Now coming back to the main part, can you guess where did the British Examiner find the prior art for this patent application?……… Let’s not wait any further. It was his daughter’s magazine. When the examiner went to his home, the invention was right there in front of him on the first page of the comic book.
It was the “THE BEANO” publication no. 2015 published on Feb. 28th, 1981. The comic involved the well-known British comic character “Dannis the Menace and Gnasher”
You can see the same in the figure below:
Although, the patent for the application was granted. But this gives how bizarre the cited prior arts can be.
3. Steve Job’s Keynote Speech
Steve Job, while presenting iPhone to the world in 2007 stated, “boy have we patented it!”. He himself was named proud inventor in more than 300 patents.
Despite being so confident and well-versed he forgot to patent an invention related to iPhone. Not only he forgot to get a patent for the invention, but he himself disclosed it to the world also. Yes, you read that right.
In fact, Apple didn’t file a patent for the next 5 months after Job’s disclosure of the invention.
How could a giant like Apple miss it? One reason could be that patent is a territorial right. So, you have to consider local laws if you want protection in that country.
In the USA, according to the law of that time, you as a US resident would get a 12-month grace period to file their inventions, during which no published or public content would be considered prior art. The same was not the case in many other countries.
Whether Apple was cautious enough or not about the difference in local patent laws of various countries, we’d never know.
However, the validity of the patent was challenged based on this disclosure by Jobs when the patent went into litigation around the world.
Let’s talk about the invention for a moment. It was about the famous bounce-back effect in photo gallery. The patent in the discussion was EP2059868 entitled “portable electronic device for photo management”. This patent belonged to the group of so-called rubber-banding patents also known as overscroll bounce. This refers to the bouncing animation that takes place when a user scrolls past the end of a page. The more about the invention would be clear from the video of the keynote speech by Steve Jobs himself. You can see the patented matter at about 33:00 in the video included below.
Europe’s patent laws are stricter than the USA’s. This patent faced a tough time in various European countries. At first, it was held invalid within the borders of Germany. Federal Patent Court of Germany sided with Samsung and Google’s Motorola Mobility revoking the validity of the patent. Although, this decision was appealable.
The Court had relied upon the video of the original presentation of the iPhone in January 2007 delivered by Jobs himself. This video was submitted to the Court by Google’s lawyers from the Quinn Emanuel firm.
Finding this kind of evidence is hard. Prior arts found in a place where nobody would look at are the hardest to find. In the list of unusual prior arts, this case sits well.
4. 2001: The Space Odyssey
Although this prior art was not cited by any patent examiner, this definitely deserves the mention in the list of unusual prior arts.
This pertains to usual rivals Apple and Samsung. This time both were fighting over a design patent for tablet device.
Through this lawsuit, Apple had been trying to block the sales of Samsung tablets.
In this matter, Apple’s design patent D504,889 having the earliest priority date of March 17, 2004, disclosed a design of a tablet device. This included all sides (I.e. top, bottom, front, rear, right side, left side.).
Samsung which was trying its best to defend itself brought everyone’s attention to the tablet already disclosed several decades ago in 1968. That is way before Apple could come up with the design.
Samsung pointed out evidence of iPads being known to the public since 1968 from the science fiction movie “2001: The Space Odyssey”
You will find it interesting to look at the red-marked devices in a still shown below from the movie.
You can also look at this clip included below to find more about the tablets that Samsung talked about:
In this case, London High Court ruled that Samsung did not copy Apple’s iPad designs in building its Galaxy Tab product. If it interests you then can read the judgment here.
5. Windsurfing International v Tabur Marine (1985)
This case was pivotal in deciding what is an obviousness test for a patent. This case resulted in the development of ‘Windsurfing test’ in the UK. We will talk about this test later in this section.
Now coming to the main topic, the patent in the headline was GB1258317A. Windsurfing International Inc (Let’s call it ‘W’) owned the patent and was enjoying its right since the priority date i.e. 27th march, 1968.
The invention was about an arc-shaped sailboard as can be seen in FIG. 1. It helped the sailboard to achieve higher speeds with stability.
W found that another company named Tabur Marine (Let’s call it T) was manufacturing and selling the same type of windsurfing equipment.
Naturally, W & T entered into an infringement suit. In that T claimed that the patent held by W was invalid and should be revoked.
T contested that the invention patented by W actually lacked novelty. The prior art that was cited was the prior use of such equipment by a boy named “Peter Chilver”.
In 1958, Mr. Chilver, when he was 12 years old, made a sailboard. He had used that sailboard for sailing in an inlet at Hayling Island on summer weekends during two consecutive seasons.
It was argued that there is no doubt that the user was in a public place when he used the sailboard. The place was open and visible to anyone who was in the vicinity of the caravan site at Hayling Island where the family of the boy had stayed.
The Patents Court held that the patent was invalid as it was anticipated by the prior user named Peter Chilvers.
The Court also found the invention obvious in view of a published article. The published article was titled “Sailboarding-Exciting New Water Sport” and was published in a popular science monthly.
After these findings of the court, W tried to amend the claims with the permission of the court, however, the judge refused to allow it concluding that there was no scope for such an amendment.
After the judgment, W appealed in the “Court of Appeal” against the judgment of the Patents Court which involved 1) anticipation 2) obviousness 3) the refusal to allow the amendment.
However, the Court of Appeal dismissed the appeal after finding that the patent was anticipated, non-obvious and no amendment could be allowed.
This appeal resulted in famous test to determine obviousness which is known as the ‘Windsurfing test’.
“The Court laid down four steps to determine obviousness. They are as follows:
(i) Identifying the inventive concept embodied in the patent;
(ii) Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
(iii) Identifying the differences if any between the matter cited and the alleged invention; and
(iv) Deciding whether those differences viewed without any knowledge of the alleged the invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.”
Based on this test court found that the improvement carried out by the inventor, in this case, was not enough to gain the protection of the patent. And therefore, patent should not be given for such invention or improvement.
6. The Bible
A patent attorney waited for an office action and when he received one, he was found rushing to grab a copy of bible and studying it afterwards.
~ Anonymous
The patent office was European Patent Office. The patent application involved was EP3886614A1. It covered a method of bonding the winnower and dust wastes released in the cigarette manufacturing process.
When the written opinion of the examiner came, it referred to the Bible as in the screenshot below:
With this piece of information from the Bible, the Examiner argued that winnowing or separating the grain from the chaff has been known since ancient times.
Bible was not actually cited by the examiner in the list of relevant documents. It was just used for making a point while building an argument against the patent application.
Who’d have thought that one would find prior art capable of building an argument against the patentability of an invention among the strangest sources like Bible.
Moreover, this is not the only example where Bible has been cited. Another patent application where Bible was referenced by an examiner was US2014156034A1. If it interests you then you can find details about it here.
7. Legend of Hercules
It happened in a lawsuit when the Legend of Hercules found its mention by the United States Supreme Court.
Most of us know about the Greek Mythological story of the “12 Labours of Hercules/ Heracles”. Those of you who aren’t aware of the story, we will cover it in brief for you in a while.
Our example involves 5th labor out of 12 labors. It involved cleaning of stables of king Augean.
Before we talk about the Labour of Heracles whose name was later romanized as Hercules, let’s first discuss the case at hand.
It was U.S. Patent No. 3,223,070 (US’070) titled “Dairy Establishment” that found itself in a lawsuit. It covered a water flush system to remove cow manure from the floor of a dairy barn.
This case is known as Sakraida v. AG PRO, INC. (1976). The patent US’070 was owned by AG PRO, Inc. The patent US’070 was invalidated in the highest court of the USA on the basis of obviousness.
Note: Obviousness refers to the property of something that is easy to see and understand i.e. obvious. Obviousness in a patenting procedure is a way to combine multiple prior arts to arrive at the patented invention. It is assumed that if the inventor has just combined the multiple prior inventions or prior technologies to come up with his invention then his invention is invalid on the basis of obviousness.
The court while expounding upon the obviousness of the invention, further observed that the patented system which exploited the ‘principal of gravity‘ to effect the abrupt release of water for flushing “did not produce a new or different function”.
Since there is a talk about the water flushing system, how could the court forget to note the Legend of Heracles. So, the court cited the Legends of Hercules from Witt, Classic Mythology (1883).
Now, let’s have a look at the story of ‘12 Labours of Heracles’ in brief:
Hercules was the son of Zeus. He was destined to be a great hero. As the story goes, many gods of Olympus favored him. However, one Olympian, the goddess Hera, hated Hercules even before he was born. She looked for ways to make his life as difficult as possible.
Drowned in hate, goddess Hera used her magic to induce madness in Hercules. This made him kill his beloved wife and children. After this devastating act, when sanity recovered in him, he wanted to atone and went to the Oracle of Delphi to seek redemption.
The Oracle came to his rescue and suggested carrying out 12 Labours in penance. He was told to serve King Eurystheus of Mycenae for 10 years. During this period, he carried out a series of difficult tasks, called 12 Labours.
These Labours tested his strength and skills. His strength was pushed to the limits and his wit was put to test when he had to accomplish these difficult tasks. You can refer to this youtube video to get an idea of these Labours. A traditional order of these Labours is:
1. Slay the Nemean lion.
2. Slay the nine-headed Lernaean Hydra.
3. Capture the Ceryneian Hind.
4. Capture the Erymanthian Boar.
5. Clean the Augean stables in a single day.
6. Slay the Stymphalian birds.
7. Capture the Cretan Bull.
8. Steal the Mares of Diomedes.
9. Obtain the girdle of Hippolyta, queen of the Amazon.
10. Obtain the cattle of the three-bodied giant Geryon.
11. Steal three of the golden apples of the Hesperides.
12. Capture and bring back Cerberus.
In this article, our concern is 5th Labour i.e. “Clean the Augean stables in a single day”
The Supreme Court noted in a footnote that Heracles cleansed the stables of Augeas, King of Elis, in a single day by diverting the river Alpheus. To perform this task, he utilized the gravity of water/ the power of the torrent to flush down the collection of manure which was as high as a mountain.
For this, the court in footnote 1 cited C. Witt, Classic Mythology 119-120 (1883).
[Footnote 1] of the ruling said:
Among the labors of Hercules are the following: “Heracles now set out to perform his fifth Labour, and this time his task was to cleanse the stables of Augeas in a single day. Augeas was a rich king of Elis, who had three thousand cattle.
At night the cattle always stood in a great court surrounded with walls, close to the king’s palace, and as it was quite ten years since the servants had cleaned it out, there was enough refuse in the court to build up a high mountain.
Heracles went to Augeas and asked if he would give him the tenth part of his flocks if he thoroughly cleansed his stables in a single day.
The king looked upon this as such an absolutely impossible feat that he would not have minded promising his kingdom as a reward for it, so he laughed and said, `Set to work, we shall not quarrel about the wages,’ and he further promised distinctly to give Heracles what he asked, and this he did in the presence of Phyleus, his eldest son, who happened to be there.
The next morning Heracles set to work, but even his strong arms would have failed to accomplish the task if they had not been aided by his mother-wit.
He compelled a mighty torrent to work for him, but you would hardly guess how he did it.
First he opened great gates on two opposite sides of the court, and then he went to the stream, and when he had blocked up its regular course with great stones, he conducted it to the court that required to be cleansed, so that the water streamed in at one end and streamed out at the other, carrying away all the dirt with it.
Before evening the stream had done its work and was restored to its usual course.”
C. Witt, Classic Mythology 119-120 (1883)
8. Movie Borat
This one is peculiar. The application that fell prey to the unusual and wacky prior art was US20090216171A1.
The prior art cited was a movie. Yes, you read that right.
The application was titled ‘Scrotal support garment’.
To further understand it, it mainly claimed a flexible cup 20a, an elongated thong 30, and left-right shoulder straps 15 for the support. You can look at fig. 1 & 2 to get an idea of the invention claimed in the patent application.
While testing the patentability of an invention, the primary job of a patent examiner is to look for prior art. Over a period of time, their very nature becomes such that it drives them to examine or look for things anytime and everywhere.
Even a simple act of relaxing and watching a movie by the examiner can be damaging to the prospects of a patent grant.
Something similar happened in this case also. A USPTO examiner came across the right movie at the right time.
He struck a novelty destroying evidence from the movie ‘Borat’. He cited it as anticipatory prior art.
You can look at the snaps below from the report prepared by the USPTO examiner in this case.
He further cited exhibit figure B to compare cited prior art i.e. the movie ‘Borat’ with the invention claimed in the patent application.
Above are a few snapshots from the report prepared by the USPTO examiner. If you further want to delve into the technicalities of the case, you can look for it here.
The fate of this patent application resulted in abandonment.
Call this prior art a masterpiece or crazy but one thing to be learned from this is that knowledge is hidden everywhere. And wherever the knowledge is, chances are that there might be a hell of great prior art buried waiting to get unearthed.
Conclusion
We’ve seen a number of cases in this article where unconventional prior arts were involved. Being aware that prior art might be hidden anywhere is essential for everyone, be it an inventor, a patent professional involved in searching, or an examiner testing the patentability. Patenting is a costly affair; therefore, the timely unearthing of such prior art, if any, can be of a great value.
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