Write The Background As A Sales Pitch

Patent applications are advantageously viewed as sales documents, and the Background should be written as a lead-in to the sales pitch. Indeed, the Background is a perfect opportunity to show the patent examiner (and later on a judge or jury) that the claimed invention really is a significant advancement over the prior art. And just as any good sales pitch begins with a problem to be solved, a patent Background should identify a problem, demonstrate how difficult it is to solve that problem, and then show how brilliant (or clever, diligent, observant, or whatever) the current inventor was in solving that problem. That approach automatically places the claimed subject matter in the most favorable light to secure a patent, and yields all sorts of support that can be used later on during prosecution to argue against obviousness rejections. It also helps later on during litigation because many of the key arguments that the attorneys will use to support novelty and non-obviousness are right there, in black and white, in the Background.

The sales aspect of the Background can be achieved most effectively by clearly identifying a problem, describing the various ways that others tried to solve the problem, and then discussing why those previous solutions were inadequate. That process is shown below.

Figure 62 — The Background Should Show How The Problem Is Intractable

The "problem to be solved" is best framed in such a way that either no one else clearly identified the problem before, or if the problem had been previously identified, no one else was able to solve it. That task is not so difficult as it may seem. The framing step is just a rearrangement of the wording of the first paragraph of the Summary. In U.S. 6272727 , for example, the Summary section begins:

It has recently been discovered that the above-mentioned problems can be resolved by biasing the upper portion of files in a file drawer or other file holder towards the rear of the file holder.

Rearranging that sentence, one can recite the problem as a "need for devices and methods that can conveniently position file folders...." Some readers will recognize this approach as being analogous to that popularized by the Jeopardy™ television show; use the answer to define the question.

Once I have a statement of the problem to be solved, I can then go back and build a case for why that problem has been so difficult to solve. A general overview focuses the reader on the environment in which the problem occurs.

Folders are ubiquitous in modern offices. In most cases folders comprise little more than a folded piece of paper or plastic, with the "fold" ranging anywhere from the hard, creased fold of a standard "manila" folder, to a soft "fold" or bend of a hanging folder. Folders generally also have a tab or other extended portion at one of the sides for including identification information. In most instances office folders are used to contain papers, and where the papers comprise a file of information, the folder is properly called a file folder. But it is widely accepted that items sold as file folders may also contain computer disks, writing implements, and a host of other items, and the terms file folders and folders are used synonymously herein in a broad generic sense.

Next, I describe how the problem manifests.

Folders are generally intended to be kept upright in a file drawer, file box or other file holder so that the file identification information is viewable on all of the files at the same time, and so that each of the files are more or less accessible without significantly disturbing the other files. It is not always feasible, however, to maintain folders in an upright position, and this is largely due to the fact that smaller and heavier items tend to fall to the bottom (folded portion) of a folder, where they increase the thickness of the folder. Where this occurs in multiple files within the same file drawer or other holder, all of the folders tend to fall forward or backward in the file holder. While this problem is often only a minor nuisance, it does create difficulty in viewing the folder identification information, and in accessing individual folders and their contents.

We then follow up with descriptions of the various ways others have failed to solve the problem.

The problem has been addressed in part by providing a moveable partition. Such partitions can effectively reduce the volume of space available to the files, thus tending to keep them upright. Alternatively, a partition can be made to pivot against the floor of the file holder. This biases the bottom portions of the files forward and allows the top portions of the files to fall backward. While such partitions are of some use, the relatively free pivoting tends to tilt the files much farther than is necessary. Previously known such partitions are also limited to file drawers, such as those found in metal cabinets, which are strong enough and otherwise adapted to securing such partitions.

Figure 63 — The Background Ends With Need For The Invention