Author: socialated


Tools for Fighting a 102 Anticipation Rejection

Written by: Mark Terry Today I came across a nice little Board of Patent Appeals case that outlines an additional tool that can be used to fight 102 anticipation rejections, especially when procuring software patents. Specifically, this case addresses a common situation: you receive a 102 rejection where the Examiner appears to have done a simple text search for each of your claim elements and found them all in disparate parts of one reference. The case of Ex parte Putnam (Appeal No. 2010-001668) involved a software process for migrating databases. The Patent Examiner found all of the elements of claim 1 in

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New USPTO Forms – After Sept. 16, 2012

Written by: Mark Terry A lot has been written about the new Patent Office forms that must be filed with new patent applications after Sept. 16, 2012. You could spend a few hours reading about it on Karen Hazzah’s site, on Oblon’s web site, or on the PharmaPatents web site. But if you only have a few minutes to figure out what you absolutely need to file with the your patent application after Sept. 16, 2012 in order to comply with the new American Invents Act (AIA) rules and look competent to your client, then read this blog posting. If there is no Assignee

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Software Patents: How to Lose an Obviousness Argument

Written by: Mark Terry In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s obviousness rejection of a software invention based on a common prosecution mistake – the Appellant arguing limitations that are not in the claim. This post highlights a basic requirement of responding to Examiner rejections, especially when procuring software patents. The case of Ex parte Kreiner (Appeal No. 2010-004976) involved a software invention used to design circuits. The disputed claim included the following limitation: “a software-based development environment for designing circuits or systems.” In responding to a 103 obviousness rejection, the Appellant argued that

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How to Successfully Defend a Merely Descriptive Rejection of a Trademark

Written by: Mark Terry In an informative decision today, the Trademark Trial and Appeal Board (TTAB) reversed a Trademark Examining Attorney’s merely descriptive rejection. The In re Fujarek case, which I prosecuted, illustrates how to successfully defend a mere descriptiveness rejection of a trademark at the Trademark Office. As background, the Applicant’s mark was VOICE and the description of goods and services were “broadcasting services, namely, radio and television broadcasting by satellite and mobile phones, via a global computer network”. The Examining Attorney had issued a mere descriptiveness refusal, which we appealed to the TTAB. In reversing the mere descriptiveness

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Board of Patent Appeals: The Problem with Using Functional Language in Claims – Florida Patent Lawyer Blog

Written by: Mark Terry Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Zurcher highlighted the problems associated with using functional language in claims, especially when claiming an apparatus. I, a Patent Lawyer in Miami, have written about this before in my article about intended use claim language. The Ex Parte Zurcher case involved an electrical-type socket invention. The claim element at issue included functional language. The Examiner asserted a prior art reference that included structure that performed the same function as described in Appellant’s functional language. I.e., the Examiner found the claimed functional language inherent in the prior art reference. The ensuing arguments can be separated

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The High-Tech Patent Wars Continue…

Written by: Mark Terry The high-tech world is continuing its 20-way patent infringement war, but it’s not the usual suspects – it’s Yahoo vs. Facebook. Yahoo’s lawsuit claims that Facebook is infringing on Yahoo’s social networking patent (US7599935), which may be the basis of Facebook’s networking platform. As of late, the superstar high tech companies have been aggressively taking it to their competitors to protect their current revenue streams, but also, more importantly, to secure a dominant position in the future. Yahoo, which has been struggling over the last three years, recently lost ground to Facebook in the online advertising market. There is

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Coca Cola Copyright Infringement Suit in Miami Concluded

Written by: Mark Terry Southern District Court Judge K. Michael Moore recently handed down an equitable and somewhat unique decision regarding a timely dispute over the rights to a Spanish-language version of a Coca-Cola theme song that was created for the 2010 World Cup. At issue in the suit, Vergara Hermosilla v. Coca-Cola Co., No. 10-21418, 2010 WL 2232657 (S.D. Fla. June 2, 2010), was whether the South-Florida based artist retained rights to the content of his work product “Wavin’ Flag” – originally performed in English by the artist K’naan – in translating and producing the song. As a Miami-based trademark and

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Quick Post: Board of Patent Appeals Chimes In on “Well-Known Prior Art”

Written by: Mark Terry Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner’s rejection based on the “well-known prior art” argument. This Quick Post highlights the obligations that must be met by an Examiner when utilizing this form of rejection. Recall that M.P.E.P. §2144.03 states: “Official notice without documentary evidence to support an examiner’s conclusion is permissible only in some circumstances. While ‘official notice’ may be relied on, these circumstances should be rare when an application is under final rejection or action under 37 CFR 1.113. Official notice unsupported by documentary evidence should only be taken by the examiner

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Come See Me Speak Today at ITEXPO in Miami

Written by: Mark Terry I’m honored to be speaking at ITEXPO today at the Miami Beach Convention Center. ITEXPO is a telecommunications industry conference billed as “The World’s Communications Conference and Expo.” The conference is the largest and longest telecommunications industry trade show. I will be speaking today at various SUITS (Synopsis Under IP/Patents Telecom Sourcing Conference) panel discussions. Some of the topics I’ll be discussing are telecom industry patents, defending patent suits and patent trolls. I look forward to seeing you there!

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Polaroid: A Trademark’s Life After Bankruptcy(ies)

Written by Mark Terry Did we used to shake the film that came out of the Polaroid camera or did we wave it in the air? Everyone had their own technique to make the picture appear faster, I suppose. Regardless, the concept of Polaroid instant film made it into the pop culture – even making its way into an Outkast song (“… shake it like a Polaroid picture!”). But then Polaroid filed for bankruptcy in 2001 … and again in 2008! Did that mean the end of the iconic Polaroid brand? Far from it.             Land, the inventor of the Polaroid

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