Category: Patent Appeals

Categories

PTAB Reverses a 35 U.S.C. §102 Rejection Today: This is Why They Did It

Written by Mark Terry This is a great Patent Trial and Appeal Board (PTAB) decision that highlights in one, short decision the main arguments every patent practitioner should make when responding to a 35 U.S.C. §102 anticipation rejection. In today’s Ex Parte Farkas decision, the PTAB reversed an Examiner’s anticipation rejection based on the following main reasons: Concepts do not anticipate Missing element by element analysis Elements not arranged in the same way We explain each one below. It is often the case that when issuing a 35 U.S.C. §102 anticipation rejection, the Examiner cannot find one or more of the claim elements in the

Read More »

BPAI Reverses Patent Examiner For Hindsight Reconstruction

Written by Mark Terry Once again the Board of Patent Appeals and Interferences (BPAI) reversed a rejection by an overzealous patent examiner who failed to adequately connect the proverbial dots between prior patents in an attempt to disqualify a patent application for approval (Ex parte Kobayashi). As a Miami-based Patent Lawyer I constantly keep abreast of new holdings handed down by the BPAI in order to deliver up-to-the-minute defenses for my clients’ patent applications. The patent applicant in this month’s Kobayashi decision invented a system for recording the progress of video game players as they achieved certain milestones in online (networked) video games. The

Read More »

PTAB Reverses a 35 U.S.C. §102 Rejection Today: This is Why They Did It

Written by Mark Terry  This is a great Patent Trial and Appeal Board (PTAB) decision that highlights in one, short decision the main arguments every patent practitioner should make when responding to a 35 U.S.C. §102 anticipation rejection. In  Ex Parte Farkas, the PTAB reversed an Examiner’s anticipation rejection based on the following main reasons: Concepts do not anticipate Missing element by element analysis Elements not arranged in the same way We explain each one below. It is often the case that when issuing a 35 U.S.C. §102 anticipation rejection, the Examiner cannot find one or more of the claim elements in the

Read More »

Board of Patent Appeals Rejects Key SONY Invention under 35 U.S.C. 112, 1st Para. – Florida Patent Lawyer Blog

Written by Mark Terry    In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. sec. 112, first paragraph, rejection of a key Sony Corp. invention. As a Patent Attorney practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be upheld on appeal. Sony’s invention was a heat-sink apparatus for computer or camera microprocessors. At issue was the disclosure in the specification of a single glass with a substrate bonded to it. The specification also disclosed “a main body with a plurality of

Read More »

Victory at U.S. Patent Office for ARM Ltd. Microprocessor Patent – Florida Patent Lawyer Blog

Written by Mark Terry    Today, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner’s rejections of a key ARM Ltd. patent application, thereby clearing the way for ARM’s application to issue as a patent. As a Patent Lawyer practicing in Florida, this case was instructive in its illustration of the case law surrounding claim construction. At issue in this case was the construction of the claim term “reallocation.” On the issue of claim construction, the BPAI decision stated: During prosecution, “the PTO gives claims their ‘broadest reasonable interpretation.’” In

Read More »

THE PLUS IP FIRM

We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.

Call Now: 786.443.7720