Category: Patent Prosecution


Board of Patent Appeals Rules on “Intended Use” Argument in 102 Rejection

Written by Mark Terry On Friday, the Board of Patent Appeals and Interferences (BPAI) rejected the well-known “intended use” argument in favor of a Patent Examiner’s 35 U.S.C. 102 anticipation rejection. As a Miami Patent Lawyer, I found the Ex parte Crabtree decision interesting because it confirmed my own abandonment of the “intended use” argument in the course of patent prosecution. The Ex parte Crabtree decision involved a claim for a mattress spring that performed a specific task. Specifically, the mattress spring “deflects debris.” The Appellant found a prior art reference that had the same structure as Appellant’s claim, but did not disclose a

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Can a Product Infringe a Method of Manufacture Patent?

Written by Mark Terry Yes, it can. A product can most definitely infringe a method of manufacture patent. I recently sent a cease a desist letter to a retailer of a luggage product that was manufactured using my client’s patented method of manufacture. His attorney – a patent attorney who’d been practicing for many years – responded with a letter that tersely stated, “all of the claims of the ‘226 patent are method claims and this no product could infringe a claim, only the practicing of a method could infringe.” That’s it – that’s all he had to say about

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What is the Burden of Proof when practicing before the Board of Patent Appeals? – Florida Patent Lawyer Blog

Written by Mark Terry In short, the answer is “by a preponderance of the evidence.” The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Hochsmann did a good job of highlighting this axiom. As a Miami Patent Lawyer, I found the Ex parte Hochsmann decision interesting because it reminded me of the burden I must carry when I practice before the BPAI. The case of Ex parte Hochsmann involved a chemical process including salt crystals. The principal issue in this appeal was whether Appellant had established that the Examiner erred in finding that the prior art reference would have disclosed a salt crystal. But

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Already-Existing Characteristic in Prior Art Composition is Obvious under 35 U.S.C. 103

Written by Mark Terry In an educational decision yesterday, the Board of Patent Appeals and Interferences decided in Ex Parte Nakamura that an already-existing, but unacknowledged, characteristic in a prior art composition is obvious under 35 U.S.C. 103(a) but rebuttable if there is evidence to the contrary. As a patent attorney in Florida with an active patent prosecution docket, I’m always on the lookout for decisions of the BPAI that divulge methods for fighting rejections. In this case, the Appellant claimed a composition of nickel and tin that has a characteristic of preventing copper from diffusing. The problem was that the Examiner found a

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Common Patent Prosecution Mishap: Failing to Address a 35 U.S.C. 112 Rejection – Florida Patent Lawyer Blog

Written by: Mark Terry Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Lin reveals a common patent prosecution error -especially before the BPAI – failing to properly address a rejection. The case of Ex Parte Lin involved a photolithography invention. The Examiner rejected the claims under the 1st paragraph of 35 U.S.C. § 112 for failing to comply with the enablement requirement. According to the Examiner, the Specification disclosure would not enable a person with ordinary skill in this art (POSITA) to make or use, without undue experimentation, a “photomask with wavelength-reducing material throughout the full scope of the claimed

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USPTO Commissioner Bob Stoll and Me

Written by: Mark Terry Last night I had the pleasure of attending a South Florida Intellectual Property Law dinner in Miami, Florida that featured a presentation by Commissioner Robert Stoll. Super nice guy, by the way. In a word, he killed. He knew exactly what to present to a group of patent practitioners and he has really changed my outlook regarding the Patent Office. Just some of the good news he presented: a program to decrease pendency to first action to 10 months a program to decrease TOTAL pendency to 20 months a First Action Interview program to encourage Examiner’s to initiate an

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Board of Patent Appeals Issues Key Claim Construction Decision

Written by: Mark Terry Last week, the Board of Patent Appeals and Interferences (BPAI) upheld a Patent Examiner’s rejection under 35 U.S.C. § 102(e) of a patent application for an invention that was claimed too broadly. As a Miami Patent and Trademark Attorney I follow BPAI decisions on a daily basis, and I constantly seek wisdom from the mistakes of others. At issue in Ex parte Tosey was a claim to enhance the initiation of a coupling between a wireless digital device and an “interconnected network”. The applicant argued that the terms “interconnect network” and “wireless network” are not synonymous as pertains to a

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Reciting Ranges in Chemical Patent Applications and the 112 Rejection

Written by: Mark Terry What happens when you only disclose a larger range of values in the specification and later amend the claims to recite a smaller range of values encompassed by the larger range? Do you run into a 112 written description problem? That was the issue in today’s Ex Parte Moraes Barros (BPAI 2010-006399) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Florida Patent Attorney, I stay updated on the latest decisions of the BPAI, so as to provide my clients with the best representation on appeal. In the Moraes Barros case, the

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How Not to Use the “No Motivation” and “Teaching Away” Arguments When Responding to a 35 U.S.C. 103 Rejection – Florida Patent Lawyer Blog

Written by: Mark Terry The photo below is the ceiling of my gym – my local Crossfit box in Miami. At least a couple of times a week, I collapse on the floor of that gym after completing a WOD, heart pounding, and try to catch my breath. I lay there waiting for my pulse to calm down, as I contemplate life, reality and why we are all here. To say I’ve spent days, cumulatively, looking at that ceiling, would be an understatement. I could close my eyes and tell you exactly where each pipe, crack, expansion joint and beam is located on that

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Where Can You Sue a Patent Infringement Defendant?

Written by: Mark Terry Short Answer: where the defendant has minimum contacts 28 U.S.C. § 1400(b) makes it very clear that “Any civil action for patent infringement may be brought in the judicial district where the defendant resides, OR where the defendant has committed acts of infringement and has a regular and established place of business.” Furthermore, “for purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction.” 28 U.S.C. § 1391(c). Thus, for practical purposes, under the federal statutes, you can

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