Category: Patent Prosecution

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The Most Effective Way of Reversing a 103 Obviousness Type Rejection – Florida Patent Lawyer Blog

Written by Mark Terry  Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Peng highlighted the most effective way of reversing a Patent Examiner’s 103 obviousness type rejection – contesting the presence of one of the claim elements in the cited prior art. I, a Patent Lawyer practicing in the City of Miami, am always interested in reading about how other attorneys have gotten rejections reversed at the BPAI. The Ex Parte Peng case involved a method claim performed by a GPS receiver. The claim element at issue involved the storage of certain data in sample RAM, followed by a reallocation of

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A Hidden Structural Limitation in Apparatus Claims – Florida Patent Lawyer Blog

Written by Mark Terry  Today’s Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Nakamura et al , which reversed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection, was remarkable because it illustrated a method for reversing an obviousness rejection. As a Miami Patent Lawyer with a large patent docket, the Ex parte Nakamura was educational because it showed me where I might find a hidden structural limitation in an apparatus claim. Ex parte Nakamura involved a box-like positioning apparatus that included various moving parts. The claim element at issue stated that the amount or distance a particular moving member can be moved was limited

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How NOT to Write a 1.132 Affidavit – Florida Patent Lawyer Blog

Written by Mark Terry  Last week’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Byers discredited a flawed 1.132 Affidavit presented by the Applicant and affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection. As a Miami Patent Lawyer, I found the Ex parte Byers decision interesting because it showed a common pitfall when using 1.132 Affidavits. The case of Ex parte Byers involved an online marketplace for selling healthcare products. The Applicant submitted a 1.132 Affidavit in support of its arguments and the Board found it insuficient to rebt the Examiner’s prima facie case of obviousness. Specifically, the Board stated: “the conclusory statements in the

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Board of Patent Appeals Decision on Optimization of Ranges – Florida Patent Lawyer Blog

Written by Mark Terry  Happy New Year to all! But not so happy for Applied Materials, Inc., a semiconductor manufacturer in California. Yesterday, the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office issued a decision largely affirming a Patent Examiner’s rejection of an Applied Materials patent application covering a key semiconductor manufacturing process. Yesterday’s decision revolves mainly around the issue of “optimization of ranges.” To illustrate this issue, assume that the prior art for car-wash technology discloses the placement of water-dispensing nozzles in certain locations inside the car-wash. Let’s say that a client invents a

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Enablement Rejections of the Patent Office Can Be Rebutted Using Affidavits – Florida Patent Lawyer Blog

Written by Mark Terry  In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. § 112, first paragraph, rejection as failing to comply with the enablement requirement on the grounds that the Appellant provided sufficient “evidence” that the Examiner was wrong. As a Florida Patent Attorney that deals with § 112 rejections frequently, this BPAI decision illustrates a plan of attack for Appellants. See the BPAI decision in Ex Parte Schaefer here . The Appellant, a chemical company, was appealing a 35 U.S.C. § 112, first paragraph, enablement rejection wherein the Examiner concluded that one

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Stay Away From the Non-Analogous Art Argument – Florida Patent Lawyer Blog

Written by Mark Terry  Today’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Michelle illustrates just how useless the non-analogous art argument really is. Not to beat a dead horse, since much has been written about the uselessness of this argument by my fellow patent prosecution bloggers , but seriously, don’t use this argument anymore. I have yet to see it succeed even once. The Ex Parte Michelle case involved a telecommunications network claim rejected under 35 U.S.C. 103(a) for being obvious. The Appellant tried his hand at the “non-analogous art” defense. The Board summarily dismissed this argument in one sentence:

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U.S. Patent Office Reverses Rejection of Key Macrovision Invention – Florida Patent Lawyer Blog

Written by Mark Terry      Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner’s 35 U.S.C. § 102(e) anticipation rejection of a key Macrovision patent application directed to watermarks for videos. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the Ex Parte Ryan decision because it showed a rare smack-down of a Patent Examiner (as far as BPAI smack-downs go). At issue in this case was whether the cited reference, Collier, disclosed a method for inserting watermarks into a video. Collier, however, did not disclose inserting watermarks into a video but rather detecting watermarks in a video. In a rare

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Datacard Corporation Patent Survives Reexamination – Florida Patent Lawyer Blog

Written by Mark Terry    Last week, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner’s 35 U.S.C. 103(a) obviousness rejection of Datacard Corporation’s key industry patent. As a practicing Miami Patent Lawyer who encounters 35 U.S.C. 103(a) obviousness rejections frequently, this case is interesting as it illustrates a significant practice pointer. The decision of the BPAI involved a vital Datacard Corp. patent that had been asserted defensively in multiple patent infringement lawsuits against rival Card Tech. Corp. In order to call the patent into question, Card Tech. Corp. instituted

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“Attorney Arguments” Not Accepted as Evidence When Evaluating a §102(e) Anticipation Patent Rejection – Florida Patent Lawyer Blog

Written by Mark Terry    Using strong words, today the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. §102(e) anticipation rejection of a Tokyo Electron invention, claiming that the Appellant’s attorney’s arguments alone held no weight. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the subtle drama of this decision and also learned something.  At issue in Ex parte Willis , was a claim to a laboratory measuring device that measured spectral data. In response to the Patent Examiner’s 35 U.S.C. §102(e) anticipation rejection, the Appellant’s attorney, from the firm of Oblon Spivak, provided one particular

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Amending Patent Claims After Allowance Under 37 CFR §1.312 – Florida Patent Lawyer Blog

Written by Mark Terry    As a Miami Patent Attorney with an active patent prosecution docket, I feel as if I’ve encountered every possible patent prosecution situation out there. But I was recently faced with a situation I had not previously encountered. At issue was my client’s patent application for project management software. The Examiner at the U.S. Patent and Trademark Office called me to ask if I would agree to an Examiner’s Amendment, to which I agreed. Subsequently, the Examiner issues an Examiner’s Amendment and a Notice of Allowance all at once. But after reviewing the Examiner’s Amendment, I noticed there were a

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