Category: Patents

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How to lose your “ordinary dictionary meaning” argument at the Board of Patent Appeals

Written by Mark Terry Today’s first Board of Patent Appeals and Interferences (BPAI) decision involved an eloquent exposition of the relationship between claim construction and ordinary dictionary meaning. The case of Ex parte Benson involved a 35 U.S.C. 102 rejection of a claim that turned on the construction of the claim term “embedded.” As a Patent Attorney in Miami with a full docket of patent cases, BPAI decisions that involve claim construction are highly topical for me. In Ex parte Benson, the BPAI explored the issue of how the claim term “embedded” should be construed. The Applicant argued the claim term should be given the

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How to Reverse a 103 Obviousness Rejection in a Design Patent Case

Written by Mark Terry How do you reverse a Patent Examiner’s 35 U.S.C. 103 rejection of your design patent application based on obviousness? That was the issue in the Ex parte Kellerman (BPAI 2009-009310) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Miami Patent Attorney with a sizable docket of design patent cases, this case taught an important lesson on the anatomy of an obviousness rejection in a design patent case. The Kellerman case involved a design patent application for a serving tray that looks like a ceramic cooking pan. In Kellerman, the Examiner argued that the shape

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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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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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The Value of Patents in the World of IT

Written by: Mark Terry Alibaba Group Holding Ltd. is preparing its estimated $16 Billion IPO by fortressing itself with patents. Although Alibaba has more than 1,900 issued patents and pending applications in Asia, it has also been aggressively filing patent applications in the U.S. China’s largest e-commerce company has obtained 102 U.S. patents, including 20 purchased from IBM Corp. Alibaba has 300 pending patent applications for technologies like product recommendations, payment processing and picture searches. Why the patent buying spree? If you’re an innovator like IBM, you obtain patents to protect the hard work and millions of dollars that has

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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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WHAT’S IN A REEXAM – TWO PART SERIES

Written by: Mark Terry PART TWO In general, a reexamination is the process by which a patent owner or third-party requests that a patent’s claim(s) be reviewed against other patents or publications (prior art) by the USPTO’s Board. A patent owner may initiate the process to ensure that they have a valid patent. Subsequently, the patent owner can either pursue infringers or sleep well at night knowing that the USPTO has affirmed the validity of their patent. On the other hand, a third party may want to request a reexamination to question the validity of a patent in order to

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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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