Category: USPTO


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

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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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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

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