Are Your Patent Claims Obvious? – Board of Patent Appeals Issues Obviousness Decision – Florida Patent Lawyer Blog

Written by Mark Terry    When are your patent claims obvious in light of the prior art? Is it non-obvious to simply combine two known items in a new way? What is the legal criteria for non-obviousness? As a Florida patent attorney with an active patent prosecution docket, I deal with these issues on a daily basis. Today, the Board of Patent Appeals and Interferences at the United States Patent and Trademark Office issued a straightforward and easy-to-understand decision on this issue. Today’s decision in the case of Ex parte Constantinidis relates, among other things, to the issue of whether the claims of the Appellant were

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Board of Patent Appeals Reverses Examiner on Reasons for Combining – 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 35 U.S.C. sec. 103(a) obviousness rejection because the Examiner did not adequately explain why the ordinary artisan would have combined the cited prior art references. As a practicing Miami Patent Lawyer who responds to 35 U.S.C. sec. 103(a) obviousness rejections weekly, today’s decision of the BPAI is instructive because it illustrates a method for attacking obviousness rejections. The patent application at issue belongs to International Specialty Products, a global supplier of pharmaceutical products. The Patent Examiner found multiple prior art references

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When Can a Patent-Related Letter Spawn a Declaratory Judgment Action? – Florida Patent Lawyer Blog

Written by Mark Terry    As a Miami Patent Lawyer specializing in intellectual property issues, I frequently host clients who tell me their patent is being infringed upon. What kinds of letters can I send out to infringers without worrying about a declaratory judgment action in their forum? The Federal Circuit chimed in on this issue this past December and it has (at least somewhat) changed the rules of the game. The Federal Circuit case of Hewlett-Packard Co. v. Acceleron, LLC involved a letter that patent-holder Acceleron sent to an alleged infringer, Hewlett-Packard. The letter didn’t say much. In short, the letter brought an Acceleron patent

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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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How to Successfully Defend a Merely Descriptive Rejection of a Trademark

Written by Mark Terry    In an informative decision today, the Trademark Trial and Appeal Board (TTAB) reversed a Trademark Examining Attorney’s merely descriptive rejection. The In re Fujarek case, which I prosecuted, illustrates how to successfully defend a mere descriptiveness rejection of a trademark at the Trademark Office. As background, the Applicant’s mark was VOICE and the description of goods and services were “broadcasting services, namely, radio and television broadcasting by satellite and mobile phones, via a global computer network”. The Examining Attorney had issued a mere descriptiveness refusal, which we appealed to the TTAB. In reversing the mere descriptiveness refusal, the first thing the TTAB

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