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Quick Post: Board Reverses Examiner’s Rejection in Two Sentences

Written by Mark Terry  In a quick decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner’s 103 obviousness rejection in two sentences (Analysis section only). Quick work for a usually wordy Board. The case of Ex parte Erhan (Appeal No. 2011-008127) involved a method of making fatty acid ester derivatives. The claims involved processes of production of a ketal product in combination with the hydroxyl ester product. The Examiner rejected the claims based on 35 U.S.C. 103(a) for obviousness but wrote a sparse explanation of where the claim elements were found in the prior art. The Board began by

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Board of Patent Appeals Decides Broadest Reasonable Interpretation of Term “On”

Written by Mark Terry  In a decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner’s 103 obviousness rejection based on the unreasonableness of the Examiner’s interpretation of the word “on.” The case of Ex parte Goruganthu (Appeal No. 2010-005235) involved a method of making lenses. The claims involved methods for forming solid immersion lenses on a resist film. One of the central issues was the meaning of the claim term “on.” What does the term “on” mean? The Board began by first contruing the claim term:             We begin by noting that while the term “on” is

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Propofol and the Economy

Written by Mark Terry  The unfortunate death of Michael Jackson and the trial of Dr. Conrad Murray has made a little-known drug, propofol (marketed as Diprivan by AstraZeneca), into a household name. What is fundamentally important about drugs like propofol may not only be what they’re used for but their impact on the economy. Propofol was originally developed in the UK by Imperial Chemical Industries (see U.S. Patent No. 4056635). Though clinical trials followed in 1977, due to negative reactions, the formulation was withdrawn from the market and subsequently reformulated as an emulsion of a soya oil/propofol mixture in water.

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International Trade Commission: Mitsubishi Doesn’t Infringe GE Turbine Patent – Florida Patent Lawyer Blog

Written by Mark Terry  This Friday, the U.S. International Trade Commission (ITC) issued a notice stating that Mitsubishi does not infringe GE’s wind turbine patent, thereby ending a long-running legal dispute between the two companies at the ITC. The patent infringement dispute dates back to early 2008 when GE claimed that Mitsubishi infringed upon GE’s wind turbine patents in a complaint filed with the ITC, in an effort to block the importation of Mitsubishi’s wind turbine products into the U.S. The effort, however, backfired and exposed the weaknesses of using the ITC as a forum for a patent infringement dispute.

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How to Attack Non-Enabling Prior Art References

Written by Mark Terry     As a full time patent prosecution attorney, I review 35 U.S.C. § 102 and 35 U.S.C. § 103 rejections on a daily basis. It is quite common in certain arts, such as the medical device arts, that the Office Action will cite non-patent literature as a prior art reference. Often, this non-patent literature is found by doing a keyword search using a web search mechanism, such as Google. The problem with non-patent literature found in this manner is that it is not always enabled. In fact, I have found that a good portion of the

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Board of Patent Appeals Rejects Dow Chemical’s Patent Application – Florida Patent Lawyer Blog

Written by Mark Terry  As a Florida Patent Attorney with a sizable patent prosecution docket, I frequently deal with rejections from the U.S. Patent and Trademark Office (USPTO). A common form of rejection is an anticipation rejection under 35 U.S.C. sec. 102. This type of rejection is used in cases where the Patent Examiner believes that a single prior art reference (usually an existing U.S. Patent) anticipates or discloses every element of your patent claim. How do you respond to these types of rejections and succeed? The answer to this question is illustrated in today’s decision by the Board of

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The Board of Patent Appeals Weighs In On Product-By-Process Claims

Written by Mark Terry  Today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection of a commonly used “product-by-process” claim, supporting my theory that product-by-process claims are useless. As a Miami Patent Lawyer, I found the Ex parte Lockemeyer decision interesting because it confirmed my own abandonment of product-by-process claims in the course of patent prosecution. Ex parte Lockemeyer involved a product-by-process claim of a chemical composition made using a new process. The Examiner issued a 35 U.S.C. 103 obviousness rejection of the product-by-process claim based on a prior art reference that disclosed the chemical composition, but did

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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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