Tag: 102 Rejection

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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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Can Filing a Patent Infringement Suit Hurt You in a Re-Exam?

Written by Mark Terry I came upon a super interesting Board of Patent Appeals and Interferences (BPAI) decision issued today. I found the Smucker v. Mack-Ray case interesting for both educational and entertainment reasons. The decision involves the effect an infringement action may have on a re-exam. But the BPAI used uncharacteristically harsh words to reject the Appellant’s arguments, which made it amusing. It’s rare to see any emotion in a BPAI decision, so when you see Jones Day get a verbal spanking, you can’t help but write about it. In the Smuckers v. Mack-Ray case, the patent owner had sued the defendant for patent infringement

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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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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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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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Board of Patent Appeals: The Problem with Using Functional Language in Claims – Florida Patent Lawyer Blog

Written by: Mark Terry Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Zurcher highlighted the problems associated with using functional language in claims, especially when claiming an apparatus. I, a Patent Lawyer in Miami, have written about this before in my article about intended use claim language. The Ex Parte Zurcher case involved an electrical-type socket invention. The claim element at issue included functional language. The Examiner asserted a prior art reference that included structure that performed the same function as described in Appellant’s functional language. I.e., the Examiner found the claimed functional language inherent in the prior art reference. The ensuing arguments can be separated

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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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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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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

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