THE PLUS IP FIRM
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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
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
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
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
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
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
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
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
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
Written by Mark Terry Today’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Michelle illustrates just how useless the non-analogous art argument really is. Not to beat a dead horse, since much has been written about the uselessness of this argument by my fellow patent prosecution bloggers , but seriously, don’t use this argument anymore. I have yet to see it succeed even once. The Ex Parte Michelle case involved a telecommunications network claim rejected under 35 U.S.C. 103(a) for being obvious. The Appellant tried his hand at the “non-analogous art” defense. The Board summarily dismissed this argument in one sentence:
THE PLUS IP FIRM
We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.
Call Now: 786.443.7720