Tag: 103 Rejection

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Novel Arguments That Don’t Work Against a 103 Rejection – Florida Patent Lawyer Blog

Written by Mark Terry In it’s first decision of the day this sleepy Monday morning, the Board of Patent Appeals and Interferences (BPAI) rejected a novel “market forces” argument in favor of a Patent Examiner’s 35 U.S.C. 103 obviousness rejection. As a Miami Patent Lawyer, I found the Ex parte Scherschel decision interesting because I like to read the novel arguments asserted by patent attorneys when they have a dog of a case. And sometimes the BPAI’s response is even more interesting. The case of Ex parte Scherschel involved an invention related to cell phone communications systems. This case was on re-hearing, which means the

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Responding to a 35 U.S.C 103 Obviousness Rejection Like Ric Flair – Florida Patent Lawyer Blog

Written by Mark Terry Ric Flair, the greatest professional wrestler of all time, said “If you want to be the best, you have to beat the best.” Without knowing it, Ric Flair expressed exactly what it takes to win at the Patent Trial and Appeal Board (PTAB).  As a boy, I remember watching Ric Flair froth at the mouth, running around like a mad man and beating his opponents. It was a stunning display of energy, machismo and mayhem, all rolled into one. At some point, he would settle in front of a camera and going on long, screaming diatribes about

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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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How Not to Use the “No Motivation” and “Teaching Away” Arguments When Responding to a 35 U.S.C. 103 Rejection – Florida Patent Lawyer Blog

Written by: Mark Terry The photo below is the ceiling of my gym – my local Crossfit box in Miami. At least a couple of times a week, I collapse on the floor of that gym after completing a WOD, heart pounding, and try to catch my breath. I lay there waiting for my pulse to calm down, as I contemplate life, reality and why we are all here. To say I’ve spent days, cumulatively, looking at that ceiling, would be an understatement. I could close my eyes and tell you exactly where each pipe, crack, expansion joint and beam is located on that

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Non-Obviousness Arguments That Don’t Work at the Board of Patent Appeals – Florida Patent Lawyer Blog

Written by: Mark Terry Last week’s Board of Patent Appeals and Interferences (BPAI) decision of Ex Parte Lim , which affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection, teaches an important lesson – obviousness rejections must address both references – not just one. As a Miami Patent Attorney that reads BPAI decisions frequently, I’m surprised that any practitioners even try this argument anymore. The case of Ex Parte Lim involved a mobile communications network, such as those used by cell phone providers. The Examiner issued a 35 U.S.C. 103 obviousness rejection based on two references – Lipsanen and Siren. The Appellant argued that Lipsanen did

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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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