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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
Written by Mark Terry How do you reverse a Patent Examiner’s 35 U.S.C. 103 rejection of your design patent application based on obviousness? That was the issue in the Ex parte Kellerman (BPAI 2009-009310) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Miami Patent Attorney with a sizable docket of design patent cases, this case taught an important lesson on the anatomy of an obviousness rejection in a design patent case. The Kellerman case involved a design patent application for a serving tray that looks like a ceramic cooking pan. In Kellerman, the Examiner argued that the shape
Written by Mark Terry In short, the answer is “by a preponderance of the evidence.” The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Hochsmann did a good job of highlighting this axiom. As a Miami Patent Lawyer, I found the Ex parte Hochsmann decision interesting because it reminded me of the burden I must carry when I practice before the BPAI. The case of Ex parte Hochsmann involved a chemical process including salt crystals. The principal issue in this appeal was whether Appellant had established that the Examiner erred in finding that the prior art reference would have disclosed a salt crystal. But
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 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
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 Last week’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Byers discredited a flawed 1.132 Affidavit presented by the Applicant and affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection. As a Miami Patent Lawyer, I found the Ex parte Byers decision interesting because it showed a common pitfall when using 1.132 Affidavits. The case of Ex parte Byers involved an online marketplace for selling healthcare products. The Applicant submitted a 1.132 Affidavit in support of its arguments and the Board found it insuficient to rebt the Examiner’s prima facie case of obviousness. Specifically, the Board stated: “the conclusory statements in the
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