Tag: Enablement


Are terms of “degree” indefinite claim language under 35 U.S.C. 112?

Written by Mark Terry Terms of degree – such as “easily,” “readily,” and “aesthetically pleasing” – can be subjective and therefore problematic when used as claim language. But the recent Federal Circuit decision of Hearing Components, Inc. v. Shure Inc., 600 F. 3d 1357 (Fed. Cir. 2010) provides some guidelines on how to properly use terms of degree in claim language without worrying about a 35 U.S.C. §112 indefiniteness rejection. As a Florida Patent Attorney, I write claims almost every day, so this case is topical for me. Under 35 U.S.C. § 112, second paragraph, the “specification shall conclude with one or

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How to Reverse a 103 Obviousness Rejection in a Design Patent Case

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

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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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The 35 USC 112, First Paragraph, Rejection – Florida Patent Lawyer Blog

Written by: Mark Terry The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Yufa affirmed a Patent Examiner’s 35 U.S.C. 112, 1st paragraph, rejection. This was an interesting case for me, a Miami Patent Attorney, because it illustrated a type of rejection I don’t deal with much. The case of Ex parte Yufa involved an apparatus for detecting particles using beams of light. At issue was a claim element that did not appear to be present in the original specification. The Board found the disputed claim element did not have support in the initial disclosure and therefore the 35 U.S.C. 112, 1st

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Enablement Rejections of the Patent Office Can Be Rebutted Using Affidavits – Florida Patent Lawyer Blog

Written by Mark Terry  In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. § 112, first paragraph, rejection as failing to comply with the enablement requirement on the grounds that the Appellant provided sufficient “evidence” that the Examiner was wrong. As a Florida Patent Attorney that deals with § 112 rejections frequently, this BPAI decision illustrates a plan of attack for Appellants. See the BPAI decision in Ex Parte Schaefer here . The Appellant, a chemical company, was appealing a 35 U.S.C. § 112, first paragraph, enablement rejection wherein the Examiner concluded that one

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