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…
Written by: Mark Terry The Board of Patent Appeals and Interferences (BPAI) recently handed down an influential decision when it reversed an obviousness-type rejection (Ex Parte McManamy, Appeal 2009-008781) entered by a patent examiner under 35 U.S.C. § 103(a). The 103(a)-obviousness rejection…
Written by: Mark Terry Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner’s rejection based on the “well-known prior art” argument. This Quick Post highlights the obligations that must be met by an Examiner when utilizing this…
Written by Mark Terry In its first decision on this Friday the 13th, the Board of Patent Appeals and Interferences (BPAI), reversed an Examiner’s 103 obviousness rejection based on the Examiner’s faulty inherency logic. I like this reversal because it highlights the…
Written by Mark Terry In a quick decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner’s 103 obviousness rejection in two sentences (Analysis section only). Quick work for a usually wordy Board. The case of Ex…
Written by Mark Terry In a decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner’s 103 obviousness rejection based on the unreasonableness of the Examiner’s interpretation of the word “on.” The case of Ex parte Goruganthu (Appeal…
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…
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…
Written by Mark Terry Today’s Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Nakamura et al , which reversed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection, was remarkable because it illustrated a method for reversing an obviousness rejection.…
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…
