Tag: Patent Appeals

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The Importance of Evidence In Office Action Responses

Written by Mark Terry It is often the case that the U.S. Patent and Trademark Office (USPTO) will issue a 35 U.S.C. § 103 obviousness rejection based on what an Examiner believes is material that is known to a person of ordinary skill in the art. That is, the Patent Examiner will often state that such-and-such claim element (or some combination of claim elements) are well known to a person of ordinary skill in the art (POSITA). As a patent practitioner, you can respond with “attorney argument” and/or you can respond with hard evidence. The attached Patent Trial and Appeal Board (PTAB) decision

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BPAI Reverses Patent Examiner For Hindsight Reconstruction

Written by Mark Terry Once again the Board of Patent Appeals and Interferences (BPAI) reversed a rejection by an overzealous patent examiner who failed to adequately connect the proverbial dots between prior patents in an attempt to disqualify a patent application for approval (Ex parte Kobayashi). As a Miami-based Patent Lawyer I constantly keep abreast of new holdings handed down by the BPAI in order to deliver up-to-the-minute defenses for my clients’ patent applications. The patent applicant in this month’s Kobayashi decision invented a system for recording the progress of video game players as they achieved certain milestones in online (networked) video games. The

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Board of Patent Appeals Rejects Key SONY Invention under 35 U.S.C. 112, 1st Para. – Florida Patent Lawyer Blog

Written by Mark Terry    In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. sec. 112, first paragraph, rejection of a key Sony Corp. invention. As a Patent Attorney practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be upheld on appeal. Sony’s invention was a heat-sink apparatus for computer or camera microprocessors. At issue was the disclosure in the specification of a single glass with a substrate bonded to it. The specification also disclosed “a main body with a plurality of

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