Written by Mark Terry I came upon a super interesting Board of Patent Appeals and Interferences (BPAI) decision issued today. I found the Smucker v. Mack-Ray case interesting for both educational and entertainment reasons. The decision involves the effect an infringement action may have…
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…
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.…
Written by Mark Terry In the last decision of this past Thursday, the Board of Patent Appeals and Interferences (BPAI) reiterated the rule that attorney argument is not enough to meet certain burdens in course of patent prosecution. As a Board Certified patent…
Written by Mark Terry Today’s first Board of Patent Appeals and Interferences (BPAI) decision involved an eloquent exposition of the relationship between claim construction and ordinary dictionary meaning. The case of Ex parte Benson involved a 35 U.S.C. 102 rejection of a…
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…
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…
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.…
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) 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…
