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Board of Patent Appeals Reverses 103(a) Obviousness Rejection – Florida

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 statute indicates that a patent may not be obtained if it would have been obvious to someone practicing ordinary skill in the “art” at the time of the invention. The wording of the statute clearly leaves room for subjective interpretation, and as a Miami-based Patent Attorney I constantly stay abreast of new holdings that can strengthen my clients’ positions in pursuing a

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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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Software Patents: How to Lose an Obviousness Argument

Written by: Mark Terry In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s obviousness rejection of a software invention based on a common prosecution mistake – the Appellant arguing limitations that are not in the claim. This post highlights a basic requirement of responding to Examiner rejections, especially when procuring software patents. The case of Ex parte Kreiner (Appeal No. 2010-004976) involved a software invention used to design circuits. The disputed claim included the following limitation: “a software-based development environment for designing circuits or systems.” In responding to a 103 obviousness rejection, the Appellant argued that

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Board of Patent Appeals: The Problem with Using Functional Language in Claims – Florida Patent Lawyer Blog

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

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The Board of Patent Appeals Weighs In On Product-By-Process Claims

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 the Ex parte Lockemeyer decision interesting because it confirmed my own abandonment of product-by-process claims in the course of patent prosecution. Ex parte Lockemeyer involved a product-by-process claim of a chemical composition made using a new process. The Examiner issued a 35 U.S.C. 103 obviousness rejection of the product-by-process claim based on a prior art reference that disclosed the chemical composition, but did

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The Most Effective Way of Reversing a 103 Obviousness Type Rejection – Florida Patent Lawyer Blog

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 the cited prior art. I, a Patent Lawyer practicing in the City of Miami, am always interested in reading about how other attorneys have gotten rejections reversed at the BPAI. The Ex Parte Peng case involved a method claim performed by a GPS receiver. The claim element at issue involved the storage of certain data in sample RAM, followed by a reallocation of

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A Hidden Structural Limitation in Apparatus Claims – Florida Patent Lawyer Blog

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. As a Miami Patent Lawyer with a large patent docket, the Ex parte Nakamura was educational because it showed me where I might find a hidden structural limitation in an apparatus claim. Ex parte Nakamura involved a box-like positioning apparatus that included various moving parts. The claim element at issue stated that the amount or distance a particular moving member can be moved was limited

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How NOT to Write a 1.132 Affidavit – Florida Patent Lawyer Blog

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

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PTAB Reverses a 35 U.S.C. §102 Rejection Today: This is Why They Did It

Written by Mark Terry  This is a great Patent Trial and Appeal Board (PTAB) decision that highlights in one, short decision the main arguments every patent practitioner should make when responding to a 35 U.S.C. §102 anticipation rejection. In today’s Ex Parte Farkas decision, the PTAB reversed an Examiner’s anticipation rejection based on the following main reasons: Concepts do not anticipate Missing element by element analysis Elements not arranged in the same way      We explain each one below.     It is often the case that when issuing a 35 U.S.C. §102 anticipation rejection, the Examiner cannot find one or more of the claim elements

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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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