Tag: Patents

Categories

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

Read More »

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

Read More »

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

Read More »

Board of Patent Appeals Decides Broadest Reasonable Interpretation of Term “On”

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 No. 2010-005235) involved a method of making lenses. The claims involved methods for forming solid immersion lenses on a resist film. One of the central issues was the meaning of the claim term “on.” What does the term “on” mean? The Board began by first contruing the claim term:             We begin by noting that while the term “on” is

Read More »

Propofol and the Economy

Written by Mark Terry  The unfortunate death of Michael Jackson and the trial of Dr. Conrad Murray has made a little-known drug, propofol (marketed as Diprivan by AstraZeneca), into a household name. What is fundamentally important about drugs like propofol may not only be what they’re used for but their impact on the economy. Propofol was originally developed in the UK by Imperial Chemical Industries (see U.S. Patent No. 4056635). Though clinical trials followed in 1977, due to negative reactions, the formulation was withdrawn from the market and subsequently reformulated as an emulsion of a soya oil/propofol mixture in water.

Read More »

How to Attack Non-Enabling Prior Art References

Written by Mark Terry     As a full time patent prosecution attorney, I review 35 U.S.C. § 102 and 35 U.S.C. § 103 rejections on a daily basis. It is quite common in certain arts, such as the medical device arts, that the Office Action will cite non-patent literature as a prior art reference. Often, this non-patent literature is found by doing a keyword search using a web search mechanism, such as Google. The problem with non-patent literature found in this manner is that it is not always enabled. In fact, I have found that a good portion of the

Read More »

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

Read More »

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

Read More »

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

Read More »

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

Read More »

THE PLUS IP FIRM

We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.

Call Now: 786.443.7720