Written by Mark Terry     

Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner’s 35 U.S.C. § 102(e) anticipation rejection of a key Macrovision patent application directed to watermarks for videos. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the Ex Parte Ryan decision because it showed a rare smack-down of a Patent Examiner (as far as BPAI smack-downs go).

At issue in this case was whether the cited reference, Collier, disclosed a method for inserting watermarks into a video. Collier, however, did not disclose inserting watermarks into a video but rather detecting watermarks in a video.

In a rare show of criticism of a Patent Examiner, the BPAI offered the following admonishment: “the Examiner has not shown and we do not readily find where Collier embeds watermarks … as claimed. Instead, Collier is primarily concerned with detecting such watermarks and we are left to speculate on how such watermarks were embedded in the first place. But the scolding didn’t end there: “it is impermissible to make guesses in an anticipation rejection. The Examiner has left it up to us to speculate.” Consequently, the Board reversed the Examiner’s 35 U.S.C. § 102(e) anticipation rejection.

I realize this doesn’t exactly read like a scathing W. Safire Op-Ed piece, but this is what passes for excitement at the BPAI.

What can we learn from this? When asserting a 35 U.S.C. § 102(e) anticipation rejection, a Patent Examiner must provide you with a concrete explanation of where each limitation of your claim is found, either explicitly or inherently, in the cited reference. He cannot simply provide a blanket conclusory statement that the cited reference discloses the claim limitation, as Examiners are so fond of doing, leaving you to guess at how or where the limitation is disclosed. At the Examiner Interview, insist that the Patent Examiner point to exactly where you can find the claimed limitation in the cited reference. If he cannot, or doesn’t put it on paper, then you have a good premise for reversal on Appeal.

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992).