Florida Patent Lawyer Blog

In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §103 obviousness rejection on the grounds that the Examiner did not provide "evidence" of the obviousness of the combination of references. As a Florida Patent Attorney that deals with 103 obviousness rejections on an almost-daily basis, I found this decision of the BPAI illustrates a plan of attack for Appellants. See the decision in Ex Parte General Components Inc. HERE.

The Appellant, an electrical component manufacturer, was appealing a 35 U.S.C. §103 obviousness rejection where the Examiner combined two references and followed it up with the standard boiler-plate language we're accustomed to seeing as patent practitioners - it would have been obvious to have modified the first reference to produce the claimed feature.

The BPAI decided (I'll paraphrase here for simplification): "The Examiner did not provide sufficient evidence to support the determination that it would have been obvious to have modified [the first reference to reflect the claimed feature]." The BPAI continued: "There is no evidence that [modifying the first reference] would [produce the claimed feature] ... The substitution of one element for another is generally considered obvious when there is a reason to make the substitution and when the resulting combination yields a predictable result. See KSR, 550 U.S. 398 at 416, 418. In this case, the Examiner determined it would have been obvious to have substituted [a feature of the second reference for a feature of the first reference] but did not explain how [to do it]. Furthermore, the Examiner did not provide sufficient evidence that [the feature of the second reference], when substituted for [the feature of the first reference], would produce [a requirement of the first reference]. The rejection is therefore reversed."

The important lesson here is that a Patent Examiner must provide some evidence that it would have been obvious to modify a first reference to reflect a claimed feature. A standard, conclusory statement by the Examiner doesn't suffice. Ideally, he would provide literature from other patents, academic papers or from textbooks of the time that support his argument. But that is something I rarely see in 35 U.S.C. §103 obviousness rejections from the USPTO. Thus, if the Examiner doesn't provide any evidence as to WHY, it would have been obvious to modify, you've got a potential promise for a reversal on Appeal.

The other lesson is that a modification of a reference is NOT obvious if, after the modification, the reference is not able to perform its stated purpose. If the modification destroys or frustrates the purpose of the first reference, then the combination is not proper. This "frustration of purpose" argument is one I've made many times before the BPAI, and it provides yet another premise to seek a reversal on Appeal.

In an interesting and somewhat comical opinion today, the Board of Patent Appeals and Interferences (BPAI) rejected an Appellant's argument that a 35 U.S.C. §101 rejection violated the Appellant's rights under the equal protection clause of the 14th Amendment of the U.S. Constitution. As a Florida Patent Attorney with an active patent prosecution docket, this is the first time I've ever seen the 14th Amendment brought up before the BPAI. See the decision in Ex Parte Haines HERE.

The Appellant, Hewlett Packard, was appealing a 35 U.S.C. §101 non-statutory subject matter rejection of a claim that recited propagated signals. HP argued the USPTO has issued patents to others that contain "propagated signal claims" and therefore the current rejection violated HP's rights under the equal protection clause of the Fourteenth Amendment to the U.S. Constitution.

The BPAI responded: "Appellant has not cited any authority in support of the novel legal argument. The U.S. Patent and Trademark Office is not part of a state (or local) government, but an agency of the U.S. Department of Commerce. Cf. U.S. Const. amend. XIV, § 1 ("No State shall . . . deny to any person within its jurisdiction the equal protection of the laws."). We are not persuaded that the USPTO has violated Appellant's rights to equal protection of the laws under the Constitution." The footnote reads "absent showing that the agency acted pursuant to some impermissible or arbitrary standard, an argument based on the equal protection component of the Due Process Clause of the Fifth Amendment would also fail. See In re Boulevard Entertainment, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003).

Frankly, I'm surprised the HP attorney would even advance the 14th Amendment argument. I am careful to avoid flimsy or meritless arguments when practicing before the BPAI, as any document with your name on it affects your professional reputation. I aim to have a reputation as an advocate that only presents solid arguments. Readers will take you more seriously and are more willing to consider your line of reasoning when you have an established history of sound argument-making.

What an illuminating decision! Today's Board of Patent Appeals and Interferences (BPAI) decision in Ex parte Harrison read like a veritable anatomy of a 35 U.S.C. § 101 non statutory subject matter rejection under In re Bilski. The highly educational decision in In re Harrison bpaiharrison.pdftouches on many important issues surrounding § 101 non statutory subject matter rejection. It's not often that the BPAI issues a decision about a § 101 non statutory subject matter rejection, so two in one week is a real treat (see my posting from two days ago) for a practicing Florida patent attorney.

As an aside, I liked the BPAI's mention that "the [Bilski] court declined to decide under the machine implementation branch of the inquiry whether or when recitation of a computer suffices to tie a process claim to a particular machine." This confirms that it's still undecided whether reciting a computer or a computer readable medium satisfies the first prong of the machine-or-transformation test.

Yesterday, the Board of Patent Appeals and Interferences (BPAI) issued a ruling touching upon the "broadest reasonable interpretation" concept, resulting in a reversal of a Patent Examiner's 35 U.S.C. §103 obviousness rejection of an earphone invention belonging to French firm Technofirst. As a Miami Patent Attorney, this case was interesting because it illustrates another avenue for reversing a 35 U.S.C. §103 obviousness rejection on appeal.

The gyst of the BPAI decision can be read in the following excerpt: "the Examiner is correct that Appellant has not specifically defined that term therein. However, while giving claim terms their broadest reasonable interpretation is correct and proper, such interpretations need to be made in view of the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). With such a standard, we do not find the Examiner's alternate interpretations to be consistent with the instant Specification ... We can find no support in the Specification for such an interpretation of 'complex polynomial function.'"

Lesson learned: As a patent practitioner, even if your case suffers from lack of definition of a key claim term, and the Examiner hits you with a broad reasonable interpretation of the claim term, his interpretation must be consistent with the specification. I.e., no matter how reasonable an Examiner's interpretation of a claim term, he cannot get away with the interpretation if it's not consistent with the specification. So always check the Examiner's interpretation against the specification.

See also the the following excerpt: "In addition, Appellant has proffered declaration evidence that one of ordinary skill in the art, at the time that the application was filed, would have understood 'complex polynomial function' to require a filter of order higher
than first. While Dr. Carme's opinion cannot be said to come from a disinterested party, we find that the Examiner has provided nothing to counter his opinion other than a finding of the plain meaning of the term. While 'complex' can certainly connote complex numbers, we find no support for such a contention in the Specification. As such, we do not agree with the Examiner."

The above excerpt highlights the value of 1.132 Declarations. I have rarely seen Examiners provide a substantive response to a 1.132 Declaration. Even though the Declaration comes from your inventor, who is admittedly an interested party, the BPAI does give the declaration weight and if the Examiner does not adequately rebut it, this weighs in the Appellant's favor. Lesson learned: use 1.132 Declarations whenever possible, as it provides another element that may weigh in your favor on appeal.

In one of its last decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §101 non-statutory subject matter rejection of a key Invatron Systems invention. As a Miami Patent Attorney, this case was interesting because I haven't seen any BPAI decisions regarding 35 U.S.C. §101, much less a decision that invokes Bilski, in a while.

At issue was an Invatron Systems claim pertaining to a scale for weighing items, wherein the scale included a computer that performed a series of steps, such as providing a coupon. The Examiner found the claims recite a method of purely mental steps, not tied to another statutory class. The Appellants contended the claimed method recites steps including providing a coupon to the customer and that these steps cannot be performed purely mentally since there is no way to provide a coupon without the coupon being physically inputted into the weigh station display.

The court explained the Bilski machine-or-transformation test as follows: "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." The court explained that "the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility" and "the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity." In re Bilski, 545 F.3d 17 943 (Fed. Cir. 2008) (en banc), petition for cert. granted, 77 USLW 3442 (U.S. Jan. 28, 2009) (No. 08-964).

The BPAI agreed with the Appellants. See the BPAI decision here. The BPAI stated claim 17 recited a method for providing information to a weigh station, where customer specific information is provided to the weigh station display. That is, claim 17 recited a manner of entering data to a weigh station and displaying the inputted information. As such, claim 17 required a specific structure that captures, stores, and displays specific data. This specific structure ties the recited method to a particular machine, in that the method recites how to operate a weigh station with a weigh station display. Since there is a particular machine required, claim 17 satisfies the machine prong of the machine-or-transformation test and the transformation prong need not be evaluated. As a result, the BPAI reversed the Examiner's 35 U.S.C. §101 non-statutory subject matter rejection under Bilski.

The lesson learned in this case is that although a claim may not explicitly and positively recite a structural element, the claim may require a specific structure to perform the steps of the claim. If that structure satisfies the machine prong of the machine-or-transformation test, an Examiner's 35 U.S.C. §101 non-statutory subject matter rejection may be reversed under Bilski.

Can you protect architectural drawings and constructed buildings using copyrights? As a Miami Copyright Attorney with an active copyright docket, this is a question I've been asked more than once.

Generally the answer is yes. An original design of a building created in any tangible medium of expression, including a constructed building or architectural plans, models, or drawings, is subject to copyright protection as an "architectural work" under 17 U.S.C. §102 of the Copyright Act. Protection extends to the overall form as well as the arrangement and composition of spaces and elements in the design but does not include individual standard features or design elements that are functionally required. The term "building" means structures that are habitable by humans and intended to be both permanent and stationary.

But here is the tricky part. Architectural designs created on or after Dec. 1, 1990 are subject to copyright. Also, unpublished architectural designs constructed between Dec. 1, 1990 and Jan. 1, 2003. are subject to copyright.

BUT any designs constructed or published BEFORE Dec. 1, 1990 are NOT subject to copyright. Also, any unpublished and non-constructed designs created BEFORE Dec. 1, 1990 but constructed between Dec. 1, 1990 and Dec. 31, 2002 are NOT subject to copyright. Additional works that are NOT subject to copyright include structures other than buildings, such as bridges, cloverleafs, dams, walkways, etc.

Protection for an architectural work created as a work made for hire on or after December 1, 1990, lasts for 95 years from the date of publication of the work or for 120 years from the date of creation of the work, whichever term is less. A work made for hire is one prepared by an employee within the scope of his or her employment, such as an architect employed by a firm.
Protection for an architectural work created on or after December 1, 1990, by an individual (not as a work made for hire) lasts for the life of the author plus 70 years.

To recap, architectural works are subject to copyright, but care must be taken to record the dates of important events, such as dates of publication and construction, in order to determine whether you are dealing with a work that may not be eligible for copyright.

In one of its first decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §103(a) rejection of a key Verizon invention. As a Miami Patent Attorney, this case was interesting because it illustrates how a 35 U.S.C. §103(a) obviousness rejection can be reversed on appeal to the BPAI.

At issue was a Verizon claim that disclosed software for an LDAP server that receives a request in first protocol format and then converts retrieved information from a second protocol format to the first protocol format. The Examiner rejected the Verizon claim under 35 U.S.C. §103(a) based on the Ma patent. See the BPAI decision here .

The Appellant argued that in Ma the request to and the response from the directory server have the same protocol format, as opposed to having first and second protocol formats as claimed. Appellant further argued that while another patent was cited for the proposition that "converting from one type of protocol format to another protocol format was known in the art at the time the invention was made," Ma does not disclose the need or desirability for any type of translation. Appellant asserted that Ma does not teach or suggest that messages formatted in accordance with a first protocol are converted, translated, or otherwise reformed into messages formatted in accordance with a second protocol.

Appellant pointed out that as described by the Ma patent, the mediation server may be conversant in multiple protocol formats and therefore is not described to have any need to convert there between with respect to a particular request. Appellant thus argued that the requisite motivation to combine Ma and the other patent was lacking. The BPAI agreed with Appellant's arguments and reversed the Examiner's 35 U.S.C. §103(a) obviousness rejection.

For patent practitioners, the lesson learned in this BPAI decision is the criteria a Patent Examiner must meet when asserting a 35 U.S.C. §103(a) obviousness rejection. First, it is not enough that a cited reference disclose the ability to perform a task. The task itself must be explicitly or implicitly disclosed in the reference - in this case, the task not disclosed was translating from one format to another. Second, when two references are combined, there should be some motivation to combine the two references. The lack of such a motivation opens the rejection to attack on Appeal.

Can anyone commence a trademark cancellation proceeding before the U.S. Patent and Trademark Office? Must you have a tie or other relation to the mark being canceled? As a Trademark Lawyer practicing in Miami, Florida, I've been asked this question more than once by a client who desires to cancel a U.S. trademark registration.

On the issue of standing to institute a cancellation proceeding, 15 U.S.C. § 1064 [Section 14 of the Trademark Act] states that a petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 43(c), by the registration of a mark on the principal register ... Further, 37 CFR § 2.111(b) states that any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part.

The term "damage," as used in Sections 13 and 14 of the Act, 15 U.S.C. §§ 1063 and 1064, concerns specifically a party's standing to file an opposition or a petition to cancel, respectively. A party may establish its standing to oppose or to petition to cancel by showing that it has a "real interest" in the case, that is, a personal interest in the outcome of the proceeding and a reasonable basis for its belief in damage. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) and TBMP § 309.03(b). There is no requirement that actual damage be pleaded and proved in order to establish standing or to prevail in an opposition or cancellation proceeding.See Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).

A real interest in the proceeding and a reasonable belief of damage may be found, for example, where plaintiff pleads (and later proves) a claim of likelihood of confusion that is not wholly without merit. See Lipton Industries, supra; Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209 (TTAB 1993). Also, a real interest in the proceeding and a reasonable belief of damage may be found if Plaintiff pleads that Plaintiff has been refused registration of its mark because of defendant's registration, or has been advised that it will be refused registration when defendant's application matures into a registration, or has a reasonable belief that registration of its application will be refused because of defendant's registration. See Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000)

Interestingly, however, if Plaintiff has a bona fide intent to use the same mark for related goods, and is about to file an intent-to-use application to register the mark, and believes registration of the mark will be refused in view of respondent's registration, this satisfies the "damaged" requirement. See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).

Therefore, a party seeking to cancel a U.S. trademark registration at the U.S. Patent and Trademark Office has a variety of options available when attempting to satisfy the standing and therefore the "damaged" requirement for commencing a trademark cancellation proceeding.

Can you cancel an active U.S. Trademark Registration that has been abandoned? As a Trademark Attorney practicing in Miami, Florida, I've been asked this question more than once by a client wanting to clear the path for their own registration.

The Trademark Act provides for the cancellation of a registration if the registered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064. Under Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is considered abandoned when "its use has been discontinued with intent not to resume such use." The definition of abandonment is found in this provision, as follows:

A mark shall be deemed to be "abandoned" if either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. ... See 15 U.S.C. §1127.

Because registrations are presumed valid under the law, the party seeking to cancel a registration on the ground of abandonment bears the burden of proof to establish the case by a preponderance of the evidence. See On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); and Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989). If petitioner makes a prima facie case of abandonment, the burden of production, i.e., going forward, then shifts to the registration holder to rebut the prima facie showing with evidence. Cerveceria v. Cerveceria, Id.

Therefore, a party seeking to cancel a U.S. trademark registration on the grounds that is has been abandoned can commence a trademark cancellation proceeding at the U.S. Patent and Trademark Office, and he bears the burden to prove abandonment by a preponderance of the evidence. Another requirement of the Plaintiff in a trademark cancellation proceeding is standing, which shall be discussed in tomorrow's blog entry.

Obtaining a U.S. trademark registration based on a foreign registration under §44(e) has its benefits, but what happens after the U.S. registration is obtained? Is the validity and/or status of the U.S. registration tied to the foreign registration? Is the foreign-based U.S. registration subject to the same provisions that apply to all other U.S. registrations? As a Florida Trademark Lawyer, I am often asked these questions by savvy clients seeking U.S. trademark protection for their foreign trademark registrations.

We all know there are benefits to filing a U.S. trademark application under §44(e) claiming priority to a foreign registration. The main benefits include not having to show use in the U.S. or having to provide a specimen. TMEP §1009 states that "Although §44 applicants must assert a bona fide intention to use the mark in commerce, §44 applicants do not have to allege use or provide specimens or dates of use prior to registration on either the Principal or Supplemental Register in an application based solely on §44. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984)." That is a load off for a busy trademark attorney.

But what happens after the U.S. registration is issued? TMEP §1015 states that once issued, the United States registration issuing from a §44 application exists independent of the underlying foreign registration and is subject to all provisions of the Trademark Act that apply to all other registrations, such as affidavits of use, renewals, amendments under 15 U.S.C. §1057(e), assignments, and similar matters. 15 U.S.C. §1126(f). See Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Exxon Corp. v. Oxon Italia S.p.A., 219 USPQ 907 (TTAB 1982); Reynolds Televator Corp. v. Pfeffer, 173 USPQ 437 (TTAB 1972); Sinclair v. Deb Chemical Proprietaries Ltd., 137 USPQ 161 (TTAB 1963). Therefore, the validity and/or status of the U.S. registration IS NOT tied to the foreign registration and the foreign-based U.S. registration IS subject to the same provisions that apply to all other U.S. registrations. Thus, the foreign-based U.S. registration must continue to be used properly in order to avoid abandonment. Further, the U.S. registration must be renewed with the U.S. Patent and Trademark Office according to the same schedule as domestic-based U.S. registrations, in order to maintain is good standing with the Trademark Office. Further, the same rules pertaining to amendments, assignments and cancellations apply to foreign-based U.S. registration.

In summary, filing a U.S. trademark application under §44(e) claiming priority to a foreign registration affords you certain privileges during trademark prosecution. But once the U.S. registration is issued, the privileges have ended and the registration is treated like any other U.S. registration.

As a Miami Patent Attorney with an active patent prosecution docket, I feel as if I've encountered every possible patent prosecution situation out there. But I was recently faced with a situation I had not previously encountered.

At issue was my client's patent application for project management software. The Examiner at the U.S. Patent and Trademark Office called me to ask if I would agree to an Examiner's Amendment, to which I agreed. Subsequently, the Examiner issues an Examiner's Amendment and a Notice of Allowance all at once. But after reviewing the Examiner's Amendment, I noticed there were a few minor typos in the Examiner's amended claims: a space, a semi-colon and the article "a" were missing from a phrase in the claims. Previously, the only method I had used to amend claims after Allowance was to file a Continuation or a Request for Continued Examination and then clear up the claims in the new application. After doing some research in the Manual for Patent Examining Procedure (MPEP), however, I found that although the aforementioned approaches are adequate in cases where substantive amendments must be made to the claims, there is a much simpler and easier method for making minor claim amendments after Allowance.

MPEP §714.16 states that "[T]he primary examiner ... has authority to enter amendments submitted after Notice of Allowance of an application which embody merely the correction of ... formal matters in a claim without changing the scope thereof, ... without forwarding to the supervisory patent examiner for approval." MPEP §714.16 further states that "where amendments of the type noted are shown ... to require no substantial amount of additional work on the part of the Office, they may be considered and, if proper, entry may be recommended by the primary examiner."

In this case, I simply filed an Amendment After Allowance Under 37 CFR §1.312 and added a semi-colon, the word "a" and a space to certain claims, which does not change the scope of the claims and which required no substantial amount of additional work on the part of the Office. Thus, the Examiner entered my amendment and the patent was issued with no appreciable delay. This illustrates a good tool that should be placed in every patent practitioner's toolbox.

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 substrates bonded together." Representative claim 11 recited a first glass with a first substrate and a second glass with a second substrate. The Examiner rejected claim 11 under 35 U.S.C. sec. 112, first paragraph, arguing the written description did not disclose the second glass with the second substrate.

In this past Friday's decision in Ex parte Bass, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 112, first paragraph, rejection. As a Patent Lawyer practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be reversed on appeal.

Agilent Technologies' patent claim was directed to an apparatus for preparing an array of chemical compounds on a surface. Representative claims 1 recited a gap between two surfaces, wherein the width of the gap was sufficient for gas to flow along the gap so as to create an aerodynamic seal between the two surfaces. Appellant's specification did not describe the dimensions of the gap sufficient to create an aerodynamic seal. The Examiner's position on the 35 U.S.C. sec. 112, first paragraph, rejection was that the Appellant did not provide written descriptive support for the gap. The BPAI disagreed.

The moral of the story here is that an Examiner's 35 U.S.C. sec. 112, first paragraph, rejection must be closely reviewed to make sure that he provides an adequate showing regarding persons skilled in the art and/or evidentiary support for this argument. Further, the rejection should not rest on the argument that the specification does not explicitly define or describe an attribute, since "the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue."

Yesterday, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's anticipation rejection, citing the Applicant's attempt to claim a new benefit of an old process. As a Miami Patent Attorney that handles anticipation rejections on a weekly basis, Ex parte Satoshi Matsubara, et al. is an interesting case because it illustrates the law surrounding the concepts of inherency and claiming a new use or benefit of a prior art process.

At issue were claims involving a therapeutic method for improving bone density of a human or animal having decreased bone density by administering fermented soy milk. The Patent Examiner rejected representative independent claim 17 under 35 U.S.C. §102(b) as being anticipated by an academic paper by Kikuchi-Hayakawa. The Examiner found that Kikuchi-Hayakawa disclosed administering fermented soy milk to rats with removed ovaries. Since ovariectomized rats have decreased bone densities, and soy milk increases bone density in rats, the Examiner concluded that Kikuchi-Hayakawa disclosed administering fermented soy milk to rats to improve their decreased bone densities. The Appellants, however, argued the rats of Kikuchi-Hayakawa were not selected for their decreased bone densities but for other reasons (to determine the effects of soy milk on lipid metabolism), and therefore Kikuchi-Hayakawa did not disclose every element of claim 17.

For patent practitioners, the educational aspect of this case rests in the classification of a claimed invention as novel, as opposed to an old process. Beware of an Examiner's determination that your claimed process is old or well-known. Further, be wary of an Examiner's finding that your claimed new benefit naturally flows from the allegedly old process. These findings, if not properly rebutted, will hurt your chances of a reversal on appeal.

As a Miami Patent Lawyer specializing in intellectual property issues, I frequently host clients who tell me their patent is being infringed upon. What kinds of letters can I send out to infringers without worrying about a declaratory judgment action in their forum? The Federal Circuit chimed in on this issue this past December and it has (at least somewhat) changed the rules of the game.