Florida Patent Lawyer Blog

Did we used to shake the film that came out of the Polaroid camera or did we wave it in the air? Everyone had there own technique to make the picture appear faster, I suppose. Regardless, the concept of Polaroid instant film made it into the pop culture - even making its way into an Outkast song ("... shake it like a Polaroid picture!"). But then Polaroid filed for bankruptcy in 2001 ... and again in 2008! Did that mean the end of the iconic Polaroid brand? Far from it.

Land, the inventor of the Polaroid system (Patent No. 1,956,867) left Harvard just months before graduation in 1932 to establish the Polaroid company. Land is named on 533 Polaroid patents, including one for the first synthetic polarizer, and kept Polaroid innovative for decades with products including 3-D film. He also developed the Polaroid OneStep, which was the world's best-selling camera in the 1970s. The coming of the digital age, however, marked Polaroid Corp.'s doom.

After its first bankruptcy in 2001, however, One Equity Partners LLC, JP Morgan's private equity unit, purchased a 53 percent stake in Polaroid for $56 million, helping it come out bankruptcy. Petters Group then began licensing Polaroid's brand name in 2002 and bought the company in 2005 for $426 million. After it filed for bankruptcy protection (the second time) in December 2008, a group of investors in 2009 paid $88 million in the company for the brand name. So even after two bankruptcies and a multitude of negative press, the Polaroid brand was worth tens of millions of dollars

There are iconic brands that transcend generations and continue to thrive. See my previous blog post about the famous Coca Cola brand. But for those brands that may have lost their ability to keep up with changing technology, like Polaroid, at least their names will live-on in new products. What is the name Polaroid worth? The amount is subjective (though $88 million is a good place to start), but it highlights the fact that whether you are a local business or an international business, it's important to protect your brand. As we learned from Polaroid, sometimes the only thing remaining with any value after bankruptcy is the brand.

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In an homage to John Welch's well-known TTAB Blog, today we ask "Would you have appealed this 35 U.S.C. § 101 rejection?

In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner's 35 U.S.C. § 101 rejection of a computer program product claim based on the disclosure of a transitory medium in the specification. This blog post highlights a very common rejection for software-related claims.

Recall that "A transitory, propagating signal . . . is not a process, machine, manufacture, or composition of matter [under 35 U.S.C. § 101] and, therefore, does not constitute patentable subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Claims that are so broad that they read on nonstatutory as well as statutory subject matter are unpatentable. Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (citation omitted) ('Claims which are broad enough to read on obvious subject matter are unpatentable even though they also read on nonobvious subject matter.'). See my previous post regarding 35 U.S.C. § 101 rejections.

The case of Ex parte Castaneda (Appeal No. 2009-013594) involved a software application that provided calendaring services. The Examiner rejected a "computer useable medium" claim because it encompassed carrier waves. Thus, the Examiner found that the claim was directed to non-statutory subject matter under 35 U.S.C. § 101 (In re Lintner notwithstanding).

The Appellant's specification clearly disclosed that a computer usable medium may include propagation mediums, such as electronic, magnetic, optical, electromagnetic, or infrared signals. Still, the Appellant decided to appeal and simply argued that the computer usable medium "could" encompass statutory subject matter and that sufficed in overcoming a non-statutory subject matter .

In light of Appellant's disclosure in the specification, the Board decided:

"... we find that the claimed "...computer useable medium embodying computer usable program code..." can be broadly, but reasonably construed to encompass a transitory, propagating signal, which is non-statutory subject matter. Further, since the claim is not limited to a non-transitory, tangible medium within one of the four statutory classes of 35 U.S.C. § 101, we agree with the Examiner that independent claim 13 is directed to nonstatutory subject matter."

I would not have appealed this 35 U.S.C. § 101 rejection. Mainly because it would have been so easy to amend the specification or the claim to eliminate non-statutory subject matter. It would have taken no time to delete the non-statutory language from the specification or insert the phrase "wherein computer usable medium does not include transitory subject matter" in an amendment. This often happens when the patent attorney misses the time frame for amending the claim before the Notice of Appeal or Appeal Brief was due and then is stuck having to assert a bogus argument against the 101 rejection. If the due date for filing an Appeal Brief has arrived, it's too late to enter a substantial amendment.

What does this mean for practitioners? This means that if you define your claim term, such as "computer usable medium," to include transitory media, such as carrier signals, then you can expect a 35 U.S.C. § 101 rejection. It doesn't matter that your claim term "could possibly" include statutory subject matter. If the claim term's ascribed meaning includes non-statutory subject matter, then a 35 U.S.C. § 101 rejection will survive appeal.

Further, watch your docketing due dates and make sure that if you have to amend the specification or claims to avoid a 35 U.S.C. § 101 rejection, it is done as soon as possible. Specifically, the amendment should be completed within a month of the Final Rejection, so it will most likely be entered. Don't wait until the date the Appeal Brief or Notice of Appeal is due. Otherwise, you could find yourself in the same predicament as Ex parte Castaneda, which resulted in a full affirmation of the Examiner's rejections - a total loss.

Continue reading "Would you have appealed this 101 Rejection?" »

In one of the more interesting decisions on this Friday, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner's rejection based on the Appellant forgetting to argue that the Examiner erred. This Quick Post highlights the basics of responding to Examiner rejections.

Recall that "the Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The allocation of burdens requires that the USPTO produce the factual basis for its rejection of an application under 35 U.S.C. § 102. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). See my post last year regarding the factual determinations in 102 rejections.

The case of Ex parte Gutierrez (Appeal No. 2009-009811) involved a viscous industrial fluid used as lubricating oil. In responding to a 102 rejection, the Appellants referred the Board to their previous arguments wherein Appellants argued that the prior art does not anticipate the claimed lubricating oil, and that the prior art does not describe the composition with sufficient detail to determine if it falls within the scope of Appellants' claims. Appellants, however, made no statement about the Examiner's factual determinations in his rejection.

The Board decided:

"Appellants do not argue that the Examiner's findings of fact ... are in error. Nor do Appellants argue that the Examiner's conclusions about the parameters that would have been considered obvious were made in error... Thus, Appellants do not argue that the Examiner erred in concluding the claimed lubricating oil and related methods would have been obvious. Accordingly, we affirm the Examiner's decision to reject the claims ..."

What does this mean for practitioners? This means that you should explicitly contest any adverse factual findings of an Examiner, or else those findings will be taken as true by the Board. You should explicitly state that the Examiner erred in making one or more factual findings and then provide evidence of why those factual findings are wrong. If you argue that the prior art doesn't anticipate a claim or that the claim is not obvious, but forget to assert the Examiner erred in his factual findings, then the Examiner's factual findings may be taken as true and you could lose your appeal.

Continue reading "Quick Post: Board Finds Appellant Must Argue That Examiner Erred" »

In its first decision on this Friday the 13th, the Board of Patent Appeals and Interferences (BPAI), reversed an Examiner's 103 obviousness rejection based on the Examiner's faulty inherency logic. I like this reversal because it highlights the Examiner's burden and the consequences of not meeting that burden - i.e., a win for the Applicant.

With regard to inherency, recall M.P.E.P. 2112 states that where an Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make an inherency rejection under both 35 U.S.C. 102 and 103, expressed as a 102 or 103 rejection. See my post last year regarding the use of inherency in 103 obviousness rejections.

The case of Ex parte Smith (Appeal No. 2010-008057) involved an industrial resin. The claims recited a filler that covalently bonds with another element. The Examiner rejected the claims based on 35 U.S.C. 103(a) stating that the cited prior art discloses the same chemical structure and that the claimed covalent bonding aspect was inherent to the chemical structure disclosed in the prior art. Specifically, on the issue of the covalent bonding, the Examiner stated solely the following: "providing a workable amount of covalent bond forming coupling agents would have been obvious ... and coupling agents forms strong covalent bonds." (verbatim). That's all the Examiner had to say on the issue of inherency.

The Applicant responded with attorney argument that the cited prior art is silent on the issue of covalent bonding and that, in fact, the cited prior art could result in other types of bonding, such as ionic bonding, not necessarily covalent bonding.

The Board found:

"an inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)."

The Examiner simply concluded that Applicant's claimed chemical structure would inherently result in a covalent bond and stated nothing more.

"The Examiner has not established with any evidence or provided any explanation on this record why the use of the ... agents ... in the prior art ... would inevitably, or necessarily, result in a direct covalent bond as claimed."

The Board continued:

"the Examiner has not satisfied the initial burden of presenting a prima facie case of obviousness."

And thus, the Board reversed the Examiner's rejection.

What does this mean for practitioners? This means that you should closely analyze an Examiner's 103 obviousness rejection based on inherency to determine whether the cited art would inevitably, or necessarily, result in the Applicant's claimed device, composition or method. It is not enough for the Examiner to conclude that the cited art could potentially result in the Applicant's claimed device, composition or method. In order to meet his burden, the Examiner must cite evidence that the cited art would inevitably, or necessarily, result in the Applicant's claimed device, composition or method. If the Examiner does not meet this burden, then you may have grounds for reversal.

Continue reading "Board of Patent Appeals Reverses Examiner's Inherency Finding" »

Michael Jackson's unfortunate passing highlighted his international fame and the value of the Michael Jackson brand. What was surprising to many was that Michael Jackson had major financial troubles before his death, which is why he decided to go on his final "This Is It" tour. Michael Jackson's music and products generated large amounts of income before his death, but I was stunned to see the magnitude of his earnings after his death. Since his death, the Michael Jackson brand, as reported by Billboard, has generated over $1 Billion from sales and a record deal.

Much of Michael Jackson's income was, and is, tied to his personal brand. There are 16 live trademarks that protect the Michael Jackson brand which range from a word mark filed in 1993 for "Planet Michael the Ultimate Michael Jackson Online Game," which was filed after his death on January 20, 2011, to a simple word mark for his first and last name.

Being a media legend, Michael Jackson and his business managers took full advantage of creating revenue streams from his personal brand. And as new products bearing his brand are released, the value of his trademarks will increase. But Michael Jackson is not the only dead celebrity to cash in on his brand's fame. Just to highlight a few: Albert Einstein's likeness has been licensed, generating over $75 Million over the past five years ("Baby Einstein" being one of those products using the Einstein name and likeness) and Elvis Presley's estate generates over $55 Million a year!

If the above teaches us anything, it's that trademarks are not only important as business brand names (see my previous posting about the famous Coca Cola trademark) but also tremendously important as personal brands for celebrities before and after their lifetime.

On a side note, Michael Jackson also obtained a U.S. Patent for his famous shoe illusion (click here to see Michael Jackson's Patent)

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