Florida Patent Lawyer Blog

Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner's obviousness rejection under 35 U.S.C. § 103, but issued a new grounds of rejection under 35 U.S.C. § 101. This Quick Post highlights the need to continue "prosecuting" your patent application, even after you've gone to Appeal.

Recall that 37 C.F.R. § 41.50(b) states:

"Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement constitutes a new ground of rejection of the claim. A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review."

Thus, even if you've never received a particular rejection by a Patent Examiner during prosecution, the Board of Patent Appeals can, sua sponte, issue that rejection on appeal.

In today's Ex parte Nickell (Appeal No. 2010-008158) decision, the claims involved a computer password protection related invention. At issue was an Examiner's 35 U.S.C. §103 obviousness rejection, which the Board actually reversed. But, the Board went beyond that rejection, without any urging request by any party, and evaluated the claims at issue for compliance with 35 U.S.C. §101.

On that issue, the Board decided:

"Claim 1 does not recite any computer or other machine. For example, the claim does not recite that the steps of randomly selecting and providing the requirements must be performed by a computer, that the steps of receiving characters for the password must be performed by a computer, or that the step of determining whether the characters satisfy any requirements must be performed by a computer. As such, claim 1 is broad enough to read on two human beings communicating verbally, with the first person performing all of the recited steps. ... We, therefore, conclude that claim 1 is not tied to a particular machine or apparatus, and claim 1 does not transform a particular article to a different state or thing. That is, claim 1 fails the so-called 'machine-or transformation test.' The claim, instead, wholly embraces the judicially recognized exception of abstract ideas. Specifically, the claim is directed to a set of mental processes and communications that can be performed solely by a human being."

And thus, the BPAI issued a 35 U.S.C. §101 that was first seen by the Applicant on Appeal. See my earlier post about 35 U.S.C. §101 rejections.

What does this mean for practitioners? This decision means that before going to appeal, you should make sure your claims constitute patentable subject matter under 35 U.S.C. §101. It doesn't matter that a Patent Examiner has not issued this type of rejection or that no one ever brought it up during prosecution. The Board can bring up these issues on Appeal, which would then require you to re-open prosecution to clear the rejection - a major prosecution setback. Thus, it's best to take care of these 35 U.S.C. §101 issues earlier than later.

Continue reading "Quick Post: Board of Patent Appeals Can Issue a New Grounds for Rejection on Appeal" »

Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner's rejection based on the "well-known prior art" argument. This Quick Post highlights the obligations that must be met by an Examiner when utilizing this form of rejection.

Recall that M.P.E.P. §2144.03 states:

"Official notice without documentary evidence to support an examiner's conclusion is permissible only in some circumstances. While 'official notice' may be relied on, these circumstances should be rare when an application is under final rejection or action under 37 CFR 1.113. Official notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known."

Thus, "official notice" should only be used in certain, well-defined circumstances. Note the requirement that the "well known prior art" must be capable of instant and unquestionable demonstration as being well-known. As a comparison, see my blog post from last year regarding the obligations that must be met by an Examiner when using an inherency rejection.

In today's Ex parte Chapman (Appeal No. 2009-010238) decision, the claims involved a web browser related invention. With regard to one claim element pertaining to information that is communicated via telephone or email, the Examiner's 35 U.S.C. §103 obviousness rejection included the statement:

"it is well known in the art that a customer contacts a customer service representative via telephone or email."

That's all the Examiner had to say about that claim element. He did not cite to a patent, an article or any other tangible prior art reference. He simply stated it was well known prior art.

The Board did not agree with the Examiner's use of the "well known prior art" rejection. The Board decided:

"we find that simply asserting that 'it is well known in the art that a customer contacts a customer representative by phone or email' is unsupported speculation by the Examiner, which does not amount to a finding supportive of the Examiner's obviousness conclusion."

And thus, the BPAI reversed the Examiner's 103 obviousness rejection. I agree with this decision, especially in light of the In re Zurko, 258 F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) decision. On that topic, M.P.E.P. §2144.03 states:

It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known ... It is never appropriate to rely solely on 'common knowledge' in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based. Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697 ("[T]he Board cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.").

What does this mean for practitioners? This decision means that when you encounter rejections that include "official notice" or "well known prior art," you must ask yourself: Is the claim element being "officially noticed" or deemed "well known" capable of instant and unquestionable demonstration as being well-known? Note the bar is quite high. In the Ex parte Chapman case, the simple idea of a customer using a phone to deliver information to a customer service rep was deemed not to pass muster. This tells me it's difficult for an Examiner to defend "official notice" and "well known prior art" rejections. My advice is to challenge "official notice" and "well known prior art" rejections and demand that the Examiner provide some evidence to support his argument, as is required under In re Zurko and M.P.E.P. §2144.03. If no such evidence is provided, you may have good grounds for an appeal.

Continue reading "Quick Post: Board of Patent Appeals Chimes In on "Well-Known Prior Art"" »

I'm honored to be speaking at ITEXPO today at the Miami Beach Convention Center. ITEXPO is a telecommunications industry conference billed as "The World's Communications Conference and Expo." The conference is the largest and longest telecommunications industry trade show.

I will be speaking today at various SUITS (Synopsis Under IP/Patents Telecom Sourcing Conference) panel discussions. Some of the topics I'll be discussing are telecom industry patents, defending patent suits and patent trolls.

I look forward to seeing you there!

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.

Continue reading "Polaroid: A Trademark's Life After Banktupcy(ies)" »

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)

Continue reading "The Value of Trademarks as Personal Brands" »

In a quick decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner's 103 obviousness rejection in two sentences (Analysis section only). Quick work for a usually wordy Board.

The case of Ex parte Erhan (Appeal No. 2011-008127) involved a method of making fatty acid ester derivatives. The claims involved processes of production of a ketal product in combination with the hydroxyl ester product. The Examiner rejected the claims based on 35 U.S.C. 103(a) for obviousness but wrote a sparse explanation of where the claim elements were found in the prior art.

The Board began by reciting the relevant principles of law:

When determining whether a claim is obvious, an Examiner must make "a searching comparison of the claimed invention - including all its limitations - with the teachings of the prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).

The Board finished with its Analysis section, which is reproduced below verbatim:

After reviewing the facts and arguments, we conclude that the evidence and rational set out in the rejection are insufficient to establish a prima facie case of obviousness for the method of claim 22. In particular, although the rejection identified prior art teachings concerning the production of a hydroxyl ester product, the rejection did not identify prior art teachings concerning the production of a ketal product in combination with the hydroxyl ester product, and did not resolve that difference between the prior art methods and the claimed method.

And in two sentences the Board reversed the Examiner's rejection.

What does this mean for patent practitioners?This means that much like a 35 U.S.C. 102(b) rejection, a 103 rejection must provide the equivalent of an element-by-element analysis of the elements of the claims being rejected. That is, every element of every claim must be found in the prior art cited. If you suspect that the Examiner missed, or gave little attention to, a claim element, then the Examiner is violating In re Ochiai, which may be grounds for a reversal, as in the case of Ex parte Erhan. This is in line with a previous posting I wrote about how the single most effective way to reverse a 103 obviousness-type rejection is to argue that the prior art does not disclose a claim element.

Continue reading "Quick Post: Board Reverses Examiner's Rejection in Two Sentences" »

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 not expressly defined in the Specification, the broadest reasonable meaning of this term in its ordinary usage is a function word to indicate direct or indirect physical contact. See, e.g., pages 1574 and 1575 of WEBSTER'S THIRD NEW WORLD INTERNATIONAL DICTIONARY (G. & C. Merriam Webster, 1971) (on defined as "used as a function word to indicate contiguity or dependence.").

Based on the dictionary definition of the term "on," the Board followed by construing the Applicant's claim:

Thus, the claim requires forming an array of solid immersion lenses in direct or indirect physical contact with the resist film. This is a reasonable interpretation in light of the Specification as it teaches that its solid immersion lens array 36 may be formed directly on (i.e., in direct physical contact with) the underlying resist film.

Then, the Board went on to define what the Examiner found in the prior art:

"the Examiner maintains that Hugle teaches the disputed claim feature because Hugle' s Figure 4 illustrates a lens array 34 that is spaced above photoresist 35 (corresponding to the claimed resist film feature required by the claims) such that the lens array 34 is on the photoresist"

So the Examiner found a prior art reference that showed a lens array located over, but not touching, a photoresist. Was the Examiner correct in concluding that since the prior art showed A spaced above B, this would obviate a claim reciting A "on" B? The Board did not think so.

"Given the proper construction of the term "on" discussed above, we determine that the Examiner's interpretation of the term "on" to include a position that is spaced above the photoresist 35 is unreasonably broad. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). ... nowhere does Hugle teach that the lens array is formed 'on the resist film' as required by the claims.

The Examiner simply directs us to no credible evidence to support the position that a person having ordinary skill in the art would have understood Appellants' disclosure to support this broader interpretation."

In short, the Board found that a prior art reference showing a lens array space above, but not touching, a photoresist, was not the same as, and does not obviate, a claim reciting a lens array "on" a photoresist. Consequently, the Examiner's rejection was reversed.

What does this mean for patent practitioners? It means that when dealing with claims terms that comprise everyday language, you should challenge claim rejections that interpret that language too broadly. The BPAI is required to analyze claims in their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). In cases involving everyday language that is not defined in the specification, the dictionary definition is used to construe that claim language. So get your dictionary out and make sure the Examiner didn't go beyond the dictionary definition. If he did, you may have grounds for a reversal, as in the Ex parte Goruganthu case.

Continue reading "Board of Patent Appeals Decides Broadest Reasonable Interpretation of Term "On"" »

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. The emulsified formulation, which is not a complex formula, was relaunched in 1986 by ICI (now AstraZeneca) under the brand name Diprivan. Propofol emulsion is a highly opaque, white fluid due to the scattering of light from the tiny oil droplets that it contains. There are 4 patents (5714520, 5731355, 5731356, 5908869) for Diprivan that are set are to expire in 2015.

The relatively simple formula for Diprivan, which generates annual sales of $400 - $500 Million for AstraZeneca, may make it easy for generics to enter the propofol market. True generics are not expected until 2015, but generics with different formulas are expected to come to market before 2015. It has been reported that propofol is a low profit-margin product. Thus, once generic-like products and generics hit the market, the margins will likely fall further. This brings up fundamental questions about the patent system. Should patent protection be extended in order to protect a patent owner's investment in a drug? Inventors and investors must justify the return on investment (ROI) on millions and billions of dollars spent on developing new drug products, otherwise, they simply won't do it anymore. Is 20 years enough time to obtain an adequate return on those large R&D expenditures? For instance why has Pfizer drastically cut its research and development spending and why has Amgen decided to buy back $5 billion of its stock? Are those indications that they don't have the incentive to invest in new products?

Creating an incentive to invent, via recovery of R&D expenditure and production of profits, is the premise of the U.S. patent system. We would be wise to review the current system to make sure this is still the case.

Continue reading "Propofol and the Economy" »

In an interesting decision today, the Board of Patent Appeals and Interferences (BPAI) decided that dosages are, for the most part, obvious. The case of Ex parte Gillis (Appeal 2010-009318) involved method claims for administering a medical therapy. Fundamental to the claims was a recitation of the dosage necessary to appropriately treat the patient. Assuming the medicine itself is prior art, does specific dosage data give your invention enough novelty?

The BPAI provided the following recitation of case law:

It is well settled that "the discovery of an optimum value of a variable in a known process is usually obvious." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007). The rationale for determining the optimal parameters for prior art result effective variables "flows from the 'normal desire of scientists or artisans to improve upon what is already generally known.'" Id. (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)).

In general, however, "an applicant may overcome a prima facie case of obviousness by establishing 'that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.'" In re Peterson, 315 F.3d at 1330 (quoting In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).

That spells it out pretty clearly - discovery of a dosage value for a known medicine is obvious, unless you can show unexpected results. Consequently, the BPAI provided the following decision in the Ex parte Gillis case:

[G]iven the broad range of useful dosages described in Wappler, we are not persuaded that the Examiner has failed to provide an adequate evidentiary basis for concluding that an ordinary artisan practicing Wagemans' continuous delivery method would have optimized the sufentanil dosage. As Appellants point us to no evidence that the dosage recited in claim 28 provides an unexpected result, and is therefore critical, see Peterson, 315 F.3d at 1330, we are not persuaded that the claimed dosage would have been unobvious over the cited references, despite the fact that the two cited references do not appear to describe the same route of drug administration.

Therefore, the Examiner's rejection was affirmed. As an aside, note that even though the prior art disclosed a different drug delivery method, this was not enough to distinguish the claims from the prior art.

What does this mean for patent practitioners? It means that when prosecuting drug therapy patent applications, you should rely on more than dosage data to distinguish the invention over the prior art, unless you can show unexpected results. Without the proper evidence supporting unexpected results, dosage data does not, by itself, provide enough novelty to an otherwise known medicine or therapy.

Continue reading "Board of Patent Appeals Decides on Obviousness of Dosages" »

In an interesting decision today at the Board of Patent Appeals and Interferences (BPAI), the Board found in favor of the Applicant with regard to a rarely used rejection based on res judicata.

The case of Ex parte Aggarwal (Appeal No. 2010-011553) involved error detection software for hypertext. There was an earlier appeal where the Appellant made a first patentability argument with regard to claims 1-5 and the Board affirmed the Examiner's rejection of claims 1-5. The result of the earlier appeal was that the Board remanded back to the Examiner with regard to other claims.

On remand, the Appellant did not amend claims 1-5 but made different patentability arguments for those claims. Since claims 1-5 did not change since the earlier appeal, the Examiner rejected claims 1-5 based on res judicata, stating that the Board already rejected claims 1-5 in a previous proceeding. This led to the second appeal, and this decision.

The Board framed the issue like so:

the dispute before us hinges on whether Appellants' failure to raise a particular patentability issue before the Board in the earlier appeal based on evidence that was entered and considered by the Examiner during prosecution before that appeal can be presented in a later appeal to effectively create a new record and thus present new patentability questions involving the same claims and rejections to avoid res judicata.

The answer to that question is yes. If an Appellant fails to raise a certain issue of patentability in an earlier appeal, he can still raise it in a later appeal of the same claims, even if the supporting evidence was present before the earlier appeal.

The BPAI noted the following case law:

"Res judicata" is "[a]n issue that has been definitively settled by judicial decision. . . . The three essential elements are (1) an earlier decision on the issue, (2) a final judgment on the merits, and (3) the involvement of the same parties, or parties in privity with the original parties." BLACK'S LAW DICTIONARY 1425 (9th ed. 2009) (citing RESTATEMENT (SECOND) OF JUDGMENTS §§ 17, 24 (1982)). When Appellants submit new affidavits not considered previously to make a new record, thus presenting different questions of patentability, the doctrine of res judicata does not apply "even if the claims are viewed as identical to those in the prior case." In re Russell, 439 F.2d 1228, 1230 (CCPA 1971).

The Board felt that the new issue of patentability was not previously heard, considered or decided upon, which is a required element of res judicata. The Board stated "Although the evidence on which this issue turns was previously entered and considered by the Examiner before the earlier appeal, it was simply not germane to the issues raised in the earlier appeal and, not surprisingly, not discussed by Appellants, the Examiner, nor the Board in connection with that appeal." As a result, the Board found that the res judicata doctrine did not apply to claims 1-5 and the rejection of claims 1-5 based on the res judicata doctrine was reversed.

What does this mean for practitioners? This means that you can get a do-over at the Board. Specifically, if you lose at the BPAI for a first set of claims, and you can somehow make it back to the Board, you can re-argue the rejection of the first set of claims, as long as you bring up new issues of patentability. Of course, this isn't the easiest route to get claims allowed. The wait time to get to the Board is at least 2 years for each round. But it's nice to know that you have the flexibility to bring up new issues in a later appeal. You are not locked out by the Board's previous unfavorable decision.

Post Script: the Board ended up rejecting claims 1-5 on obviousness grounds, leaving nothing for the Appellant.

Continue reading "Board of Patent Appeals Rules on Res Judicata Rejection" »

There are a number of mugshot web sites that publish publicly-available mugshots and then charge you to take them down. According to this news report, the florida.arrests.org web site, for example, will only remove certain mugshots in exchange for payment. In addition to being ethically questionable - to put it lightly - these web sites may also be violating Florida's right of publicity.

Florida recognizes an independent common law right protecting economic interests in a person's likeness. Florida has also codified this right in Florida Statute 540.08: 

Unauthorized publication of name or likeness.--
(1) No person shall publish, print, display or otherwise publicly use for purposes of trade or for any commercial or advertising purpose the name, portrait, photograph, or other likeness of any natural person without the express written or oral consent to such use ...

Thus, Florida's publicity law enables individuals to protect themselves from unauthorized commercial appropriation of their personas. Of course, the statute does provide exceptions for news organizations and other such reasons. But it is important to note that the right of publicity is generally regarded as a property right. Damages in publicity cases are measured by the commercial injury to the business value of personal identity. J. Thomas McCarthy says: "The right of publicity is not . . . just another kind of privacy right. It . . . is a wholly different and separate legal right." 19 COLUM.-VLA J.L. & ARTS 129. Infringement damages, therefore, are determined by the fair market value of the plaintiff's identity, the infringer's profits, and damage to the licensing opportunities for the plaintiff's identity.

In the case of the mugshot sites mentioned above, the sites are generating revenue using other's photographs. So it is clearly a commercial activity or for commercial purposes, as defined in the Florida statute above. But is it also a news organization providing newsworthy subject matter? Many would say not. But the state of the law on blogs, tweets and other new media is in a state of flux and will not be settled for quite some time. With regard to damages, web search results can certainly cause damage, especially in cases where the subject of a mugshot is looking for employment or seeking admission to a school. A mugshot could kill such prospects for a job-seeker or prospective student. So these mugshot sites are operating at their own peril.

If someone in Florida has been damaged or will be damaged by a mugshot on one of these web sites, they should hire an attorney that is familiar with the Florida right of publicity.

Continue reading "Mugshot Sites May Violate Florida's Right of Publicity" »

Companies like Eastman Kodak sell products that are protected by valuable patents. The importance of the patents used to protect these products is highlighted by Kodak's recent financial troubles. Kodak, with a current market cap of about $295 million, might only be able to save itself by selling a portfolio of 1,100 digital imaging patents for an estimated $2-$3 Billion.

Kodak obtained one of its first patents (No. 1588082) in 1926. The invention was aimed at creating a photographic process that could fit into a portable, small box. Kodak went on to become one of the biggest patent filers in history. Consequently, Kodak's name became synonymous with photography for the better part of a century. But since the late 1900s, Kodak's dominance in the film business has been replaced by new technology. Due to the change in photographic technology and heavy competition, the Kodak name seems to have lost its prestige. But although the name may have less value these days, the patent royalties it generates, and the ultimate value of the company, is still high. Notably, Kodak may be collecting $1 billion in royalties soon.

The takeaway from the Eastman Kodak story is that it's important for technology companies to patent their inventions and protect their patents. Eastman Kodak's patents may be their only saving grace at this juncture.

Continue reading "Patents are the Heart of Many Companies - Eastman Kodak Case Study" »