Florida Patent Lawyer Blog

Last week, the Board of Patent Appeals and Interferences (BPAI) upheld a Patent Examiner's rejection under 35 U.S.C. § 102(e) of a patent application for an invention that was claimed too broadly. As a Miami Patent and Trademark Attorney I follow BPAI decisions on a daily basis, and I constantly seek wisdom from the mistakes of others.

At issue in Ex parte Tosey was a claim to enhance the initiation of a coupling between a wireless digital device and an "interconnected network". The applicant argued that the terms "interconnect network" and "wireless network" are not synonymous as pertains to a prior patent issued to Elliott (US 6,859,135 B1) in 2005. Unfortunately, the applicant failed to clearly make this distinction in the claims.

In the analysis section of the decision, the BPAI indicated comments made by the Patent Examiner, such as, "Appellant (applicant) seems to suggest that Elliott's network is a wireless network and not an interconnected network because it is not a combination of wired and wireless network," and that," the issue of the interconnected network being wireless or wired is not at all claimed." Oops! The BPAI further points out that the applicant's primary claim "merely requires that data is received from an 'interconnected network' which does not preclude a cellular network."

The lesson here is that the BPAI is required to analyze claims in their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004), and that a BPAI analysis will not read limitations into the claims from the specification, In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Because the primary claim made in Ex parte Tosey failed to recite a distinction between "interconnected network" and "wireless network", the BPAI was compelled to find that there was no such distinction and therefore rejected the claim. It also didn't help that the patent application contained some typographical errors - a general indication of overall sloppiness in preparing the application.

As I have previously discussed in this blog, when prosecuting a patent application in a crowded field of competitors (such as the wireless networking industry) it is absolutely crucial to point out - in the claims - the limitations and distinctions of your invention as compared to those that are already patented. A twisted version of an old adage reads "Ready, Fire, Aim!", which is a very poor strategy for successful patent prosecution.

Using strong words, today the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's 35 U.S.C. §102(e) anticipation rejection of a Tokyo Electron invention, claiming that the Appellant's attorney's arguments alone held no weight. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the subtle drama of this decision and also learned something.

At issue in Ex parte Willis , was a claim to a laboratory measuring device that measured spectral data. In response to the Patent Examiner's 35 U.S.C. §102(e) anticipation rejection, the Appellant's attorney, from the firm of Oblon Spivak, provided one particular argument, among many, about what a claim term meant to one of ordinary skill in the art. The attorney's particular argument did not include any references to the specification, the cited references, or any textbooks or authoritative works. Also, no §1.132 declaration was provided. This is what the BPAI had to say about this particular argument:

The Appellant's argument is not well taken because it is merely unsupported attorney argument, and arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

Ouch! to the layperson, this may seem lightly worded - but to an avid reader of BPAI decisions, this is considered a smack down. Now for the educational moment:

When making statements about a person of ordinary skill in the art (POSITA), it helps to refer to an authority about what is considered known to a POSITA. You can refer to your own specification, the cited references, other patents in the same area from the same time, textbooks, science/engineering treatises, etc. Also, you can use a §1.132 declaration from your inventor or someone else in the field, IF their credentials are impressive enough to be considered a POSITA. Karen Hazzah has a great blog entry about the use of §1.132 declarations. And the best part of using these authorities, is that the Examiner must rebut this evidence. I wrote a blog entry recently about the Examiner's duty to respond to the evidence you've provided. He can't just dismiss it, he must consider it, rebut it with evidence of his own and provide substantive reasoning as to why your evidence does not overcome the rejection.

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).

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.

Yesterday, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 102(e) anticipation rejection of a key ARM Ltd. microprocessor invention. As a Miami Patent Lawyer that deals with the BPAI frequently, this case is instructive because it illustrates the patent law related to functional equivalents in a hardware device.

At issue in ARM's claimed invention was the existence of a memory management unit (i.e., a physical hardware component referred to as an MMU), which the Examiner asserted was found in the cited patent. The BPAI decision disagreed and stated: "the Examiner paints with a broad brush by reading the claimed memory management unit on nebulous "logic/circuitry that manages indirect and direct access to the Graphics Memory 116" without clearly specifying in the record which particular component in [the cited patent] corresponds to Appellants' claimed memory management unit." The BPAI went on to state: "since the Examiner does not identify the specific hardware component in [the cited patent] that corresponds to the claimed MMU, the Examiner appears to be relying on certain memory management functions performed by various software components in [the cited patent] ... However, we note that functional equivalence is not enough to show anticipation of a structural component (such as the claimed memory management unit). See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965) ("the functional equivalent is not enough to be a full anticipation of the specific device claimed by appellant."). Consequently, the Examiner's 35 U.S.C. sec. 102(e) anticipation rejection was reversed.

In this case, the Examiner erred in asserting that the functions described in the cited patent were equivalent to a claimed structural component. This legally erroneous finding of "functional equivalence" is something I see often in dealing with Patent Examiners. It is all too common for a Patent Examiner to point to "nebulous" logic in a cited patent and assert that it's equivalent to a structural component in your claim. When pressed to point out exactly which component in the cited patent corresponds to the claimed component, I rarely get a straight answer. This BPAI decision is important and a precedent I will surely cite in the future.

The practice pointer illustrated in this case is the following: when prosecuting computer hardware or general mechanical claims, for each claimed structural component, the Patent Examiner must point to a specific component in the cited art. It is not enough for the Examiner to point to a "nebulous" or general area of the cited art and claim that it performs the same function as the claimed component. That would be painting with a "broad brush." The Examiner must point to a specific component in the prior art AND it must perform the same function as the claimed component. If the Examiner fails to do this, you have a good premise for reversing on appeal to the BPAI.

Today, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner's rejection of a key Guidant patent application for a heart stent used to treat arteriosclerosis. As a Florida Patent Lawyer with a daily patent prosecution docket, I follow cases such as these for practice pointers. This case illustrates an important point pertaining to rejections based upon 35 U.S.C. sec. 102(b) as being anticipated by a prior art patent.

Today's decision of the BPAI revolves around a rejection by the Patent Examiner wherein he asserted that two (2) elements of the claimed invention were disclosed by the presence of one (1) element in the prior art patent he cited. It is common for a Patent Examiner to claim that the two widgets of a patent claim are disclosed by a prior art patent that discloses only one widget. The BPAI disagreed with the Patent Examiner, citing See e.g. Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994)(in infringement context, a single conveyor held to not meet claim element requiring at least two conveyors); In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)(claim requiring three separate means not anticipated by structure containing two means where one of the two means was argued to meet two of the three claimed means).

The practice pointer I learned from this BPAI decision is that 35 U.S.C. sec. 102(b) rejections by a Patent Examiner should be examined closely to ensure that, in fact, each element of the rejected claim is disclosed by a separate element in the prior art being cited against the claim. For a 35 U.S.C. sec. 102(b) rejection, it is not sufficient for a Patent Examiner to find only one instance of a claimed element in a prior art patent, when in fact two instances of the element are claimed. The patent attorney that prosecuted this Guidant patent application was astute in catching this Examiner flaw, thereby resulting in this key Guidant invention moving towards an issued patent. The financial incentives in this case are quite high, seeing as stent sales are estimated at $3 billion per year.

As a Florida Patent Attorney with a sizable patent prosecution docket, I frequently deal with rejections from the U.S. Patent and Trademark Office (USPTO). A common form of rejection is an anticipation rejection under 35 U.S.C. sec. 102. This type of rejection is used in cases where the Patent Examiner believes that a single prior art reference (usually an existing U.S. Patent) anticipates or discloses every element of your patent claim. How do you respond to these types of rejections and succeed? The answer to this question is illustrated in today's decision by the Board of Patent Appeals and Interferences (BPAI) in a case involving Dow Chemical Company.

Today, the BPAI issued a decision affirming a Patent Examiner's 35 U.S.C. sec. 102 rejection of Dow Chemical Company's patent application for a crystalline drug particle invention that increases bioavailability and dissolution rates of a pharmaceautical product. High bioavailability and dissolution rates are desirable attributes of a pharmaceutical end product. Bioavailability is a term meaning the degree to which a pharmaceutical product, or drug, becomes available to the target tissue after being administered to the body. Poor bioavailability is a significant problem encountered in the development of pharmaceutical compositions, particularly those containing an active ingredient that is poorly soluble in water. Poorly water soluble drugs tend to be eliminated from the gastrointestinal tract before being absorbed into the circulation. Dow Chemical Company's patent application claimed a new process that increases bioavailability and dissolution rates of drugs. Thus, this is a patent application of interest to the chemical and drug industries.

The Patent Examiner rejected certain Dow claims under 35 U.S.C. sec. 102 for being anticipated by a U.S. Patent to Kipp. In the rejection, the Patent Examiner made a prima facie case of anticipation by providing a detailed explanation of where each and every element of the pertinent claims were found in the Kipp patent. Once a prima facie case of anticipation has been established, the burden shifts to the Appellant, i.e., Dow, to prove that the prior art does not necessarily or inherently possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). This is where Dow's counsel made a big mistake.

In responding to the Patent Examiner's rejection, Dow stated only the following "Kipp does not teach or suggest particles having crystalline domains, and more specifically, Kipp does not teach or suggest particles having crystalline domains of less than about 400 Angstroms." Dow did not provide an adequate explanation as to why Kipp did not disclose the elements of the claims, Dow did not proffer any evidence to support its conclusions and Dow did not provide any scientific reference in line with its argument. The BPAI responded: "This argument misplaces the burden. The Examiner has provided significant evidence which supports [his] conclusion ... Consequently, under Best, the burden of proving that the particles of Kipp do not inherently satisfy the claims is placed on Appellants .. Appellants have proffered no evidence that the particles of Kipp differ from those claimed."

The lesson to be learned in this case is that once a Patent Examiner makes a prima facie case of anticipation under 35 U.S.C. sec. 102, the Applicant must respond with arguments as to why the prior does NOT disclose his invention AND the Applicant must come up with substantial evidence that supports his conclusion. An Applicant can't simply respond with a blanket "I disagree." The Applicant must do his research and come up with hard evidence, such as scientific literature, that supports his argument. Without good, hard evidence that supports his conclusion, an Applicant will not be able to rebut an Examiner's prima facie case of anticipation under 35 U.S.C. sec. 102.