Florida Patent Lawyer Blog

Last week's Board of Patent Appeals and Interferences (BPAI) decision of Ex Parte Lim , which affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, teaches an important lesson - obviousness rejections must address both references - not just one. As a Miami Patent Attorney that reads BPAI decisions frequently, I'm surprised that any practitioners even try this argument anymore.

The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Yufa affirmed a Patent Examiner's 35 U.S.C. 112, 1st paragraph, rejection. This was an interesting case for me, a Miami Patent Attorney, because it illustrated a type of rejection I don't deal with much.

Terms of degree - such as "easily," "readily," and "aesthetically pleasing" - can be subjective and therefore problematic when used as claim language. But the recent Federal Circuit decision of Hearing Components, Inc. v. Shure Inc., 600 F. 3d 1357 (Fed. Cir. 2010) provides some guidelines on how to properly use terms of degree in claim language without worrying about a 35 U.S.C. §112 indefiniteness rejection. As a Florida Patent Attorney, I write claims almost every day, so this case is topical for me.

Under 35 U.S.C. § 112, second paragraph, the "specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention," which is known as the definiteness requirement. "Claims are considered indefinite when they are not amenable to construction or are insolubly ambiguous. Thus, the definiteness of claim terms depends on whether those terms can be given any reasonable meaning. Id. Indefiniteness requires a determination whether those skilled in the art would understand what is claimed." Young v. Lumenis, Inc., 492 F.3d 1336, 1344, 1346 (Fed.Cir. 2007). The purpose of the definiteness requirement is to ensure that "the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the scope of the patentee's right to exclude." Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1339 (Fed.Cir. 2003).

The moral of the story here is that you can indeed use terms of degree in claim language, as long as you explain how to measure that term in the specification. For example, if you use the claim term "easily connected," you could state in the specification that this term refers to connecting two elements manually, such as a snap-fit system, without the use of tools or other mechanical devices.

In doing legal research today, I came upon this Board of Patent Appeals and Interferences (BPAI) decision that illustrates the importance of precise claim drafting. The case of Ex parte Allen Berger involves a 35 U.S.C. 102 rejection of a claim for a window panel invention. As a Patent Attorney in Miami with a full docket of patent cases, I'm constantly scanning for BPAI decisions that support my client's arguments at the Patent Office.

When the examiner rejects a claim, an applicant seeking a narrower construction must either show why the examiner's broader construction is unreasonable or amend the claim to state expressly the scope intended. In re Morris, 127 F.3d 1048,1057 (Fed. Cir. 1997). The BPAI focuses on the construction of the disputed limitation. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991).

The lesson here is that when you launch an "unreasonable interpretation" attack on an Examiner's rejection, you must: a) make sure the language of your claim limitation truly limits your claim as specified in your arguments and b) make sure you have a good, explicit reason why the Examiner's claim interpretation is unreasonable. Namely, providing a passage from Applicant's specification that supports your argument about why your claim is limited so as to exclude the scope of the Examiner's interpretation. This is why a precisely drafted claim is so important in patent prosecution.

How do you reverse a Patent Examiner's 35 U.S.C. 103 rejection of your design patent application based on obviousness? That was the issue in the Ex parte Kellerman (BPAI 2009-009310) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Miami Patent Attorney with a sizable docket of design patent cases, this case taught an important lesson on the anatomy of an obviousness rejection in a design patent case.

This teaches us two things with regard to a 35 U.S.C. 103 obviousness rejections in a design case: 1) the shape of orifice can be a significant distinction that affects an obviousness determination and 2) modifying a prior art reference to meet the ornamental characteristic of a claimed design must be obvious to one of ordinary skill in the art. Thus, when appealing an Examiner's obviousness rejection in a design case, it is important to discuss the significance of any difference in shape - especially if it pertains to the shape of an orifice. Second, it is important to contest the Examiner's assertion that modifying the prior art to meet the ornamental characteristic of the claimed design is obvious. This can be done many ways, but one of my favorites is to use a 37 C.F.R. 1.132 Affidavit.

In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. § 112, first paragraph, rejection as failing to comply with the enablement requirement on the grounds that the Appellant provided sufficient "evidence" that the Examiner was wrong. As a Florida Patent Attorney that deals with § 112 rejections frequently, this BPAI decision illustrates a plan of attack for Appellants. See the BPAI decision in Ex Parte Schaefer here .

The Appellant, a chemical company, was appealing a 35 U.S.C. § 112, first paragraph, enablement rejection wherein the Examiner concluded that one of ordinary skill in the art would not have been able to construct the claimed invention, a fullerene molecule, based on the specification. The Appellant responded by submitting a Declaration, or Affidavit, from one of ordinary skill in the art stating that, in fact, one of ordinary skill in the art WOULD HAVE BEEN ABLE to construct the fullerene molecule based on the specification.

The BPAI decided: "We will not sustain this rejection because in our view, the Appellants have submitted evidence sufficient to establish that a person of ordinary skill in the art would have been able to make and use the claimed invention. The Second Declaration of Joseph Talnagi is evidence that a person of ordinary skill in the art would know how to ... Mr. Talnagi lastly states that a person of ordinary skill in the art would conclude that ... We conclude that the second declaration of Mr. Talnagi is sufficient to rebut the Examiner's case of lack of enablement."

The important lesson here is that a Patent Examiner's 35 U.S.C. § 112, first paragraph, enablement rejection can be successfully rebutted using a § 1.132 Affidavit. If you can provide an Affidavit from one of ordinary skill in the art stating that he/she WOULD HAVE BEEN ABLE to construct the claimed invention based on the specification, you've got a potential premise for reversal on Appeal.

Affidavits should be a part of every Patent Attorney's toolbox and can be used to fight other types of rejections, such as 35 U.S.C. § 103 obviousness rejections, as discussed in my previous blog post.