A common phone call I receive from clients relates to the halting of goods at a port by Customs and Border Protection due to trademark issues. It usually sounds like this: "Mark, my goods were stopped at the port due to a trademark issue. Help!" Often, the problem relates to missing paperwork regarding permission or authorization to use a registered trademark, such as a certification mark, like HDMI. Without the proper paperwork, Customs and Border Protection will assume you have no permission to use the registered trademark and will stop your goods at the port. Today, along with colleagues Robert Becerra, Lenny Feldman and Santigao Cueto, I discussed preventative steps that one can take before importing or exporting goods bearing a registered trademark, steps that can be taken if goods are halted at the port by Customs and Border Patrol and steps that may be taken by an intellectual property rights holder to help enforce his trademark rights in the U.S. A copy of some of the slides I used today can be found here. And here is a photo at lunch showing Robert Becerra on the left and Santiago Cueto on the right.

Some of the preventative steps that can be taken prior to importation of goods bearing a registered trademark include reviewing the product for potential trademarks, including the packaging, any paper inserts, and the product itself. For computer devices, the device should be turned on and the most accessible screens should be scrolled through.

Subsequently, prepare a list of all potential trademarks found on product and perform a search of the trademarks, such as on the U.S. Patent and Trademark Office trademark database (http://tess2.uspto.gov) Trademark Electronic Search System (TESS), and the World Intellectual Property Office trademark database (http://www.wipo.int/madrid/en/romarin/) ROMARIN (International Trademark Information Database)

If no existing trademark registrations are found, then you are in the clear. If a trademark registration is found, then you determine whether the registered mark matches the trademark on your product you are importing and whether the description of goods in the trademark registration matches the product you are importing. If there is a match, the you should contact the owner of the registered mark for permission.

Often, permission to use a certification mark, such as HDMI or Bluetooth, involves obtaining a certificate of compliance froma third party (such as a laboratory), signing a usage agreement, paying a royalty according the amount and type of use and abiding by the usage policy. Here is a link to the HDMI web page that explains its usage policy and provides information on how to obtain permission to use its certification mark.

Like many other areas of life, when dealing with trademark issues relating to the import and export of goods bearing a registered trademark, an ounce of prevention is worth a pound of cure.

The value of the 6,632,248 patent is proportional to the e-commerce industry. According to research firm IDC, the size of total worldwide e-commerce, when global business-to-business and consumer transactions are added together, will equate to $16 trillion in 2013. IDate, another research firm, estimates the global market for digital products and services at $4.4 trillion in 2013. A report by Oxford Economics adds those two together to estimate the total size of the digital economy at $20.4 trillion, equivalent to roughly 13.8% of global sales.

What is the motivation for this lawsuit? Microsoft, the 800 pound gorilla, is obviously protecting its patent and its share of the worldwide e-commerce industry, which it routinely does by keeping a close eye on firms of any size that may pose a threat to their market share. Robocast, which has a single U.S. Patent No. 7,155,451 and other patents pending, may be validated by this lawsuit as it may indicate Robocast is on to something big enough - customization of internet searches - to attract Microsoft's attention. Thus, this lawsuit could affect Robocast's value both negatively, as well as positively,

In Microsoft's favor is the statistic that most patent cases (75.5%, to be exact) settle. When cases do go to final judgment, and almost 15% do, patentees win 989 out of 3,043, or 32.5%, of those cases. Thus, when you look at the general statistics, there is a good chance that Microsoft can either settle this case, or obtain a final judgment in its favor. Of course, these statistics can also be viewed as weighing in Robocast's favor, since it would be to their benefit, as Defendants, to settle this case and continue operating its business.

In today's Ex Parte Issac Ostrovsky (Appeal No. 2011-009091) decision, the claims involved an imaging catheter having distal and proximal ends and a lumen. The Examiner's argument went as follows: The Examiner asserted that the Ben Hain reference "discloses an imaging catheter for use in intracardiac drug delivery including an imaging element at the distal end." The Examiner also noted that Ben-Haim "fails to disclose the use of a coaxial cable for running the system in parallel with the sensor." Furthermore, the Examiner found that Sieben "teaches the use of a coaxial cabling, wherein the sensor and the imaging transducer are electrically coupled in a parallel configuration." The Examiner went on to conclude that "[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to have included the connection components of Sieben with the system of Ben-Haim et al for the purpose of providing the best signal and clearest diagnostic image possible with very little loss or distortion from noise or crosstalk."

The Appellant argued that "Sieben does not teach or suggest a sensor adapted to communicate with a medical positioning system and an imaging transducer in a parallel electrical configuration with respect to the sensor as recited in claim 1." The Appellants also asserted that the "CCD arrays of Siben are not 'adapted to communicate with a medical positioning system' as recited in claim 1," but are "used to receive the signals from the ultrasound transducer. Appellants thus asserted that the "CCD arrays do not correspond to the claimed sensor and any teaching regarding them is irrelevant to the invention of claim 1."

The Board agreed with the Appellants that the Examiner had failed to set forth a prima facie case of obviousness. Specifically, the Board held:

"Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).

Here, the Examiner points to two disparate teachings in the Sieben reference, but does not explain how the coaxial cable relates to the CCD array relates to the coaxial cabling, or how the teaching of the CCD array by Sieben relates to "a sensor adapted to communicate with a medical positioning system, wherein the sensor and the imaging transducer are each electrically coupled, in a parallel electrical configuration with respect to each other, to the center wire and the outer shield at the distal end of the coaxial cable," as required by claim 1. The rejection is thus too cursory to pass the Kahn test, and it is thus reversed. (Emphasis added

Lessons Learned: Read an Examiner's 35 U.S.C. §103 obviousness rejection carefully to make sure he or she has met the Kahn test. Has the Examiner explained how one references related to the other reference? Has the Examiner provided some rationale or logic as to how the references would be combined? Has the Examiner simply stated a conclusion that it would be obvious to combine references? These are the questions you should be asking yourself when determining whether to attach a 103 obviousness rejection for failing to meet the Kahn test. If you feel the Examiner has not met this test, then you may have grounds for a reversal at the PTAB.

In today's Ex parte White (Appeal No. 201100327) decision, the claims involved an ultrasonic consolidation process across the surface of a multi-layered object. At issue was the plain meaning of the disputed term "optimizing" in a claim and whether it encompasses making a process as effective or functional as possible. The Board contemplated whether the Examiner's finding that the prior art's process optimizes the lateral positioning of its sonotrode relative to the geometry of the object being worked upon was reasonable, and the Board further contemplated whether it was reasonable that the process of the prior art would have been as effective or functional as possible.

Appellant provided no evidence or any persuasive line of reasoning explaining why the Examiner's finding of reasonableness was in error.

The Board first explained the broadest reasonable interpretation standard:

It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification ... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation."In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ("[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.").

The Board further stated that:

The Examiner's determinations that one of ordinary skill would predictably optimize the location or position of an ultrasonic welder (Ans.7), and predictably desire to minimize bulk motion (id. at 9), are supported by a preponderance of the evidence and are unrefuted on this record. An improvement in the art is obvious if "it is likely the product not of innovation but of ordinary skill and common sense."KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). See also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) ("hold[ing] that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion").

And thus, since it was reasonable for one of ordinary skill to optimize the location or position of an ultrasonic welder, the Appellant's claims were obvious.

Lessons Learned: When attacking a claim construction in response to an Examiner's 35 U.S.C. §103 obviousness rejection, the savvy patent practitioner should cite evidence. In this case, the practitioner used attorney argument, which is cheap, to combat what he thought was an unreasonable interpretation of the claims. What he should have done was cite some solid evidence (textbooks, treatises, etc.) that supported his argument that one of ordinary skill would NOT have optimized the location or position of an ultrasonic welder. This would have created a higher bar for the Examiner to pass and may have resulted in a reversal at the PTAB.

In today's Ex parte Naoki Soejima (Appeal No. 2011-000339) decision, the claims involved a method of manufacturing a cover for a vehicle airbag. At issue was a claim element reciting a teaching line corresponding to a linear groove, wherein the teaching line is formed in an airbag cover supporting surface of an airbag cover supporting jig.

Appellant argued that the prior art did not teach or suggest the claimed invention, in part because the prior art did not disclose that its teaching line is formed in the surface of a supporting jig.

The Board held the Appellant's argument was "unavailing since they fail to consider the prior art as a whole." The Board cited In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."). The Board further stated:

"For obviousness under § 103, all that is required is a reasonable expectation of success." In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). Appellants have not specifically disputed the Examiner's determination that Bauer discloses teaching data by tracing a groove formed in a workpiece (Ans. 7-8; Reply Br. 2); or that Honma discloses "it is known to teach profiling data by tracing the workpiece support (i.e., jig) (column 2, lines 6-55)" as opposed to the workpiece itself (Ans. 4, App. Br. generally; Reply Br. 3). See also Honma, col. 1, ll. 45-57 (describing known use of an auto-teaching method in which a teaching operation is performed using a jig). In this regard, a preponderance of the evidence supports the Examiner's determination that the claimed invention merely applies a known alternative technique of using a supporting jig versus the workpiece for obtaining profiling data to yield predictable results (Ans. 5, 7). See KSR, 550 U.S. at 416 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). Appellant has not adduced any persuasive technical reasoning or otherwise in response to the Examiner's reasonable determination ..." (Emphasis added)

Lessons Learned: When responding to an Examiner's 35 U.S.C. §103 obviousness rejection, it is not enough to argue that the cited references, individually, do not disclose your claim elements. This is a common tactic among patent practitioners and I, myself, am guilty of this. As explained above, In re Merck stands for the notion that "non-obviousness cannot be established by attacking references individually." Therefore, the best approach would be to both attack the cited references individually and attack the cited references in combination. In the case above, the Appellant would have been smart to include an explanation of why the two references combined would not have yielded the claimed invention. This would have satisfied the PTAB in providing an argument that responded to the Examiner's assertion that the combination of references rendered the claims obvious.

• You have 6 months to file a Notice of Appeal and an Appeal Brief in response to a final refusal to register a trademark. TMEP 1501


• Assuming you file a Notice of Appeal more than two months before the 6 month deadline (see above), you have 60 days to file an Appeal Brief after the Notice of Appeal. TMEP 1501.02(a)


• You have 6 months to file a Request for Reconsideration in response to a final refusal to register a trademark. TMEP 715.03. But keep in mind that the Request for Reconsideration does not affect the 6 month deadline above.
• If you timely file a Request for Reconsideration and a Notice of Appeal in response to a final refusal , then the 6 month deadline is halted. If the Examiner subsequently decides to deny your Request for Reconsideration, the TTAB will give you additional time to file your Appeal Brief. TBMP 1204
  

Lesson Learned: You should always file a Notice of Appeal along with the Request for Reconsideration, since there is no penalty for doing so and it will stop the 6 month Appeal Brief deadline. Subsequently, you will either get a Notice of Allowance from the trademark examining attorney (which will render the appeal moot) or you will receive a new refusal and the TTAB will give you additional time to file an Appeal Brief.

The only reason not to file the Notice of Appeal with the Request for Reconsideration, would be to save the $100 (per class) fee that goes with the Notice of Appeal. But that small benefit is outweighed by the halting of the deadline and the ease of which this process fits into a standard patent/trademark docketing program. Further, if you file a Request for Reconsideration without filing a Notice of Appeal, there is a possibility that you will run into the 6 -month deadline, without having received a response to the Request, thereby forcing you to file the Notice of Appeal without having the benefit of reading the examining attorney's last refusal. Thus, it's better to stop the 6-month deadline so you can receive a response to the Request and then have additional time to prepare and file an Appeal Brief.

If there is no Assignee at the time of filing, then file the following:

• Application Data Sheet (ADS) (PTO Form AIA/14)


• A Declaration for each inventor (PTO Form AIA/01)


• A Power of Attorney signed by each inventor (PTO Form AIA/82B)


• A Power of Attorney Transmittal (PTO Form AIA/82A)

If an Assignment is filed after the initial filing of the application, then file:

• Assignment for each inventor (a good Oblon Assignment)


• A Power of Attorney to Prosecute (PTO Form AIA/80)


• 3.73(c) Statement (PTO Form AIA/96)

If there is an Assignee at the time of filing, then file the following:

• Application Data Sheet (ADS) (PTO Form AIA/14)


• A Declaration for each inventor (PTO Form AIA/01)


• Assignment for each inventor (a good Oblon Assingment)


• A Power of Attorney signed by Assignee (PTO Form AIA/82B)


• A Power of Attorney Transmittal (PTO Form AIA/82A)

Note that the Fee Transmittal Form, Utility Transmittal Form and the Assignment Recordation Form are optional.

The Board decided:

To anticipate under § 102, the prior art reference "must not only disclose all elements within the four corners of the document, but must also disclose those elements arranged as in the claim." Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal quotation marks omitted). "Thus, it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention." Id. at 1371.

Lesson Learned: When you receive an anticipation rejection under § 102, it's not enough that the Examiner found all of your claim elements in one reference. Review the reference carefully to make sure that the claim elements (as pointed out by the Examiner) are arranged the same way as in your claim. If they are not, then you may have a case for reversal of the Examiner's rejection.

This case also highlights the importance of writing your claims (especially in software cases) in such a way that your claim elements are linked or related. This further emphasizes the duty of the Examiner to show the link between the claim elements, as claimed by the Appellant. For example: reading data X; executing a digital signal process using data X; displaying the result of the digital signal process.

The Board started by citing law:

"A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc. 73 F.3d 1085, 1090 (Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).

Then, the Board responded to the Appellant's arguments:

Appellants argue Gardos "teaches away from the concept of querying an internal database" (App. Br. 21). However, as set forth above and as indicated by the Examiner, Gardos discloses querying an internal database. Gardos cannot "teach away" from a disclosure that Gardos provides. Further, even assuming (without deciding) that Appellants' characterization of Fellman and Gardos is correct, Appellants' have not indicated how either Fellman or Gardos discourages one of ordinary skill in the art from "following the path" set out in either reference or would lead one of ordinary skill in the art in a "divergent" direction (i.e., querying a database). We therefore are not persuaded by Appellants' argument.

So apparently, the Gardos reference disclosed the very act - querying an internal database - from which the Appellant argued that Gardos was teaching away. Further, the Appellant could not adequately point out how Gardos taught away.

Lesson Learned? This decision teaches us two things about effectively using the "teaches away" argument. First, if you are going to argue that a reference teaches away from doing X, then you should make sure the reference itself doesn't mention X. If it does, the "teaches away" argument would not be appropriate in that case. Secondly, if you are going to argue that a reference teaches away from doing X, then you should be able to point to some convincing language in the reference that explicitly states the reference should not or cannot do X. If you cannot find such language in the reference, then again, the "teaches away" argument would not be appropriate in that case.

MPEP 2111.01 states that claim terms must be given their plain meaning, also known as the ordinary and customary meaning given to a term by POSITA. To this end, you are allowed to turn to a dictionary to illustrate a claim term's ordinary and customary meaning. Ferguson Beauregard/Logic Controls v. Mega Systems, 350 F.3d 1327, 1338, 69 USPQ2d 1001, 1009 (Fed. Cir. 2003) (Dictionary definitions were used to determine the ordinary and customary meaning of the words "normal" and "predetermine" to those skilled in the art. In construing claim terms, the general meanings gleaned from reference sources, such as dictionaries, ...).

And when it comes to dictionary meaning, there's nothing easier than using a Wikipedia definition. We've all done it. Often, the Wikipedia definition is the first result that comes up when a term is typed into a search engine. But have you wondered what the Board of Patent Appeals thinks of Wikipedia definitions?

Tuesdays decision of Ex parte Hoon-Jae Ki (Appeal No. 2010-005320) provides a glimpse of how the Board regards Wikipedia definitions. The case involved a claim for an electrical circuit that performed a particular function. The Appellant pointed to a Wikipedia definition to define the claim term "quantization." This is what the Board had to say:

Because Appellant and the Examiner agree on the definition of quantization, we do not address the reliability of the definition from the Wikipedia website. We note, however, that Wikipedia has been found to be an unreliable source of information. See e.g., Techradium, Inc. v. Blackboard Connect Inc., 2009 WL 1152985, at *4, n.5 (E.D. Tex. 2009); Badasa v. Mukasey, 540 F.3d 909, 910 (8th Cir. 2008).

Not exactly a ringing endorsement of Wikipedia definitions, huh? In fact, I get the feeling that this judge (Jennifer L. McKeown) doesn't give a Wikipedia definition a lot of weight. As an aside, I see the Board has cited both an Eastern District of Texas case and an 8th Circuit - a rare occurrence in a Board decision. Are District Court cases or non-Federal Circuit Courts of Appeals cases controlling on the Board of Patent Appeals? No, they are technically not controlling cases. But I guess they do have a place in Board decisions.

What does this mean for patent practitioners? This case tells me that you shouldn't rely on Wikipedia definitions for your claim terms. Yes, it is extremely convenient to turn to Wikipedia and saves a lot of time. But seeing as the Board says this may be an unreliable source of information, Wikipedia doesn't hold much sway. If you really want to give significant weight to your argument about what a claim term means, you should try going to a more authoritative source, like a text book, a scholarly treatise or an academic article.

The case of Ex parte Kreiner (Appeal No. 2010-004976)involved a software invention used to design circuits. The disputed claim included the following limitation: "a software-based development environment for designing circuits or systems." In responding to a 103 obviousness rejection, the Appellant argued that the cited reference was directed to software design tutorials and could not be used to design circuits, as claimed by the inventor. In short, the Appellant provided a standard "the cited reference does not teach the claim language" argument. The Appellant also asserted a standard "the proposed modification would render the cited reference unsatisfactory for its intended purpose" argument.

The Board decided:

"We do not see error with the Examiner's position that Wood discloses a software-based development environment for designing circuits or systems including a plurality of functional units. Wood's interactive tutorial software runs on a computer, includes tutorials on digital analysis for digital logic design, and has a demonstration of user interaction in which the user controls relevant parameters and then observes the effects of parameter changes on, for example, various filters that can be used in digital logic design, which the Examiner equates to circuit design."

I initially did not agree with the Board's decision, because as a former software developer, I know there is a significant difference between a circuit design software package and a tutorial for students. But I continued reading the Board's decision and they convinced me when they construed the claim language at issue:

The Board wrote:

"Appellant's Specification does not expressly define a software based development environment for designing circuits or systems; nor does Appellant's Specification otherwise narrow the definition of a software based development environment for designing circuits or systems to exclude interactive software tutorials on digital analysis for digital logic design."

The Appellant tried to argue that the claimed "software based development environment" meant a lot of things that were not listed in the claims, but were described in the specification. The Board responded:

"We decline to read limitations into a claim from preferred embodiments described in the Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Accordingly, a software based development environment for designing circuits or systems does not necessarily exclude interactive tutorial software on digital analysis for digital logic design."

And that is how it came to pass that the central issue in this case became one of claim construction. This is in keeping with fellow blogger Karen Hazzah's assertion that in the end, it's usually about claim construction.

What does this mean for practitioners? This decision means that if you're going to argue that your claim includes certain limitations, then you better make sure those limitations are embedded in the claims, especially when procuring software patents. Ideally, the limitations you argue should be explicitly spelled out in the claim language. And if not explicitly in the claim language, then the limitations should be explicitly spelled out in the specification in way that is directly tied to claim language. For example, if your claim term is a "signal processing module" and the specification states "the term signal processing module specifically refers to a digital signal processing unit." The Board prefers clear and concise claim language and is reluctant to read implicit limitations into your claim. Therefore, when you identify a winning argument on Appeal, make sure your claim explicitly states the limitations you are arguing.

Is Yahoo being smart about enforcing its patents at this point in time or are they just playing dirty in order to squeeze money from Facebook before its IPO? Why did Yahoo wait until now? If their social networking technology is so good, then why didn't Yahoo get into the social networking business? Maybe the founder of Yahoo and the last Yahoo CEO missed the social networking boat and now the new CEO is playing catch up. Perhaps Yahoo was looking for a nice pay day if they get a similar result as the one they did with Google (though it may take a couple of years). In any case, one can see that there are a myriad of factors and parties that must be considered when enforcing patent rights - not the least of which are the financial or monetary considerations.

As of late, large technology companies are taking aggressive action to protect their patents by stopping competitors from selling products that are in their patent space. Microsoft and Apple have stated that the royalty fees offered by Motorola are way to high and therefore unfair. The argument in favor of Motorola is the free-market argument. The free market says that companies should be able to sell their technology at whatever price they desire or to charge any royalty they like. The consumers will decide whether the products, and the royalty rates, are worth what Motorola is asking. The argument against Motorola is the fair competition argument. How can competitors freely compete when Motorola has a monopoly on a particular product or space? How can consumers benefit from price competition when there is only one seller of a particular good or service? Whatever side you take, it is important to know that the parties involved - Microsoft, Apple, etc. - have all been on both sides of the argument at different points in time.

Tech companies spend a lot of money creating new technologies and obtaining patents to protect them. Money and finances are the main motivators behind these activities. But when it comes to enforcement of patent rights, there are various additional factors that must be considered. Some of those factors include the cost of the lawsuit, fair competition, the risk of a counter suit, anti-trust, public relations and business relationships. In light of the currently-ongoing 20-way mobile patent wars, tech companies may be wise to weigh all of the aforementioned factors before getting involved in a drawn out fight.

Investment bankers may be intent on using liquidation values but a proper appraisal of patents should include a variety of factors, including liquidation value, the cost approach, the market approach and the income approach. When valuating patents, it is important to have an understanding of the patented product, the state of the market for such products and competing products. Then it's time to dig into the numbers. The cost approach calculates either the purchase price paid for the patents and/or the costs incurred in the research and development of the product, as well as the legal fees associated with obtaining the patents (which is no small expenditure). The easiest way to use the market approach is to find comparable sales of a similar patent. Finding comparable sales, however, is difficult due to the difference in products, the use of product, subtleties between patent designs and finding actual sales. The income approach uses a net present value (NPV) calculation. The NPV uses an aggregation of projected sales that are discounted over a period of time to calculate a value at the present time. Liquidation value basically takes the current value of a patent and cuts the value by 40%-70%. The four methods described above create a range of values which can be used for different purposes, such as attracting investors, getting loans, selling patents and projecting the potential stock price.

Liquidation value may not be the best way to value a patent or a company. In fact it can do more harm than good. Help your clients protect the value of their patents by getting a proper appraisal of their patent(s), which may be their most important asset.

On that issue, the Board stated:

"the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence ... See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office)."

Preponderance of the evidence, also known as balance of probabilities, is the standard required in most civil cases. This is also the standard of proof used in grand jury indictment proceedings.The standard is met if the proposition is more likely to be true than not true. Effectively, the standard is satisfied if there is greater than 50 percent chance that the proposition is true. This is also the standard of proof used when determining eligibility of unemployment benefits in civil employment cases.

What does this mean for practitioners? The evidentiary standard of a preponderance of the evidence means that in the course of making arguments before the Patent Office, you should aim to prove your point in a manner that is "more likely than not." You don't need a rock-solid argument and evidence during prosecution, but at a bare minimum, you do need an argument and evidence that makes it more likely than not that your argument is correct. So present as much as evidence as you can, and make sure there is more evidence and more arguments in your favor than not.