Florida Patent Lawyer Blog

Once again the Board of Patent Appeals and Interferences (BPAI) reversed a rejection by an overzealous patent examiner who failed to adequately connect the proverbial dots between prior patents in an attempt to disqualify a patent application for approval ( Ex parte Kobayashi). As a Miami-based Patent Lawyer I constantly keep abreast of new holdings handed down by the BPAI in order to deliver up-to-the-minute defenses for my clients' patent applications.

The patent applicant in this month's Kobayashi decision invented a system for recording the progress of video game players as they achieved certain milestones in online (networked) video games. The inventor describes a system of capturing the players' demographic information for use in supplying targeted advertisements to the gamers when they return to playing a saved online game already in progress from a previous session. For instance, a gamer might achieve level five of a certain game, and then decide to pause and save the session information online. The invention would supply targeted advertisements to the gamer upon his or her return to the game - possibly based on the player's physical location, age or sex demographics, etc.

As is often the case, the patent examiner attempted to produce evidence that this invention had already been disclosed in prior patents. Here, the examiner pointed to a prior patent that describes saving the progress of a game on a local hardware storage unit (Yoshida, JP 2000-005439, Jan 11, 2000). Next the examiner produced a second invention that allows a user to actively participate in television game shows and rewards the user by printing out coupons or other "rewards" on a hardware device located in the viewer's home - there is certainly nothing "targeted" mentioned in the description of this invention either (Von Kohorn, US 6,443,840 B2, Sep 3, 2002). In essence, the examiner tried to argue that because one inventor came up with a method of saving the progress of a video game on his computer, and another inventor came up with a method of allowing a television viewer to print out coupons or other untargeted materials at their home, this obviously equated to the applicant's invention described above. This is a classic case of "hindsight reconstruction" in which the examiner attempts to connect very dissimilar references in order to bolster the conclusion that it would have been obvious to anyone practicing in the industry that this would be readily discernable based on the prior patents.

Sometimes patent examiners make ridiculous stretches of the imagination in an attempt to discredit a new invention as having already been anticipated. Just because algae has chlorophyll, and sea kelp has "bulbs" that look like acorns, doesn't mean that it's obvious that a land-based oak tree would have evolved with both characteristics and produced acorns. Of course in hindsight it might be, but hindsight is always 20-20, and this is a classic case where hindsight fails to persuade that something was "obvious".

Today the Board of Patent Appeals and Interferences (BPAI) issued a decision citing the proper use of the commercial success argument (Ex Parte Buttercup Legacy). As a Miami Patent Attorney I constantly stay up to date on new holdings that strengthen my knowledge of the arguments I use to bolster my clients' positions in pursuing a patent. The holding in this case illustrates the proper use of the commercial success argument, wherein an Applicant cites the success of his product in the market in order to support his argument that his invention is patentably distinct.

The BPAI stated that "Appellant's arguments regarding commercial success are not persuasive." Appellant claims were not rejected under 35 U.S.C. § 103(a) but rather under 35 U.S.C. §102. "Arguments directed to secondary considerations are not relevant to a rejection under 35 U.S.C. §102. See Cohesive Technologies Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008).

On this issue, MPEP §1504.03 states: Once a prima facie case of obviousness has been established, the burden shifts to the applicant to rebut it, if possible, with objective evidence of nonobviousness. Examples of secondary considerations are commercial success, expert testimony and copying of the design by others.

The moral of the story is that you should save your commercial success arguments for your 35 U.S.C. § 103(a) rejections because they don't work for 35 U.S.C. §102 rejections.

The Board of Patent Appeals and Interferences (BPAI) recently handed down an influential decision when it reversed an obviousness-type rejection (Ex Parte McManamy, Appeal 2009-008781) entered by a patent examiner under 35 U.S.C. § 103(a). The 103(a) obviousness rejection statute indicates that a patent may not be obtained if it would have been obvious to someone practicing ordinary skill in the "art" at the time of the invention. The wording of the statute clearly leaves room for subjective interpretation, and as a Miami-based Patent Attorney I constantly stay abreast of new holdings that can strengthen my clients' positions in pursuing a patent application. The holding in this case illustrates the importance of attacking a 103(a) rejection from several different angles to show why the patent examiner did not meet the burden of proof in issuing an obviousness rejection.

In Ex Parte McManamy, the appellants (patent applicants) claimed an invention for a composite mattress constructed with a clear polymeric covering specifically designed for use in confinement facilities to help prevent concealment of contraband. The patent application further describes in detail an advanced polymeric material that is flame retardant, anti-microbial, and resistant to fluids and UV light to be used for the covering.
A patent examiner will typically attempt to connect all aspects of an applicant's invention under review with a prior invention or inventions in an attempt to reject the patent application. If this goal can be convincingly achieved, the BPAI will uphold the rejection. Here, the patent examiner attempted to combine the claims of two different existing patents to obviate the McManamy invention.

First, the examiner pointed to a reference (Hicks, GB 772,025, April 10, 1957) where a "demonstration mattress" covered with a "transparent flexible, tear resistant material comprising sheet polyvinyl chloride covering..." was described. However, as the BPAI pointed out, the reference did not disclose actual use of the demonstration mattress as a consumer product for sleeping, citing the reference, "...it would not be wise to use the sheet polyvinyl for the surface of a mattress for normal use..." Second, the examiner cited the Karafa (US 6,351,864 B1, published March 5, 2002) reference, which disclosed mattresses to be used in correctional facilities. However, the BPAI again indicated in its analysis that Karafa never disclosed a clear plastic covering on the mattress, nor did it disclose that the mattress would be useful in preventing the concealment of contraband.

To the layperson it would appear that the Hicks and Karafa references might fully encompass McManamy, however the missing link is not simply the fact that Karafa did not disclose a clear vinyl covering for its correctional facility mattresses, but also that the Hicks demonstration mattress with the clear covering as described was not disclosed for use as bedding. The BPAI looks for a preponderance of evidence to support the supposition that someone skilled in the design of an invention would have anticipated the invention under review. Here, the evidence did not support sufficient links between the cited references to sustain a finding that the mattress described in McManamy was adequately disclosed. As icing on the cake, the BPAI also pointed out that in 1957 Hicks never could have disclosed the advanced polymeric covering described in McManamy because the technology to produce such a polymer did not exist at the time.

In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §103 obviousness rejection on the grounds that the Examiner did not provide "evidence" of the obviousness of the combination of references. As a Florida Patent Attorney that deals with 103 obviousness rejections on an almost-daily basis, I found this decision of the BPAI illustrates a plan of attack for Appellants. See the decision in Ex Parte General Components Inc. HERE.

The Appellant, an electrical component manufacturer, was appealing a 35 U.S.C. §103 obviousness rejection where the Examiner combined two references and followed it up with the standard boiler-plate language we're accustomed to seeing as patent practitioners - it would have been obvious to have modified the first reference to produce the claimed feature.

The BPAI decided (I'll paraphrase here for simplification): "The Examiner did not provide sufficient evidence to support the determination that it would have been obvious to have modified [the first reference to reflect the claimed feature]." The BPAI continued: "There is no evidence that [modifying the first reference] would [produce the claimed feature] ... The substitution of one element for another is generally considered obvious when there is a reason to make the substitution and when the resulting combination yields a predictable result. See KSR, 550 U.S. 398 at 416, 418. In this case, the Examiner determined it would have been obvious to have substituted [a feature of the second reference for a feature of the first reference] but did not explain how [to do it]. Furthermore, the Examiner did not provide sufficient evidence that [the feature of the second reference], when substituted for [the feature of the first reference], would produce [a requirement of the first reference]. The rejection is therefore reversed."

The important lesson here is that a Patent Examiner must provide some evidence that it would have been obvious to modify a first reference to reflect a claimed feature. A standard, conclusory statement by the Examiner doesn't suffice. Ideally, he would provide literature from other patents, academic papers or from textbooks of the time that support his argument. But that is something I rarely see in 35 U.S.C. §103 obviousness rejections from the USPTO. In short, if an Examiner doesn't provide any evidence as to WHY it would have been obvious to modify a reference, you've got a premise for reversal on Appeal.

The other lesson is that a modification of a reference is NOT obvious if, after the modification, the reference is not able to perform its stated purpose. If the modification destroys or frustrates the purpose of the first reference, then the combination is not proper. This "frustration of purpose" argument is one I've made many times before the BPAI, and it provides yet another premise for seeking a reversal on Appeal.

Yesterday, the Board of Patent Appeals and Interferences (BPAI) issued a ruling touching upon the "broadest reasonable interpretation" concept, resulting in a reversal of a Patent Examiner's 35 U.S.C. §103 obviousness rejection of an earphone invention belonging to French firm Technofirst. As a Miami Patent Attorney, this case was interesting because it illustrates another avenue for reversing a 35 U.S.C. §103 obviousness rejection on appeal.

The gyst of the BPAI decision can be read in the following excerpt: "the Examiner is correct that Appellant has not specifically defined that term therein. However, while giving claim terms their broadest reasonable interpretation is correct and proper, such interpretations need to be made in view of the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). With such a standard, we do not find the Examiner's alternate interpretations to be consistent with the instant Specification ... We can find no support in the Specification for such an interpretation of 'complex polynomial function.'"

Lesson learned: As a patent practitioner, even if your case suffers from lack of definition of a key claim term, and the Examiner hits you with a broad reasonable interpretation of the claim term, his interpretation must be consistent with the specification. I.e., no matter how reasonable an Examiner's interpretation of a claim term, he cannot get away with the interpretation if it's not consistent with the specification. So always check the Examiner's interpretation against the specification.

See also the the following excerpt: "In addition, Appellant has proffered declaration evidence that one of ordinary skill in the art, at the time that the application was filed, would have understood 'complex polynomial function' to require a filter of order higher
than first. While Dr. Carme's opinion cannot be said to come from a disinterested party, we find that the Examiner has provided nothing to counter his opinion other than a finding of the plain meaning of the term. While 'complex' can certainly connote complex numbers, we find no support for such a contention in the Specification. As such, we do not agree with the Examiner."

The above excerpt highlights the value of 1.132 Declarations. I have rarely seen Examiners provide a substantive response to a 1.132 Declaration. Even though the Declaration comes from your inventor, who is admittedly an interested party, the BPAI does give the declaration weight and if the Examiner does not adequately rebut it, this weighs in the Appellant's favor. Lesson learned: use 1.132 Declarations whenever possible, as it provides another element that may weigh in your favor on appeal.

In one of its first decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §103(a) rejection of a key Verizon invention. As a Miami Patent Attorney, this case was interesting because it illustrates how a 35 U.S.C. §103(a) obviousness rejection can be reversed on appeal to the BPAI.

At issue was a Verizon claim that disclosed software for an LDAP server that receives a request in first protocol format and then converts retrieved information from a second protocol format to the first protocol format. The Examiner rejected the Verizon claim under 35 U.S.C. §103(a) based on the Ma patent. See the BPAI decision here .

The Appellant argued that in Ma the request to and the response from the directory server have the same protocol format, as opposed to having first and second protocol formats as claimed. Appellant further argued that while another patent was cited for the proposition that "converting from one type of protocol format to another protocol format was known in the art at the time the invention was made," Ma does not disclose the need or desirability for any type of translation. Appellant asserted that Ma does not teach or suggest that messages formatted in accordance with a first protocol are converted, translated, or otherwise reformed into messages formatted in accordance with a second protocol.

Appellant pointed out that as described by the Ma patent, the mediation server may be conversant in multiple protocol formats and therefore is not described to have any need to convert there between with respect to a particular request. Appellant thus argued that the requisite motivation to combine Ma and the other patent was lacking. The BPAI agreed with Appellant's arguments and reversed the Examiner's 35 U.S.C. §103(a) obviousness rejection.

For patent practitioners, the lesson learned in this BPAI decision is the criteria a Patent Examiner must meet when asserting a 35 U.S.C. §103(a) obviousness rejection. First, it is not enough that a cited reference disclose the ability to perform a task. The task itself must be explicitly or implicitly disclosed in the reference - in this case, the task not disclosed was translating from one format to another. Second, when two references are combined, there should be some motivation to combine the two references. The lack of such a motivation opens the rejection to attack on Appeal.

Last week, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner on the issues of hindsight and design choice. As a Florida Patent Attorney with a great interest in the case law surrounding patent prosecution, I enjoyed reading this case because the BPAI used legal citations not familiar to me.

On the issue of hindsight, the BPAI decision stated: "Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)."

The BPAI had this to say about the Examiner's reasoning for his 35 U.S.C. 103(a) rejection: "the Examiner does not cogently explain how to modify Weisz's return air inlet with Lough's teaching of an adjustable damper... it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. KSR Int'l., 550 U.S. at 418 ... the conclusion of obviousness appears born from the use of impermissible hindsight reconstruction in view of Appellants' Specification.""

The practice pointer taught by the above is twofold. First, be wary of an Examiner who does not adequately explain how to modify one reference with the teaching of another. Second, note when an Examiner does not identify a reason that would have prompted a POSITA to combine two references. Both of these Examiner errors are grounds for a reversal of a 35 U.S.C. 103(a) rejection.

With regard to the Examiner's faulty finding of "obvious design choice," the BPAI said this: "To support a conclusion that a claim is directed to obvious subject matter... an Examiner must present a "convincing line of reasoning' as to why one of ordinary skill in the art would have found the claimed invention to have been obvious. Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned "convincing line of reasoning." Ex parte Clapp, 227 USPQ at 973."

Again, the practice pointer taught by the above is twofold. First, in a 35 U.S.C. 103(a) rejection, the Examiner must provide a "convincing line of reasoning" regarding obviousness. This convincing line of reasoning may comprise: 1) explaining how the limitation in question provides a particular advantage and 2) explaining how the prior art would have performed equally well. The failure of an Examiner to provide either or both of these elements of a "convincing line of reasoning" may provide grounds for a reversal of a 35 U.S.C. 103(a) rejection.

In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 103(a) obviousness rejection of a key Hewlett-Packard software invention, but came up with a new rejection of its own - a 35 U.S.C. sec. 101 non-statutory subject matter rejection. As a Miami Patent Attorney that deals with Patent Office rejections related to software patents and software inventions almost daily, this case is instructive because it illustrates the case law on non-statutory subject matter and the process of dealing with the BPAI.

The HP invention involved a software process for credentialed authorization requests. HP appealed an Examiner's 35 U.S.C. sec. 103(a) obviousness rejection, which the BPAI reversed. But in an interesting move, the BPAI decision sua sponte noted the nature of the software claims and instituted a 35 U.S.C. sec. 101 non-statutory subject matter rejection.The BPAI started off by reciting case law: a "signal" cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) and a claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdan, 33 F.3d 1354 (Fed. Cir. 1994).

With regard to the Applicant's claims, the BPAI stated: "The services of the claims on appeal are logical constructs or software abstractions. System claims, independent claims 21 and 26, are directed to software-based systems per se. Additionally, the computer readable mediums recited in the preamble of independent claims 12 and 14 on appeal are directed toward signal-based embodiments when construed in light of the Specification as filed. The earlier-noted case law prohibits patent protection for these claimed features." Therefore, because the Applicant's claims recited pure logical steps with no explicit tie to a machine, and because the specification stated that a computer readable medium could be a signal, the Applicant's claims were non-statutory subject matter under 35 U.S.C. sec. 101. (It is interesting that the BPAI did not cite the Bilski case. Perhaps because the decision may be overturned by the Supreme Court this year?)

The first important practice pointer illustrated here is the importance of writing software patent claims that comprise statutory subject matter under 35 U.S.C. sec. 101. Fellow blogger Karen Hazzah writes an excellent patent prosecution blog that recently highlighted a USPTO memo directed towards helping patent practitioners write computer readable medium claims that survive 35 U.S.C. sec. 101 scrutiny. All patent attorneys that write software patent claims should read that memo.

The second practice pointer illustrated here is the ability of the BPAI to sua sponte come up with new grounds of rejection. It is not true that just because the Examiner missed a rejection, it can no longer be asserted against you (as in federal litigation). The BPAI has the power to bring up any rejection that the Examiner may have missed, even if it is the first time it's being used against you. The BPAI has always had this power, but in the last couple of years, I typically only see them do this for 35 U.S.C. sec. 101 non-statutory subject matter rejection. Thus, when dealing with an appeal to the BPAI, especially one involving software patent claims, the smart patent attorney will double check his claims to make sure there is no chance of such a sua sponte rejection. If the possibility exists, you may want to file an RCE to clean up the claims before going to appeal.

Continue reading "Patent Office Rejects Key HP Invention on Appeal" »

Today the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner's 35 U.S.C. sec. 103(a) obviousness rejection because the Examiner did not adequately explain why the ordinary artisan would have combined the cited prior art references. As a practicing Miami Patent Lawyer who responds to 35 U.S.C. sec. 103(a) obviousness rejections weekly, today's decision of the BPAI is instructive because it illustrates a method for attacking obviousness rejections.

The patent application at issue belongs to International Specialty Products, a global supplier of pharmaceutical products. The Patent Examiner found multiple prior art references and combined them into a 35 U.S.C. sec. 103(a) obviousness rejection. As is typical for the Patent Office these days, the Examiner's reason for combining the references started with a boiler plate sentence - "one of ordinary skill in the art at the time the invention was made could have been motivated to do so" - and ended with a terse phrase formulated by the Examiner - "in order to improve stability." And other than those 5 words, that's all the Examiner wrote about the reasons for combining - no elaboration, no citation to the references, and no further explanation. As a patent attorney with a sizable patent prosecution docket, this is all too familiar to me. Of course, the Appellant argued the Examiner did not adequately explain why the references should be combined.

The BPAI stated: "A rejection for obviousness must include 'articulated reasoning with some rational underpinning to support the legal conclusion.' KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), quoting In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ... The Examiner has neither identified any objective teaching in the prior art, nor referenced knowledge generally available to one of ordinary skill in the art that would have led that individual to combine ... [the two cited references] in order to improve stability. Moreover, the Examiner has not provided any reasoning why stability was a problem that needed to be solved." Thus, the BPAI reversed the Examiner's rejection.

This simple case illustrates a valuable lesson to practicing patent practitioners. When encountering a 35 U.S.C. sec. 103(a) obviousness rejection, the Examiner's reasons for combining the cited references is crucial and necessary to the viability of the rejection. The Examiner's reasoning should be scrutinized to ensure that in fact there is evidence in the cited references and/or in the art in general for supporting his reasoning. It is not enough for an Examiner to state that one of ordinary skill in the art would have combined the references in order to [insert reason here]. The Examiner should cite a passage in the cited references indicating a reason to combine and/or cite a publication or other written work illustrating that general knowledge in the art indicates a reason to combine. If the Examiner does neither in his rejection, you have a great premise for reversing his rejection.

When does a design choice rise to the level of being a patentable invention? If someone builds a widget out of plastic and you decide to build it out of titanium, is that feature alone patentable? As a Florida Patent and Trademark Attorney, I am sometimes faced with this question when reviewing my client's inventions. The answer is not always clear. But yesterday's decision of the Board of Patent Appeals and Interferences (BPAI) provides a good explanation of how this concept is handled at the U.S. Patent and Trademark Office (USPTO).

Back in 2005, Volkswagen filed a U.S. patent application directed towards a heat shield sleeve for a drive shaft. One of the patent application's claims stated that the heat shield was formed out of aluminum. The Patent Examiner stated, among other things, this claim was obvious under 35 U.S.C. sec. 103 because the main prior art reference, a U.S. Patent referred to as "Mazuy," disclosed the use of steel for a heat shield and therefore the use of aluminum would have been "an obvious design choice." The BPAI disagreed, taking the Applicant's argument, supported by evidence, that substituting aluminum for steel in the heat shield of Mazuy would have resulted in a non-working heat shield. The BPAI further stated that the Examiner's rationale did not explain how the use of aluminum, instead of steel, would have produced a working gadget. It should further be noted that, as explained in the Manual of Patent Examining Procedure (MPEP), modifying a reference is not proper if "the modification renders the device of the primary reference inoperable for its intended purpose" (MPEP. 2143.01). Therefore, the BPAI reversed the Examiner's rejection of the patent application's claim directed to a heat shield formed of aluminum.

This case illustrates an important tool that should be kept in every patent practitioner's toolbox. Be sure to challenge an Examiner's assertion that a claimed feature is just an "obvious design choice." It may be that there is a good reason, like the expansion coefficient of a metal, for using a certain material over another, other than just a mindless design choice. Also, it may be that the Examiner's prior art reference, assuming it doesn't disclose your design choice explicitly, simply does not operate when it is modified to encompass your design choice. Winning on either of those arguments could result in a reversal of a Patent Examiner's rejection.

Happy New Year to all! But not so happy for Applied Materials, Inc., a semiconductor manufacturer in California. Yesterday, the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office issued a decision largely affirming a Patent Examiner's rejection of an Applied Materials patent application covering a key semiconductor manufacturing process.

Yesterday's decision revolves mainly around the issue of "optimization of ranges." To illustrate this issue, assume that the prior art for car-wash technology discloses the placement of water-dispensing nozzles in certain locations inside the car-wash. Let's say that a client invents a car-wash with water-dispensing nozzles placed in locations not disclosed in the prior art. Is this client's invention patentable? As a Florida patent attorney with over 10 years of experience dealing with patent applications, I get this question a lot. The answer is not so simple to explain.

With regard to the issue of "optimization of ranges," the Manual of Patent Examining Procedure states that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454 (CCPA 1955).

Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990).

The Applied Materials case involved a claim including the optimized calibration of a thin film-depositing element. The claim was rejected under 35 U.S.C. 103(a) for obviousness in light of the prior art, which generally disclosed optimization of thin-film depositing elements. The Board upheld the obviousness rejection due to a lack of criticality in the Applicant's choice of calibration of the thin film-depositing element, as evidenced by a lack of unexpected results.

This decision sheds light on the car-wash example above. If the water-dispensing nozzles are placed in novel locations with the expected result being increased car-washing capabilities, then the client's car-wash invention is probably obvious and not patentable. But if the locations of the water-dispensing nozzles leads to an unexpected result, such as the buffing of car paint, then the client's car-wash invention is non-obvious and may very well be patentable.

When are your patent claims obvious in light of the prior art? Is it non-obvious to simply combine two known items in a new way? What is the legal criteria for non-obviousness? As a Florida patent attorney with an active patent prosecution docket, I deal with these issues on a daily basis. Today, the Board of Patent Appeals and Interferences at the United States Patent and Trademark Office issued a straightforward and easy-to-understand decision on this issue.

Today's decision in the case of Ex parte Constantinidis relates, among other things, to the issue of whether the claims of the Appellant were obvious in light of the prior art. The Appellant, NXP Semiconductor, argued that the Patent Examiner erred in rejecting his claims by combining the Tsumura patent with the Tanimoto patent. Specifically, the Appellant argued that the Tsumura patent and the Tanimoto patent are distinctly different and cannot be combined.

The Board of Patent Appeals stated that "the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l., Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Board reviewed the Tsumura and the Tanimoto patents and concluded that Tsumura and Tanimoto patent can, in fact, be combined in a proper way because they were both directed to similar technologies and the combination resulted in an expected result.

This case highlights the difficulty that is often encountered when fighting an Examiner' rejection based upon 35 U.S.C. § 103 obviousness, where a patent attorney must make conclusions about the knowledge held by a person of ordinary skill in the art and whether a result is expected. People of ordinary skill in an art can have varying degrees of knowledge of certain areas and what one person regards as "expected" may be "unexpected" to another. Because the issues argued in these cases can often be subjective, the final decision is up to the Board's discretion.

As a Miami patent attorney, I advise my clients that a claim is obvious if you are combining two known devices of methods in a way that results in an expected outcome. An example if an expected outcome would be adding a Bluetooth chip to an electronic device for the purpose of networking the device. The result, networking the device, is expected. If the outcome is not expected to one of ordinary skill in the art, then you may have something that is non-obvious. For example, combining the molecules that comprise minoxidil resulted in a good blood pressure medication. But the hair growth that resulted from the use of minoxidil was unexpected and therefore this combination of molecules is non-obvious and patentable.