Florida Patent Lawyer Blog

As a Florida Patent Attorney with a sizable docket of patent cases, I constantly worry about the effect my amendments have on the enforceability of the resulting patents. As you know, the doctrine of patent prosecution history estoppel limits the scope of a patentee's claims due to things that happened during patent prosecution. Last week, the Court of Appeals for the Federal Circuit issued an illuminating decision in Funai v. Daewoo on the doctrine of prosecution history estoppel and when it is applied.

At issue in this case was whether the patentee, Funai, lost its range of equivalents with regard to a claim term when Funai cancelled the relevant claim after it was rejected by the Patent Examiner. Does cancelling a claim after a rejection invoke prosecution history estoppel and lead to a loss of a range of equivalents?

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) is the landmark case we consider when discussing prosecution history estoppel. Festo tells us that no estoppel exists with respect to a claim term if this aspect is unrelated to or "merely tangential" to the prosecution. In Festo, 535 U.S. at 741, the Court stated: "There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. . . . [T]he rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; . . . . In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence."

In the Funai case, the Federal Circuit reviewed the patentee's amendment and decided the following:
"It is apparent that the nature of the [claim term at issue] was not a factor in the allowance of claim 4, for this aspect was not at issue during prosecution. This limitation is in the category that the Court called "merely tangential" to the prosecution, as discussed in Festo. Thus the district court correctly held that the cancellation of claims 1 and 2 did not surrender access to equivalency with respect to the [claim term at issue]."

The moral of the story here is that prosecution history estoppel only applies to aspects of a claim that are directly related to prosecution. Aspects that are merely tangential or secondary to a main issue are not subject to prosecution history estoppel and do not lose their range of equivalents due to an amendment. As a practice tip, if you see this issue come up during patent prosecution, I would explicitly state in the Remarks section of an amendment whether you consider certain aspects of the claim tangential and not at at issue.

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.

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.

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.

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).

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.

In an interesting and somewhat comical opinion today, the Board of Patent Appeals and Interferences (BPAI) rejected an Appellant's argument that a 35 U.S.C. §101 rejection violated the Appellant's rights under the equal protection clause of the 14th Amendment of the U.S. Constitution. As a Florida Patent Attorney with an active patent prosecution docket, this is the first time I've ever seen the 14th Amendment brought up before the BPAI. See the decision in Ex Parte Haines HERE.

The Appellant, Hewlett Packard, was appealing a 35 U.S.C. §101 non-statutory subject matter rejection of a claim that recited propagated signals. HP argued the USPTO has issued patents to others that contain "propagated signal claims" and therefore the current rejection violated HP's rights under the equal protection clause of the Fourteenth Amendment to the U.S. Constitution.

The BPAI responded: "Appellant has not cited any authority in support of the novel legal argument. The U.S. Patent and Trademark Office is not part of a state (or local) government, but an agency of the U.S. Department of Commerce. Cf. U.S. Const. amend. XIV, § 1 ("No State shall . . . deny to any person within its jurisdiction the equal protection of the laws."). We are not persuaded that the USPTO has violated Appellant's rights to equal protection of the laws under the Constitution." The footnote reads "absent showing that the agency acted pursuant to some impermissible or arbitrary standard, an argument based on the equal protection component of the Due Process Clause of the Fifth Amendment would also fail. See In re Boulevard Entertainment, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003).

Frankly, I'm surprised the HP attorney would even advance the 14th Amendment argument. I am careful to avoid flimsy or meritless arguments when practicing before the BPAI, as any document with your name on it affects your professional reputation. I aim to have a reputation as an advocate that only presents solid arguments. Readers will take you more seriously and are more willing to consider your line of reasoning when you have an established history of sound argument-making.

What an illuminating decision! Today's Board of Patent Appeals and Interferences (BPAI) decision in Ex parte Harrison read like a veritable anatomy of a 35 U.S.C. § 101 non statutory subject matter rejection under In re Bilski. The highly educational decision in In re Harrison touches on many important issues surrounding § 101 non statutory subject matter rejection. It's not often that the BPAI issues a decision about a § 101 non statutory subject matter rejection, so two in one week is a real treat (see my posting from two days ago) for a practicing Florida patent attorney.

As an aside, I liked the BPAI's mention that "the [Bilski] court declined to decide under the machine implementation branch of the inquiry whether or when recitation of a computer suffices to tie a process claim to a particular machine." This confirms that it's still undecided whether reciting a computer or a computer readable medium satisfies the first prong of the machine-or-transformation test.

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 last decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §101 non-statutory subject matter rejection of a key Invatron Systems invention. As a Miami Patent Attorney, this case was interesting because I haven't seen any BPAI decisions regarding 35 U.S.C. §101, much less a decision that invokes Bilski, in a while.

At issue was an Invatron Systems claim pertaining to a scale for weighing items, wherein the scale included a computer that performed a series of steps, such as providing a coupon. The Examiner found the claims recite a method of purely mental steps, not tied to another statutory class. The Appellants contended the claimed method recites steps including providing a coupon to the customer and that these steps cannot be performed purely mentally since there is no way to provide a coupon without the coupon being physically inputted into the weigh station display.

The court explained the Bilski machine-or-transformation test as follows: "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." The court explained that "the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility" and "the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity." In re Bilski, 545 F.3d 17 943 (Fed. Cir. 2008) (en banc), petition for cert. granted, 77 USLW 3442 (U.S. Jan. 28, 2009) (No. 08-964).

The BPAI agreed with the Appellants. See the BPAI decision here. The BPAI stated claim 17 recited a method for providing information to a weigh station, where customer specific information is provided to the weigh station display. That is, claim 17 recited a manner of entering data to a weigh station and displaying the inputted information. As such, claim 17 required a specific structure that captures, stores, and displays specific data. This specific structure ties the recited method to a particular machine, in that the method recites how to operate a weigh station with a weigh station display. Since there is a particular machine required, claim 17 satisfies the machine prong of the machine-or-transformation test and the transformation prong need not be evaluated. As a result, the BPAI reversed the Examiner's 35 U.S.C. §101 non-statutory subject matter rejection under Bilski.

The lesson learned in this case is that although a claim may not explicitly and positively recite a structural element, the claim may require a specific structure to perform the steps of the claim. If that structure satisfies the machine prong of the machine-or-transformation test, an Examiner's 35 U.S.C. §101 non-statutory subject matter rejection may be reversed under Bilski.

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.

As a Miami Patent Attorney with an active patent prosecution docket, I feel as if I've encountered every possible patent prosecution situation out there. But I was recently faced with a situation I had not previously encountered.

At issue was my client's patent application for project management software. The Examiner at the U.S. Patent and Trademark Office called me to ask if I would agree to an Examiner's Amendment, to which I agreed. Subsequently, the Examiner issues an Examiner's Amendment and a Notice of Allowance all at once. But after reviewing the Examiner's Amendment, I noticed there were a few minor typos in the Examiner's amended claims: a space, a semi-colon and the article "a" were missing from a phrase in the claims. Previously, the only method I had used to amend claims after Allowance was to file a Continuation or a Request for Continued Examination and then clear up the claims in the new application. After doing some research in the Manual for Patent Examining Procedure (MPEP), however, I found that although the aforementioned approaches are adequate in cases where substantive amendments must be made to the claims, there is a much simpler and easier method for making minor claim amendments after Allowance.

MPEP §714.16 states that "[T]he primary examiner ... has authority to enter amendments submitted after Notice of Allowance of an application which embody merely the correction of ... formal matters in a claim without changing the scope thereof, ... without forwarding to the supervisory patent examiner for approval." MPEP §714.16 further states that "where amendments of the type noted are shown ... to require no substantial amount of additional work on the part of the Office, they may be considered and, if proper, entry may be recommended by the primary examiner."

In this case, I simply filed an Amendment After Allowance Under 37 CFR §1.312 and added a semi-colon, the word "a" and a space to certain claims, which does not change the scope of the claims and which required no substantial amount of additional work on the part of the Office. Thus, the Examiner entered my amendment and the patent was issued with no appreciable delay. This illustrates a good tool that should be placed in every patent practitioner's toolbox.