Benefit of Hindsight: Patent Law

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Benefit of Hindsight

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Last Entry: October 20, 2008 at 10:45:00

Ex Parte Framatome

Posted on October 20, 2008
On Dec. 12th, 1999, Reexamination No. 90/005,589 of U.S. Patent No. 5,940,464 was requested by Westinghouse Electric Company. On May 12, 2006, the Board of Patent Appeals and Interferences decided Ex parte Framatome ANP, upholding rejections of claims 1-4 as...

Ex Parte Matsuoka: the case for prima facie non-obviousness

Posted on October 13, 2008
On October 29, 2007, the Board of Patent Appeals and Interferences decided Ex Parte Matsuoka , upholding obviousness rejections of the claims of U.S. Patent Application No. 10/181,810. The claims are directed to a steel sheet. The important limitations of...

Drafting "consisting essentially of" claims to overcome unknown anticipatory prior art

Posted on October 06, 2008
In the original claims of U.S. Patent Application No. 10/314,993 (now U.S. Patent No. 6,946,097) is recited, Claim 1. A soft magnetic Fe-Co alloy comprising, in weight %, Fe and Co such that the difference between the Fe and Co...

Pondering the Unclaimed

Posted on September 29, 2008
In Ex Parte Spriesterbach, the Board of Patent Appeals and Interferences upheld the rejection of all Applicant's claims. What happened? The Applicant sells Zn-Al wires used for thermal spraying and discovered the addition of small amounts of indium (up to...

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Board Reviews Prior Art for Obviousness, Finds Anticipation

Posted on September 22, 2008
In Ex Parte SPRIESTERBACH, the Board of Patent Appeals and Interferences handled an appeal from an obviousness rejection of all claims, first independent claim below: "Claim 6. A wire based on zinc and aluminum, characterized by containing from 8 to....

Consisting Essentially Of

Posted on September 15, 2008
In BPAI decision Ex parte AGARWAL (Appeal No. 2008-2005 / Application No. 11/124,935), Applicants filed a patent application directed to a gold alloy composition. The patent application included independent claim 7 using the transitional phrase "consisting essentially of" as opposed...

Does zero include none?

Posted on September 08, 2008
In BPAI decision Ex parte AGARWAL (Appeal No. 2008-2005 / Application No. 11/124,935), Applicants filed claim 1 as follows: A 14-karat rose-colored gold alloy composition, comprising: about 58.5% gold; about 9.0-12.0% silver; about 0.0-0.2% zinc; about 0...

The Iliad and the Applicant

Posted on September 02, 2008
In BPAI decision Ex parte AGARWAL (Appeal No. 2008-2005 / Application No. 11/124,935), the Bard of Patent Appeals and Interferences reversed the Examiner's decision shipwrecking all the claims as obvious over a combination of references. In the Appeal Brief to...

From Blog to Publication

Posted on April 21, 2008
I plan to start blogging again. I want to publish an article on obviousness of ranges. So I will focus this blog on that topic until I gather together enough material and inspiration to submit a publication on the topic.

My Second Blog

Posted on January 26, 2008
Good news! See my other blog (DC Metro IP). It will focus on news, events, people, jobs, etc. of interest to people in the DC metro patent community. It won't include anything remotely resembling legal analysis. Unfortunately, this second blog...

Back to the plan

Posted on January 17, 2008
Returning to the topic ("beyond reasonable claim interpretations"), I previously posted four decisions by BPAI including the words "beyond reasonable". Three of those decisions, Appeal No. 2007-2336, Appeal No. 2007-2147 and Appeal No. 2007-3516) relate to whether the rejection "would...

First takeway from Shaw decision

Posted on January 17, 2008
Preliminarily, the previous post and corresponding research strayed off course. The purpose of the blog is to make the blogger a better patent practitioner. The method of becoming a better patent practitioner is to choose and research a topic. The...

Board stretches prior art and erroneously upholds rejection

Posted on January 16, 2008
The Board upheld the Examiner's rejection of claim 1 of App. No. 10/365,855, determining that Scholl discloses "diagnostic failure of a hardware component of an information handling system". This one is a puzzle. Shaw relates to remotely diagnosing hardware failures...

First "beyond reasonable" case

Posted on January 16, 2008
The BPAI decided Appeal No. 2007-2336 on January 4, 2008 for application No. 10/365,855 to Shaw. The decision focused on three pivotal issues Whether Applicant has shown that Scholl's disclosure does not teach "diagnostic failure of a hardware component of...

First Topic: Broadest Reasonable Interpretation

Posted on January 15, 2008
The goal is to address the question: what claim interpretations are so broad that they are beyond reasonable? Upon conducting a quick search for "beyond reasonable" at the BPAI database, four decisions were discovered. A quick reading revealed that in...

The way to achieve the blog's purpose

Posted on January 15, 2008
My just conceived plan is Choose a topic, such as: (a) what are "teaching away" arguments that will and will not overcome an obviousness rejection during prosecution, or (b) what kinds of claim interpretations are so broad that they are...

The "non-obvious" purpose of this blog

Posted on January 15, 2008
Just conceived today, the purpose of this blog is hereby defined: "making the blogger a better patent practitioner through research of the past and the other's viewpoints of others of the blogger's research." Accordingly, the blogger believes that merely researching...

Does "up to" include zero?

Posted on January 12, 2008
On Dec. 12th, 1999, Reexamination No. 90/005,589 of U.S. Patent No. 5,940,464 was requested by Westinghouse Electric Company. On May 12, 2006, the Board of Patent Appeals and Interferences decided Ex parte Framatome ANP, upholding rejections of claims 1-4 as...

Drafting "consisting essentially of" claims to overcome unknown anticipatory prior art

Posted on January 09, 2008
In the original claims of U.S. Patent Application No. 10/314,993 (now U.S. Patent No. 6,946,097) is recited, Claim 1. A soft magnetic Fe-Co alloy comprising, in weight %, Fe and Co such that the difference between the Fe and Co...