Tuesday, September 30, 2014

Blogs covering AIA Inter Partes Review, Post Grant Review and Covered Business Method Review

My blog covers the A in PTAB – meaning that I discuss cases where the Applicant has appealed an Examiner rejection during prosecution. The T in PTAB stands for Trials, and it looks like these Trials proceedings are big business, because I've found quite a few blogs that cover PTAB activity.

Here's a quick list:

US PTO Litigation Alert
Patents Post Grant
Reexam Link
PTAB Trial Blog
IPR Petition Denied
Post Grant AdvocATor

A bit more background for those of you that aren't familiar with PTAB Trials. The jurisdiction of the Board was enlarged significantly by the AIA. The PTAB still handles appeals of Examiner rejections during prosecution  and appeals during ex parte reexamination. But the PTAB now also handles Inter Partes Review, Post Grant Review and Covered Business Method Review.

Inter Partes Review (commonly abbreviated as IPR) is analogous to old inter partes reexamination – though there plenty of differences. Post Grant Review is like Inter Partes Review, but is limited to patents filed under AIA rules and to a 9-month period after issuance. Covered Business Method Review is like Post Grant Review – except that filing date is irrelevant and it is limited to "covered business methods." This link summarizes the differences in chart format.

In the past, I've found a lot to learn from reexamination appeal. Applicants tend to go into more detail in their arguments, as reexamination is an expensive process with higher stakes. This is even more true for IPR and its brethren, so I'll be blogging about IPR, PGR and CBM decisions from time to time, if I see some good stuff.

Monday, September 29, 2014

PTAB affirms anticipation of tourniquet by cable tie since tie is capable of "safe occlusive pressure"

Takeaway: The Applicant appealed a claim to a tourniquet including "the block body and cuff cooperate to provide safe occlusive pressures to both sides of the target digit." The Examiner rejected as anticipated by a cable tie used with telecom cable: the range of pressures exerted by the cable tie  included "safe" pressure, and this capability was enough for anticipation. The Applicant argued that the reference cable tie was made of high-tensile thermoplastic and had a loop tensile strength over 250 pounds. The Applicant entered expert affidavits by two surgeons attesting that this cable tie "was not suitable for use as a digit tourniquet." The Board adopted the Examiner's reasoning and affirmed the rejection.

Ex parte Warburton
Appeal 2011-011302; Appl. No. 11/222,956; Tech. Center 3700
Decided  January 18, 2013

The application on appeal was directed to a tourniquet for a finger or toe. The application included several independent apparatus claims of differing scope, as well as a method-of-use claim.

Tuesday, September 23, 2014

Board considers subcomponent of integrated assembly and finds subcomponent is "to be attached to" the final assembled structure

Takeaway: A claim to an aircraft mounting structure recited a "mount portion ...to be attached to a pylon". The Examiner read the mount portion on a pyramid structure that was part of the assembled pylon. The Applicant argued that because the pyramid structure was already part of the pylon, it would no be understood as a component "to be attached to" the pylon. The Examiner explained that "integration (combining multiple into one) is a form of 'attachment'. " The Board agreed with the Examiner. (Ex parte Cloft,  PTAB 2014.)

Ex parte Cloft
Appeal 2012-005061; Appl. No. 12/016,234; Tech. Center 3600
Decided  June 9, 2014

The application was directed to structures for mounting an aircraft engine. Where prior art arrangements used multiple bolted joints to attach the engine to a pylon structure on the wing, the invention used engine mount beams that were integrally formed with the pylons. 

Wednesday, September 17, 2014

Federal Circuit decision reminds prosecutors to pay attention to entire chain in claim to priority

The Federal Circuit decision Medtronic Corevalve v Edwards Lifesciences deals with priority claims and underscores the importance of making sure each application in the continuity chain has a proper reference to the entire chain. 

Ryan Alley covered this decision on his Federal Circuit blog. Read Ryan's post here: 
Medtronic Corevalve v. Edwards Lifesciences – Family & Priority Lessons

Ryan's blog is valuable to me because he always offers insight as to how a decision affects patent prosecutors. Here, Ryan suggests that in reviewing the chain of priority claims, we look at the actual specification and any amendments applied, and not rely on Filing Receipts or PAIR data. Ryan also reminds us that a defect can be cured during the application lifetime by a Petition to Accept Delayed Benefit Claim, or by reissue if the defective application has already issued.

Monday, September 15, 2014

Sample of Petitions to request republication

C.F.R. § 1.221 allows an Applicant to correct errors in published applications, by filing a petition that requests republication of specifically identified errors. This week I'll review a small sample of Petition Decisions for a Request for Republication. The interesting issues here are:
  • What's "material" ?
  • What's a "PTO mistake" ? 
These are important, since only mistakes that are both material and attributable to the PTO can be filed with no fees, under C.F.R.  § 1.221(b); otherwise, the filing is under C.F.R.  § 1.221(a) and a fee is owed. MPEP 1121 indicates that OCR errors are not considered PTO mistakes if caused by poor quality text in an Applicant submission. And the MPEP describes "material mistake" as one "that affects the public’s ability to appreciate the technical disclosure of the patent application publication or determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent." (MPEP 1130.A).

Today's post will discuss materiality in the context of a Request for Republication.

Monday, September 8, 2014

PTAB says "identifying a number of patients" requires identification of a group but not a specific number

In a post from earlier this year – When does "a" mean "the" – I  discussed the meaning of "A number of" as used in a claim. As I noted in that post, typical English usage would be "THE number of widgets" but because THE has a special meaning in claim language, drafters sometimes rephrase as "A number of widgets".

The earlier post was about two Board decisions that considered whether this phrase was indefinite, since the phrase was amenable to two interpretations. One decision said indefinite, one said not indefinite.

I've found another decision in which the Board came at this phrase from a different angle – claim construction rather than indefiniteness.