Below are two samples of how I typically respond to 112, second paragraph rejections. 1) On page 2 of the Office Action dated April 19, 2013, claims 1 and 2 are rejected under 35 U.S.C § 112, second paragraph. To expedite prosecution and without conceding to the Examiner’s rejections, Applicant has amended claims 1 and [...]
AN AUSTIN PATENT ATTORNEY’S REVIEW: In this case Steven Morsa appealed the decision of the Board of Patent Appeals and Interferences for utility application number US20030093283 claiming priority to provisional patent application 60/211228 (‘228 patent). The patent application is directed towards receiving a plurality of inputs for which a plurality of benefits may be determined [...]
SAFFRAN v. JOHNSON & JOHNSON AN AUSTIN PATENT ATTORNEY’S OVERVIEW: In this case Johnson & Johnson and Cordis (collectively referred to as Cordis) appeal the final judgment of the district court that was in favor of Saffran holding Cordis liable for infringing Saffrans U.S. patent 5,653,760 on the theory that the district court erred in [...]
PATENT ATTORNEY OVERVIEW: This case discusses when it is timely to raise an issue on the board of patent appeals during re-examination. Responsive to a patent infringement suit against Rexnord filed by Habasit, Rexnord requested reexamination of Habasit’s 6,523,680 patent. The technology in the ‘680 patent was directed towards a mechanical conveyor belt with rows [...]