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Bilski v. Kappos Affirmed

Alan Cassel — Mon, 28 Jun 2010 19:22:59 +0000

The Supreme Court released its decision in Bilski v. Kappos today. This was the decision we have all been waiting for regarding the patentability of business methods and software. While affirming the Federal Circuit's holding that the Bilski claims were drawn to an abstract idea, and thus are unpatentable subject matter under 35 U.S.C. 101, the Supreme Court did not decide whether business methods or software per se were precluded from patentability.

Original post blogged on b2evolution.

MATTRESSES.COM-fort?

alc — Tue, 10 Nov 2009 22:07:48 +0000

In re 1800mattresses.com ip, LLC, 2009-1188 CAFC Slip Op., Nov. 6, 2009. The decision of the USPTO Trademark Trial and Appeal Board (TTAB ) finding "MATTRESS.COM" generic was affirmed.

Dial-a-Matress applied for the mark MATTRESS.COM for "online retail store services in the field of mattresses, beds and bedding." The registration was refused Dial-a-Mattress appealed to TTAB, which affirmed the refusal to register. The reasoning of TTAB was that "MATTRESS would be understood by the relevant public as the genus of service being offered, and that the top level domain ".COM" would be recognized by consumers as a commercial website offering retail services featuring mattresses. TTAB rejected the argument that ".com" somehow evoked the words "comfort" or "comfortable." Because the addition of ".COM" did nothing to create additional meaning, TTAB affirmed the examiner's rejection.

Original post blogged on b2evolution.

Failure to disclose algorithm renders claim indefinite, or in the alternative, not enabled -- BPAI

alc — Tue, 13 Oct 2009 16:20:18 +0000

In Ex parte Rodriguez et al., Appeal 2008-000693, Oct. 1, 2009, the Board of Patent Appeals and Interferences (BPAI) reviewed final rejections by an Examiner to a patent application relating to a first, apparatus, a method, and a computer readable medium to (a) generate a random system configuration file of a structurally variable and complex system; (b) build a system level netlist in response to the random system configuration file; (c) verify the structurally variable and complex system in response to the system level netlist; and (d) provide automatic random verification of the system in response to the random system configuration file. The Examiner had found each of the limitations in the pending claims was described in a prior art application. The BPAI overturned the Examiner's rejection but raised new, non-final grounds for rejection in this precedential opinion.

Original post blogged on b2evolution.

Patent applications must meet the enablement and utility requirements as of the application's filing date

alc — Sun, 27 Sep 2009 04:50:40 +0000

In In re '318 Patent Infringement Litigation (Fed. Cir. 2009) Slip Opinion, 2008-1594, 2009-1070, a three-judge panel of the Federal Circuit held that a drug not known at the time of filing to be effective in treating Alzheimer's disease was not patentable on its filing date of January 15, 1986, even though affirmative results from tests were available by July 1987, after the patent was issued.

Original post blogged on b2evolution.

Copyright registration date is not conclusive evidence that reference is prior art

alc — Sat, 26 Sep 2009 01:51:24 +0000

Dr. Lister, a Ph.D. clinical psychologist and avid sportsman discovered that casual golfers had difficulty with the ordinary requirement that, beginning on the second stroke on each hole, the ball must be hit lying directly on the ground. He wrote a manuscript that described a method of playing golf in which recreational golfers were permitted to tee up their balls on every shot except from hazard areas or on the green.

Without the aid of a lawyer, Dr. Lister then tried to obtain intellectual property protection for his method of playing golf. He registered his manuscript in the Copyright Office on July 4, 1994, and the Copyright Office issued a certificate of registration on July 18, 1994. It was only later that Dr. Lister discovered that he needed a patent rather than a copyright to protect his invention, son, on August 5, 1996, he filed patent application in the United States Patent and Trademark Office (USPTO). After some 13 years of prosecution of the patent application and a Board of Patent Appeals and Interferences (BPAI) decision upholding the examiner's rejection of the patent application, the case was appealed to the U.S. Court of Appeals for the Federal Circuit.

The Federal Circuit was left to determine the type and quality of evidence needed to prove whether the copyrighted manuscript was "publicly available" on or before the critical bar date, i.e., one year before the filing of the patent application.

Original post blogged on b2evolution.

His house was his patent castle...

alc — Fri, 25 Sep 2009 21:12:03 +0000

The loss of his fortune did not shake Tackleboy's devotion to patents; they became at once the joy and torment of his life. At anything new his eyes would brighten like an antiquary's at anything old. His house was his patent castle, so full of conveniences and contrivances that nobody but himself could have lived in it, and even he lost himself at times in complications to secure simplicity, and facilities that defeated expedition. It was pleasant to see him dine. His table was a torment by reason of its patented aids to enjoyment. What with his radial carver, iris spoon-warmer, and folding cruets; his self-acting gravyhelper, excelsior asparagus-tongs, and duplex plate-warmer; his royal potato-parer, imperial cucumber-slicer, and oriental digester, to say nothing of patent wine-lifts, corkscrews, oxygen-generators, appetite-stimulators, and the rest of it, dining became a burden, and dessert a weariness of spirit. It is not too much to assert that Tackleboy never got his dinner, by reason of his innumerable appliances for getting it.

From "A Victim of Patents," Belgravia; A London Magazine, conducted by M.E. Braddon, Vol. IX, Oct. 1869, p. 53.

Original post blogged on b2evolution.