Our law firm was founded by Marin Cionca, Esq., a registered patent attorney and degreed engineer. We are focusing on helping individual inventors, entrepreneurs, and small businesses protect their valuable intellectual property rights in patents, trademarks, and copyrights.
A government license that gives the holder exclusive rights to a process, design or new invention for a designated period of time.
A symbol, word, phrase, logo, or combination of these that legally distinguishes one company's product from any others
The ownership of intellectual property by the item's creator. Copyright law gives creators of original ideas, art, etc.
Our entrepreneurial, engineering, and legal experience enable us to have a unique understanding of the value of intellectual property, and the decisive competitive advantage, strong intellectual property rights may give to an entrepreneur or small business. In the same time, we understand very well the complexities, challenges, and the enormous dedication it takes to start, run, and grow a business.
We are committed to listen and to help by offering cost sensitive assistance with design and utility patent searches, patent prosecution - including provisional and non-provisional (utility) applications, trademark and copyright registrations, and much more.
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Flexible Fee Structures. We have designed flexible fee arrangements, which include flat fee, customized fee, and hourly fee options for patent and trademark services.
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Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899VERIFY
Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject Matter<p>by Marin Cionca and Iris Kim The Supreme Court’s decision in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. , (Alice) resulted in much confusion about whether software-related and computer-implemented inventions are patent eligible under 35 U.S.C. 101. Following this, in December of , the U.S. Patent and Trademark Office (USPTO) issued interim guidelines on patent subject matter eligibility. “Interim” may indicate that further guidelines are forthcoming. Until then, decisions by the Patent Trial and Appeal Board (PTAB or Board) are a useful source of guidance for what constitutes patent eligible subject matter. Drawing similarities between cases and the hypothetical examples provided by the USPTO can be helpful for patent prosecutors and examiners. The two-part test provided by the USPTO is a basic analysis tool, set forth in MPEP . Step 1 is to determine whether the claimed invention belongs to one of the four statutory categories of invention: a process, machine, article of manufacture, or composition of matter. If yes, Step 2 is to determine whether the claim is directed to a judicial exception, such as a law of nature, natural phenomenon, or abstract idea. Alice also provided broad examples of what may constitute an abstract idea: (1) fundamental economic practices, (2) certain methods of organizing human activities, (3) “an idea of itself,” and (4) mathematical relationships or formulae (Alice, 134 S.Ct. at ; ; ; ). Using these tests and guidelines, many claims were found by the Board and the Federal Circuit to be directed to patent ineligible matter under 35 U.S.C. 101. However, in two recent cases, the Board reversed the examiners’ decisions that the claims were directed to unpatentable abstract ideas, even though in the majority of appeals since Alice, the examiners’ rejections were affirmed. In Ex Parte Cyriac J. Wegman III, WL 5578687 (Wegman, PTAB Sep. 18, ), regarding U.S. patent application number 12/765,954, the Board agreed with the Appellant that claim 1 is patentable subject matter. The Examiner had rejected the claims under 35 U.S.C. 101 for being directed to an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness. The representative claim, claim 1, is reproduced below: 1. A method for providing an empirical model of a defined space comprising steps of: a. defining the desired space; b. describing at least a portion of the defined space with multiple correlated dimensions; c. reducing the dimensionality of the described portion; d. combining the described portion with the remaining portion of the defined space; e. creating a hypothetical model of the defined space; and f. calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects. In their analysis of the patentability of claim 1, the Board employed the new interim guidelines issued by the USPTO following the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. () and Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. (). The Appellant argued that claim 1 is directed to a method, and thus, satisfies step 1 of the two-step test, which the Board agreed with. The Board then also agreed with the Appellant that claim 1 is much more specific than a broad abstract idea, as argued by the Examiner. The Appellant argued that claim 1 requires “calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.” Therefore, the method claimed involves the performing of an analysis, and is not simply an abstract idea. Next, in Ex Parte Bruce Gordon Fuller, Brian Alexander Wall, Kevin George Gordon, Mark David Hobbs, and Mohamed Salehmohamed, WL 3467122 (Fuller et al., PTAB May 28, ), regarding U.S. patent application number 12/765,954, the Board again agreed with the Appellant that the subject matter was patent eligible. The Examiner had rejected claims under 35 U.S.C. 101 for being an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness. An exemplary claim, claim 1, is reproduced below: 1. A method of associating a first variable and an event on a display, the method comprising: displaying the first variable relative to a time period on the display, resulting in a graph of the first variable; receiving first user input from a graphical indicator device, wherein the first user input comprises an instruction to position an indicator over a portion of a data curve of the graph corresponding to a time period of interest to the user; in a processor, determining if the event occurred during the time period of interest; and displaying the event on the display nearby the portion of the graph if the event occurred during the time period of interest. Of note is that both of these sets of claims from Wegman and Fuller et al. involve a physical aspect. A calculation or analysis is performed in the first, and a graph display is required in the second. In Wegman, the Board stated that the method “requires performing an analysis of objects, either actual or virtual, and calculating coefficients for the model based upon that analysis. We find that these steps are sufficiently concrete as to set them outside the broad definition of abstract idea as set forth in Alice,” (Wegman, PTAB). In Fuller et al., the Appellants argued that the physical elements present “allow a user to view a graph and an event occurring during a time period of interest on the display if the processor determines that an event occurred,” and “these elements provide sufficient structure to prevent the method steps from being interpreted as too abstract,” (Fuller et al., PTAB). The Board agreed with the Appellants’ arguments, which provides a common thread between Wegman and Fuller et al., the physical components of each of the claims. Later, these two examiners’ rejections were upheld on other grounds, but the opinions of the Board here still offer some insight into the type of claim language and subject matter that the Board finds patentable subject matter. http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013008168-09-18--1 </p> <p>http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013000762-05-28--1</p>More
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial Industryby Marin Cionca and Iris Kim To be eligible for Covered Business Method (CBM) review, a patent must first claim a method or corresponding apparatus used in the practice, administration, or management of a “financial product or service” (37 C.F.R. 42.301 (a)). Second, it must not qualify for the “technological invention” exception, which refers to patents that claim a novel, unobvious technological feature solving a technological problem. A patent only needs one claim that meets these requirements to qualify for CBM review. In a recent decision, however, the Patent Trial and Appeal Board (PTAB or Board) decided that a claim may qualify for CBM review under Section 18 of the America Invents Act (AIA) and meet the “financial product or service” criteria even if it does not “particularly target the financial industry,” Symphony Health Solutions Corp. v. IMS Health, Inc., Case CBM2015-00085 (Patent 8,473,452 B1) (PTAB, Sept. 10, 2015). In Symphony, the Petitioner had filed to institute a CBM review of claims in the ‘452 patent. This patent relates to a “system and method for gathering and analysis of health-care related data as well as techniques for de-identifying individuals from pharmaceutical data, in order to maintain privacy” (Symphony, PTAB). The patent teaches that laws were passed to prevent personal information from being transmitted with health care data, but that it is still important to be able to associate records. Therefore, the ‘452 patent is related to a system in which identifying information is removed, and the non-identifying information is then used for marketing researching and other purposes. What is of note is that the ‘452 patent owner argued that this patent does not “particularly target the financial sector.” However, according to the Board, the ‘452 patent qualified for CBM review because the “challenged claims recite a system and method used in the practice, administration, or management of financial services and products.” Additionally, because the system helps to aggregate and organize data for marketing research, it was disclosed that the system could “help make business decisions,” (Symphony, PTAB) such as in sales. An implication of this decision is that a larger group of patents may be eligible for CBM review than it was previously thought, and the definition of a CBM review-eligible patent is broader than it may seem at a first reading. Even patents that do not “particularly” target financial institutions or sectors may be eligible for CBM review.More
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?When Is a Thesis Prior Art? by Marin Cionca and Iris Kim Two decisions by the Patent Trial and Appeal Board (PTAB, or Board) addressed how theses could be qualified as prior art, and the ways in which that qualification could be challenged. GlobalFoundries U.S., Inc. et al. v. Zond, LLC, IPR2014-01086, Paper 36 (GlobalFoundries, Aug. 14, 2015), relating to U.S. patent number 7,147,759, involved the evaluation of a Russian language doctoral thesis Mozgrin, which had been catalogued at the Russian State Library. In this Final Decision, the Board addressed the issue of whether the Mozgrin thesis is prior art under 35 U.S.C. 102. A determination such as this one must be done on a case-by-case basis, by looking into the facts relating to the reference in question and its disclosure to the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” Mozgrin is a doctoral thesis originally published in 1994, and GlobalFoundries, the Petitioner, provided a copy of the catalog entry for it at the Russian State Library along with a certified English translation. The thesis contained an imprint date of 1994 or at least 1995, reading, “Catalog of Dissertations in Russian (since 1995).” However, Zond, the Patent Owner, argued that this was insufficient evidence that Mozgrin was actually catalogued on that date. The Board found GlobalFoundries to be persuasive, because although “evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination. See Hall, 781 F.2d at 899” (GlobalFoundries, PTAB), the critical date being September 30, 2002. Since Zond was unable to give sufficient explanation or evidence otherwise, such as why there would exist a delay of seven years for cataloguing a thesis, the Board agreed with GlobalFoundries. Zond did also offer an argument that, even if Mozgrin had been catalogued, GlobalFoundries “would not have demonstrated that the thesis could have been obtained by any interested person outside of Russia or the countries under Russia’s control.” The Board called this argument “misplaced,” stating that there would have been “sufficient accessibility to interested persons exercising reasonable diligence.” The Board observed that Mozgrin “was cataloged and indexed in a meaningful way, by the author’s name, the IPR2014-01086 Patent 7,147,759 B2 44 title of the thesis (“High-Current Low-Pressure Quasi-Stationary Discharge in a Magnetic Field”), and the subject matter of the thesis (“Plasma Physics and Chemistry”)” (emphasis added). In contrast to this decision, the Board also made a decision relating to a thesis that had not been catalogued or indexed in a meaningful way. Friendfinder Networks Inc. v. WAG Acquisition, LLC, IPR2015-01033, Paper 8 (Friendfinder, Oct. 19, 2015) relates to U.S. patent number 8,327,011. The Petition provided Su, a thesis submitted to the Department of Computing and Information Science at Queens University in Ontario, Canada in September of 1998. The thesis bears a copyright notice of 1998, and the Petitioner asserted that Su was published and available at the National Library of Canada in 1999. “However, Patent Owner contends that Petitioner has not met its burden to show when Su became publicly accessible and, therefore, Su has not been shown to be a prior art printed publication,” (Friendfinder, PTAB). This due in part to the Patent Owner’s argument that it is unclear whether Su was available beginning on the critical date of July 18, 2008, and unclear when Su was “accessible in a searchable or indexed manner, such that it could be located by persons interested and ordinarily skilled in the subject matter or art using reasonable diligence.” Again, the Board referenced Kyocera Wireless, in making their determination of whether a reference is a printed publication. In previous cases, a copyright notice has been used as a prima facie evidence of publication. However, such as in this case, “in the absence of further evidence, a copyright notice may not be determinative.” As such, the Petitioner acknowledged that Su was not published until 1999; therefore, the copyright notice posted on Su holds “no weight on the issue of public accessibility” (Friendfinder, PTAB). The Petitioner provided a “photograph of the microfiche copy of Su,” “a photograph of an envelope in which the microfiche is stored,” and an “index microfiche.” Unfortunately for the Petitioner, the envelope photograph displays only “Jan–Jul/Aug 1999 ISSN 0225-3216 Index A Authors Titles Series.” The Board stated that Su was only indexed by “rudimentary indexing,” of the author’s name and only the first word of the thesis title, “Continuous,” “which is the only indexing that the evidence suggests may have occurred before the priority date and does not suggest its relevance to the streaming media network transport problem addressed by the ’011 Patent” (Friendfinder, PTAB). The Board then concluded with a statement that “such indexing would not provide a meaningful pathway to a researcher who was not previously aware of the existence of the thesis and was searching by subject matter” (Friendfinder, PTAB, emphasis added). These two decisions by the Board provide some guidelines for petitioners and patent owners alike. Providing a thesis as a reference may only be useful if one can also supply evidence of its availability, and that evidence should be focused around the critical date. Challenging of that reference may be done by evaluating the institution’s policies for cataloguing of theses, how indexing is actually performed by those institutions, and whether an interested person of ordinary skill would be able to find that reference. If the indexing of a thesis is only done in a rudimentary fashion, as in the case of Su, that thesis may not be qualified as prior art.More
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?<p><span style="font-family: Helvetica-Condensed; font-size: xx-large;"><span style="font-family: Helvetica-Condensed; font-size: xx-large;"><span style="font-family: Helvetica-Condensed; font-size: xx-large;"></span></span></span></p> <h2><span style="color: #000080;">An Innovator’s Dilemma: Design or Utility Patent?</span></h2> <p><span style="font-family: Helvetica-Condensed; font-size: xx-large;"><span style="font-family: Helvetica-Condensed; font-size: xx-large;"></span></span></p>More