January 2013 Prosecution Group Luncheon

1. Prosecution Group Luncheon
January 2013

2. Nice Agreement 10th ed. Version 2013
• developed to classify, most entries are not
sufficiently definite to use in an identification of
goods and/or services.
– A finished product is in principle classified
according to its function or purpose.
– Services are in principle classified according to
the branches of activities specified in the
headings of the service classes.

3. Review of Comments Regarding Amending the First
Filing Deadline for Declarations of Use
• 8/16/12: the USPTO invited public comment on a potential
change to amend the first deadline for Sect. 8
Declarations of Use, to between the third and fourth years
after registration
• The comments reveal concerns regarding registrations
that are no longer in use for some or all of the goods/
services listed, but the predominant sentiment was that
the deadline should not be shortened.
• the USPTO is currently conducting a post-registration pilot
program to gather information regarding the accuracy of
identifications of goods/services for registered marks

4. Medical Purchasers are Sophisticated?
• TTAB Board reversed a refusal to register
OVATION for vascular stents over OVATION for
hip joint prosthesis.
• The identify of the marks and the inherent
strength of the cited mark weighed heavily
against Applicant

5. • involved goods are "relatively unrelated." They
are technologically distinct, cannot be substituted
for each other, and are not used together in a
single medical procedure. Although a medical
products company might produce both products,
nothing in the record indicated that these goods
are more closely related than they would be to
other medical products.
• TTAB: “any reasonable decision to purchase
goods of applicant or registrant would in all
likelihood involve a person having specialized
expertise in orthopedic or vascular medicine, as
appropriate.”
• In re TriVascular, Inc., Serial No. 77941535
(November 27, 2012) [not precedential].

6. YouTube isn’t in Commerce?
• App sought to register ACTIVE REASONER
for "audio recordings featuring music" in class
9. His specimen consisted of a screen shot of
his YouTube webpage
• EA refused the specimen as failing to show
the mark for goods in commerce.
• TTAB aff’d: "in the absence of a 'download'
link or the equivalent thereof, applicant’s
specimen on its face fails to show use of his
mark in commerce for the identified goods."
• In re Rogowski, Serial No. 77083475 (December 11,
2012) [precedential].

7. Tinseltown is not Geographically Descriptive
• EA refused TINSELTOWN (for clothing) as geographically
descriptive, (a nickname for Hollywood)
• TTAB: "Tinseltown" refers both to the Hollywood section
of Los Angeles and to the motion picture industry for
which it is famous.
– In fact, the examining attorney's evidence "suggests
that it is the latter meaning, namely, that of the movie
industry, that may be the primary denotation of the
term Tinseltown."
• EA failed to establish that the primary significance of
TINSELTOWN is a geographic location.
• (Precedent: HOLLYWOOD previously found not merely a
geographic location)
In re Topson Downs of California, Inc., Serial No. 85067696 (December
4, 2012) [not precedential].

8. PTO Requesting Comments on “Quality”
• “[F]urthering the Office’s dialog with the public
about ways to enhance patent quality”
• Identification of “potential practice changes
that applicants can employ to augment the
quality of issued patents,” inviting comment
• Two particular headings
– Clarifying the Scope of Claims
– Clarifying Meaning of Claim Terms in
Specification

9. PTO Requesting Comments on “Quality”
• Clarifying Scope of Claims
– Standardized claim template
– Identify support for limitations (chart, template)
– Note if examples are limiting or illustrative
– Expressly identify MPF elements, structures/acts
– Particular notation systems for computer-
implemented subject matter
• Clarifying Meaning of Claim Terms
– Give scope/technical meaning of terms of degree
– Include a glossary of terms
– Designating default dictionary(s) for ascertaining
meaning

10. Technical Amendments to AIA (Jan. 14, 2013)
• Technical changes re: program for covered business
method patents and joinder of parties
• Accelerates bar on using failure to obtain the advice
of counsel to prove willfulness/inducement
• Inter partes review available for first-to-invent patents
ineligible for post-grant review
• Revises filing deadline for inter partes review
• Extends time for filing inventor’s declaration/recorded
assignment to issue fee payment date
• Modifies requirements and time periods for activities
relating to patent term adjustments
• Modifies requirements for petitions for derivation
proceedings, delineates criteria applied to deem
application as “earlier” with respect to an invention

11. Written Description—Design Patent Edition
In re Owens (Fed. Cir. 2013) (decision pending)
• D531,515 issued for mouthwash bottle in 2006
• CON filed, drawings amended with ghost-lines for most
of design (solid lines remained for portion of surface)
• PTO rejected CON per written description requirement
– Not apparent from original specification that inventor in
possession of invention as now claimed
– Applicant: area claimed was in the original application
– PTO: nothing in original application indicates that portion
now claimed could itself be a design
• Rule: one can amend by "ghosting" solid lines and vice-
versa, but cannot partition areas or define new portions

12. Written Description—Design Patent Edition
D531,515
Continuation

13. Fighting Obviousness Decisions
• In re Chevalier (Fed. Cir. 2013) (nonprecedential)
• FC affirms obviousness, rejects position that combination inoperable
• Familiar refrain: issue not whether “references could be physically
combined but whether the claimed inventions are rendered obvious
by the teachings of the prior art as a whole"
• If each element known, obviousness requires finding that the
combination of known elements was obvious to POSA
• Each element in Ref. A, relationship among parts taught by Ref. B
• POSA motivated to modify because "would facilitate a more rapid
and more complete conversion from axial flow to radial flow"
• Applicant did not challenge that finding, admitted that relevant parts
of references are "recognized equivalents performing the same
function of converting axial flow to radial flow"