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Home > Nanotechnology Columns > Magda Carvalho PhD, JD

Magda Carvalho PhD, JD

June 11th, 2011
In Ex Parte Vyas et al: A Coating thickness measured in nanometers will not necessarily contain nanopores.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

The technology of fuel cell only requires hydrogen and oxygen gas or air fuel to generate electric power. This case before the BPAI involved bipolar plates for a fuel cell hydrophilic that contain nanopores. The BPAI concluded that a reference disclosing a coating layer with nanosized thickness does not necessarily imply that it contain nanopores. Read the Whole Article


May 15th, 2011
Inter Partes Reexamination: Substantial New Questions of Patentability Attaches to a Particular Rejection.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

In the area of reexamination, presentation of a substantial new question of patentability (SNQ) is still a hot topic. A recent BPAI decision reiterated the rule about jurisdiction to review an Examiner's denial of SNQ. The invention pertains to diabetes care involving electrochemical sensors. Read the Whole Article


April 14th, 2011
Non-statutory obviousness-type double patenting
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

Non-statutory obviousness-type double patenting was judicially created to remove the unjust extension of patent rights beyond the 20 year monopoly. This type of rejection is overcome by a Terminal Disclaimer as seen in a case before the BPAI about an invention directed to nanofabrication of ferritin. Read the Whole Article


January 24th, 2011
Nanorobotics out of DNA and patentability
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

Scientists have been building nanorobotics out of DNA. Recently, scientists have expanded DNA nanorobotics from "walking nanorobots" to "cargo nanorobots" and have create a system that promotes their interaction. However, lack of practical utility has being the basis for rejection of some patent applications. Read the Whole Article


December 17th, 2010
Nanotechnology: The Reply Brief
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

On appeal briefs to the BPAI the Appellants must present a showing of good cause as to why the arguments were not submitted earlier even if Appellant's arguments are in the Reply Brief in conformity with 37 C.F.R. § 41.37(c)(1)(vii). Read the Whole Article


November 6th, 2010
Nanotextiles: Obviousness Barrier to Patentability
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

Nanofiber scientists that engage in continuing research based on published data must design around to distinguish their inventions over prior art references for future patent protection This is because under patent law the non-obviousness requirement mandates that one having ordinary skill in the art would not have thought of the invention. Read the Whole Article


October 12th, 2010
Excitation energy: Is the written description enabling?
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

The patent application covers technology relating to the propagation or distribution of excitation energy (arrangement of self resonant bodies). On appeal to the BPAI the Applicants lost the case due to their failure to show a connection between the discussed theory set in the written description and the structure recited in the pending claims that would enable a skilled artisan to practice the invention without undue experimentation. Read the Whole Article


October 16th, 2009
Nanotechnology: BPAI Brand New Rejection.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

The Board of Patent Appeals and Interferences (BPAI) did not speculate on the meaning of Claim language of a patent application concerning fuel cell electrode. Instead, the Board applied its power to enter a new ground of rejection. It should be understood, however, that this decision does not reflect on the merits of the underlying rejection.(1) Read the Whole Article


August 20th, 2009
Biosensors: DNA Methylation
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

There is an urgent need of new technologies in early cancer detection. DNA methylation in the promoter region of tumor suppressor genes warrants investigation for its likely role on tumors. A patent application describes methods that use nano transistor surfaces to detect DNA methylation in biological samples (label free). The method is simple and ultra-sensitive (no false positives). Read the Whole Article


July 16th, 2009
Bioelectronics: Biosensors and G Protein-Coupled Receptor
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

The field of bioelectronics exploits biology in conjunction with electronics. A patent application describing a real-time nano-biosensor used as an analytical device of a sensing mechanism—olfactory—captures a new concept of nano-bioelectronic noses. Read the Whole Article


June 1st, 2009
Shock Waves: Transfection of Biological Cells.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

An innovate application in drug delivery takes advantage of the superior ability of shock waves to produce transfected cells. Particularly, a recent patent application described the use of shock waves as a means to transfect biological cells with extraneous deoxyribonucleic acid (DNA) and other materials with minimal adverse effects. Read the Whole Article


April 7th, 2009
Patenting Cavitation Technology
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

Cavitation technology—behavior of voids or bubbles in a liquid—offers tremendous promise for humanity. It is a growing technology as seen by the race to patent anything related to cavitation since weapons, treatment of wrinkles to a cleaner environment. Read the Whole Article


February 20th, 2009
Undue Experimentation: On DNA/Polyaniline Nano-Biosensors.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

Co-author Nice Shindo, Ph.D.
Bringing polyaniline into the chemical biosensor field was a major breakthrough for nanotechnology, but it is still a "nascent technology." Patent law requires that an artisan be capable of utilizing the invention without undue experimentation. Accordingly, a patent application only showing that the properties of DNA/polyaniline complexes can be used as biosensors—without showing exactly how—fails the enablement requirement.
Read the Whole Article


December 6th, 2008
Patenting a Novel Industrial Method for Hydroxyapatite Nanoparticles.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

Co-author Dr. Jose Carlos Lopes, Chairman.
www.fluidinova.pt/
Novelty and nonobviousness are two legal requirements to be met for an innovation to be patentable. These requirements are required to ensure that not just any innovation is patentable. Nanosized Hydroxyapatite is in great demand due to its medical use. It is an area where possibilities of novel methods are not exhausted yet. An example of these novel possibilities being given legal effect is a patent granted for a novel method of producing Hydroxyapatite nanoparticles. The invention tries to match natural Hydroxyapatite. This is a significant development for biopharma which is seeking ways to more effectively incorporate Hydroxyapatite into a wide range of biomedical uses. Read the Whole Article


November 1st, 2008
Obviousness: On carbon nanotubes
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

Carbon nanotube inventions have succeeded as innovative and hundreds of patents have been awarded. But as claimed inventions accumulate, issues of patentability relating to obviousness inevitably arise. Specifically, methods that produced end-derivatized single-wall carbon nanotubes could not successfully stand up to 35 U.S.C. § 103 rejection at the Board of Patent Appeals and Interferences (BPAI). Read the Whole Article


October 3rd, 2008
Ex parte Reexamination and Nanotechnology.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

We should not take for granted that just because a patent has issued it is valid. Patent validity may be resolved in a reexamination process and anyone can request it. When a patent owner becomes aware of a problematic reference that may have an impact on the validity of a patent, he or she can bring that prior art and propose amendments to get around the prior art to the attention of the U.S. Patent and Trademark Office (PTO) to get a second review of the patent and hopefully a second stamp of approval. It is more difficult to break a patent in court if the PTO has already examined the prior art. The major advantage in choosing to seek a reexamination over litigation is that the reexamination costs in terms of time and money are much lower. But reexamination is limited to the review of published documents; other grounds of invalidity such as lack of enablement, prior use, or form requirements are not considered. The issue that the requester has with the patent is its broad and sometimes sweeping coverage of a very familiar application of the technology. In nanotechnology, this question highlights the complexities of the subject matter of a technology where definitions are still unsettled. Read the Whole Article


August 25th, 2008
Nanotechnology and Claim Construction: DuPont v. Cabot.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

What does that claim mean? Claim construction is about giving a meaning to each disputed word or phrase in a claim; it is a job for the court. Claim construction disputes arise over the definition of technical terms, grammatical and semantic interpretation. Certain words ordinarily used in claims have acquired specific legal meaning which may be different from common usage. Claim construction is unpredictable. But its outcome usually determines whether the plaintiff has a valid claim, and whether the defendant infringed the patent. By analyzing how courts have decided claim constructions, patent practitioners and inventors learn how to prepare and prosecute better patent applications for appropriate claim construction.

On July 25, the United States District Court for the District of Arizona issued its patent claim construction in the ongoing patent infringement litigation of Cabot Microelectronics' against DuPont Air Products NanoMaterials, LLC.(1) This case has garnered attention since it could be one the first major patent litigation in the field of nanotechnology. This column analyzes the District Court's claim construction of a number of disputed terms and phrases involving five patents owned by Cabot. Also, in this column the European approach to claim construction is separately discussed by a French patent practitioner, Murielle Derrien.
Read the Whole Article


July 29th, 2008
Written Description Requirement in Applications Involving Nanotechnology
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

Section 112 of the 1952 Patent Act requires that a patent application contain a Specification. Section 112 ¶ 1, the written description clause, states that the Specification should contain a "written description of the invention and of the manner and process of making and using… to enable a person with ordinary skill in the art to make and use the invention." The line between the written description and enablement requirements seems unclear. However, the Federal Circuit has stated that the written description clause has two separate and distinct requirements: enablement and written description. (1,2) So far this is the law; and the Patent Office follows it.(3,4) Nonetheless, application of the written description clause is "puzzling," and not well settled in the area of nanotechnology. (5) For nanotech inventions, it may even be challenging to provide an adequate disclosure because of their sophistication, unpredictability and immaturity. Adding to the "puzzle" is the controlling precedent that the disclosure required to meet the written description requirement varies with the nature of the invention. (6) Is the concern about the written description justified? Well, the written description requirement is also a defense to an infringement suit that the Specification did "not contain the whole of the truth concerning his invention."(7) Read the Whole Article


June 27th, 2008
Obviousness: KSR rationale applied to nanotechnology.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

There are three statutory requirements for patentability: an invention must be new, nonobvious, and useful. This column focus on the requirement of nonobviousness. Obviousness rejections are the most prevalent at the United States Patent and Trademark Office (USPTO). Simply put, an "ordinary innovation" the kind an artisan could have foreseen without any toiling is not patentable. The nanotechnology industry, much of whose value derives from patents, needs to take note of this not so small issue. In 2007, the Supreme Court decision in KSR v. Teleflex has introduced new challenges for passing the obviousness test.(1) Six months after KSR's decision, the USPTO published new obviousness rules, and its impact on patent prosecution is now coming to light.(2) In nanotechnology some of the patentability issues relating to post-KSR rationales come from creation of a new nano-sized material by simple substitution of familiar materials in known methods or devices. The creation of a new nano-sized material is awesome. The trouble arises when the Examiner issues a final rejection of the claim based on post-KSR ruling. That is not the end of the issue, however. The rejection is appealable to the Board of Patent Appeals and Interferences (Board).(3) However, the Board has warned of a strict application of KSR on nanotech patent applications: that simply substituting "familiar materials" to do the same job that the prior art does may be obvious; and a conclusion of obviousness requires a showing that there existed a "reasonable expectation of success." Read the Whole Article


May 30th, 2008
Patent Claiming Nanotech Products Only By Its Physical Structure.
Magda Carvalho
Patent Attorney , Patent Law at M. Carvalho

At present, as opposed to the recent past, (1) Nanotechnology can challenge patent practitioners to meet the task of showing novelty, a statutory requirement for patentability under 35 U.S.C. §102 (anticipation). (2) The challenge grows as Nanotechnology's focus on inventive aspects further reduces the size of a previous nanometer scale product and the novelty arises from this change in size. A change in size of this nature will not alone be novel if only the patent claim language covers the same physical structure of the previous invention. In this case, the previous invention may be used as prior art to defeat a patent application claim based on anticipation. (3) So, how does one successfully assert a patent claim directed solely to the physical structure? Opinions from the Board of Patent Appeals and Interferences (Board) have provided some helpful insight. Read the Whole Article

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