Derek A. Lightner, Ph.D.
Associate
Tel (703) 412-6467

Derek A. Lightner, Ph.D.

Associate

DEREK A. LIGHTNER, Ph.D., is a patent attorney in the firm’s Chemical Patent Prosecution group, focusing on patent preparation and prosecution. Dr. Lightner’s deep understanding of chemistry and hands-on experience with complex chemical technologies enhances his ability to effectively prosecute comprehensive patents for his clients.

Prior to joining the firm in 2010, Dr. Lightner completed his doctoral studies at the Technische Universität in Vienna, Austria. There he worked on the synthesis and synthetic scale-up of bridged aliphatic heterocycles relevant in the pharmaceutical industry in collaboration with a local start-up drug company and a molecular modeling group in Halle, Germany. 

His master’s studies in Polymer Science in Berlin and Potsdam, Germany, involved research into industrial polymers and processes, as well as polysaccharide chemistry. Dr. Lightner also has experience in pyrrole and tetrapyrrole chemistry from his undergraduate research.

While attending law school, Dr. Lightner interned for two summers at intellectual property law firms in Munich, Germany. He is proficient in German.

Board Again Reverses An Obviousness Rejection For Examiner’s Failure To Provide Adequate Rationale For Substituting Substances Having Different Functions
Friday, May 11, 2012

In Ex parte Fulton (Appeal 2011-001486, in U.S. Serial No.

Board Affirms Obviousness of Overlapping Ranges
Friday, March 02, 2012

In Ex parte Bouzekri (Appeal 2010-005203), the BPAI affirmed the examiner’s finding of obviousness and reiterated some important points which often arise in patenting:

  • overlapping ranges are prima facie obvious;
  • preferable ranges are not dispositive of non-obviousness (e.g., do not necessarily provide a “...
Ex parte Uchida
Monday, July 11, 2011

In Ex parte Uchida (Appeal 2011-000486 of Appl. Serial No. 11/731,595), the questions before the board were (1) the broadest reasonable interpretation of the claimed range of “about 0.01 μm to about 40 μm” and whether that overlapped with a range of “between about 50 and about 1000 μm” in the prior art and (2) whether the Declaration...

In re Kao
Thursday, May 26, 2011

In re Kao, ___ F.3d ___ (Fed. Cir. 2011) (Appeal 2010-1307 from BPAI decision in U.S. Application Serial No. 11/680,432; Appeal 2010-1308 in Serial No. 12/167,859; and Appeal 2010-1309 in Serial No. 11/766,740), pertains to a group of three appealed cases from the BPAI following the BPAI’s affirmations of the Examiners’ conclusions of...

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