What happens when an examiner uses the wrong embodiment to broaden your claims? A recent PTAB decision shows why that move violates basic claim construction principles—and how to spot it early.
Drafting patent specifications for a global audience can hide serious U.S.-specific risks. This article uses a recent PTAB decision to show how minimal disclosure and functional claiming—especially in software cases—can lead to an unfixable Section 112 failure in U.S. prosecution.
The PTAB is not hostile to creative advocacy—but it is unforgiving of arguments that do not conform to its doctrinal templates. Read about a case that reminds us of the fact that before an administrative agency, even a good argument can fail if it does not look like the right argument.
This Thanksgiving, I’m grateful for PTAB decisions that keep obviousness grounded in evidence. In a recent turkey-decoy appeal, the Board rejected an examiner’s broad “manufacturing cost” motivation as unsupported. A downward-facing tail may fool a gobbler, but vague rationales won’t fool the PTAB.
Claiming what does not happen can have issues, but there are options to making it work. Read about a recent PTAB decision illustrating one possible approach.
A recent PTAB decision highlights a common pitfall in obviousness practice — focusing on the wrong reference when arguing about modification of a reference making it unfit for its intended purpose.
What happens when an examiner uses the wrong embodiment to broaden your claims? A recent PTAB decision shows why that move violates basic claim construction principles—and how to spot it early.
Drafting patent specifications for a global audience can hide serious U.S.-specific risks. This article uses a recent PTAB decision to show how minimal disclosure and functional claiming—especially in software cases—can lead to an unfixable Section 112 failure in U.S. prosecution.
The PTAB is not hostile to creative advocacy—but it is unforgiving of arguments that do not conform to its doctrinal templates. Read about a case that reminds us of the fact that before an administrative agency, even a good argument can fail if it does not look like the right argument.
This Thanksgiving, I’m grateful for PTAB decisions that keep obviousness grounded in evidence. In a recent turkey-decoy appeal, the Board rejected an examiner’s broad “manufacturing cost” motivation as unsupported. A downward-facing tail may fool a gobbler, but vague rationales won’t fool the PTAB.
Claiming what does not happen can have issues, but there are options to making it work. Read about a recent PTAB decision illustrating one possible approach.
A recent PTAB decision highlights a common pitfall in obviousness practice — focusing on the wrong reference when arguing about modification of a reference making it unfit for its intended purpose.
Mr. IP Law 