While the USPTO’s top tips of presenting only the strongest arguments serves as a useful guideline, the nuances of ex parte appeals necessitate a more nuanced approach.

See just how far some PTAB judges will stretch the flexible KSR test with reasoning that breaks down the invention in such a way as to piece together reasons for sustaining a rejection with a large number of references.

It is important to recognize the potential weak points in drafting broad generic controller elements limited only by alleged function. It may be helpful to have backup illustrating how unique structure is achieved with specialized instructions stored in the controller.

I never had any idea what a music producer’s job was, but the title sounded pretty cool. Here is how one website describes the job: Essentially, the music producer oversees all aspects of the creation of a song or album. These can include choice of song, choice of musicians, instruments and vocalist(s) and how those…

When examiners improperly mix together different rationales into a single rejection, be ready to call it out and address each one separately to illustrate errors. Read about a recent case from Under Armor related to a footwear innovation and how the PTAB decided the issue.

Some examiner skirt the requirements of establishing continuity of disclosure when relying on a US provisional filing date. Read here how to push back.

Remember that when arguing about the proper scope of a claim term, it is important to consider the use of the disputed limitation in other claims.

Viewing things in hindsight can be irresistible to one’s human nature. Read about a case where the simplicity of an invention when viewed in hindsight was overcome at the PTAB with declaration evidence explaining the context of the invention.

A head-scratcher of a case comes down from the PTAB as to Section 101. Read about how a technical improvement that reduces memory requirements for a battery monitoring system is nevertheless deemed too abstract because the improvement memory allegedly merely benefited abstract math.

An example PTAB appeal illustrates the substantial hurdles to those trying to protect novel and inventive smartphone apps.