Author: LSE
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Appeal Brief Rules – Who Enforces?
Can the examiner or examiner appeal panel object to the format of the appeal brief? Read on to find out and see what happens when they try.
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Double Standards at the USPTO
What happens when an examiner fails to follow the rules in an Examiner’s Answer? Read on to find out.
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The Sneaky Printed Matter Doctrine
It can show up even when you are not expecting it. Anytime an applicant is relying on a visual indicator’s function to differentiate the state of the art, be careful to consider the Printed Matter Doctrine.
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Wacky Examiner Interpretations Can’t Just Be Dismissed
Instead, it can be effective to address them head on and show how the rejection errs, even assuming the wacky interpretation is correct.
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Routine Optimization and the General Working Conditions of the Claim
Routine optimization rejections require that the examiner establish the general working conditions of the claimed invention are disclosed by the cited art.
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The Kardashians at the PTAB
In a design patent claiming a product, does prior art showing the same design, but for just a component of a product, anticipate? Read about Kim Kardashian West’s skim’s design at the PTAB and find out.
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Functional Claiming Dangers – When claim scope too closely matches the scope of disclosure in the specification
Written description issues around algorithms are complex. Read this latest post for some key drafting and prosecution tips.
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Consistency in Patent Prosecution
See why it is so important to think through your attacks on the prior art and ensure they are consistent with your own specification and figures.
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Less Obvious Can Still Be Obvious
Be careful not to fall into the trap of arguing that the examiner has not followed the most obvious solution in the prior art – such an argument says nothing about less obvious, but still obvious, approaches.