Author: LSE
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Claim Terms with No Teeth
Claim terms that appear to provide a frame of reference might require something more to carry weight at the USPTO.
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Obviousness with a Different Purpose
How having a different purpose can be used in forming arguments against obviousness at the USPTO.
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Printed Matter Doctrine and GUI Inventions at the USPTO
Some PTAB judges are already citing Bard as a way to reject GUI inventions.
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The Name of the Game is the Claim
Keep a sharp focus on the actual claim language to avoid making arguments that improperly assume a more specific claim scope than what is actually set forth.
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Anticipation by Happenstance
In re Schulhauser is being cited by the USPTO for more than the mere idea that conditional limitations can be ignored in method claims.
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Unnecessary Printing of Ribbon Copies
Many applicants do not want an automatic printed copy of their patent grant upon issuance. Is there a way to save some time, money, effort, and natural resources?
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Technical Reasoning in Obviousness
Do not underestimate the value of technical reasoning in the obviousness analysis.
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Drawing Objections on Appeal
It’s not the drawings in isolation when looking at 1.83(a) Drawing Objections.
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Speculative Obviousness
Sometimes examiners stretch things too far – read about a recent case discussing speculative rejections in the case of swim paddles.
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PTAB Precedential and Informative Decisions
Get your nominations ready! The USPTO is accepting them now..