Author: LSE
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The Non-Obvious Balancing Act
Reasons for making and not making a proposed combination must be weighed against one another to determine obviousness.
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Exact Limitations Remain Even with “Comprising”
Transitional phrases are not “weasel words” so do not let examiners use them as such.
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Examiner Mis-Interpretations Must Be Addressed at the PTAB
It is important to provide evidence contradicting an examiner’s overly-broad interpretation.
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Directed To vs. Related To
Whether an invention is directed to or related to an abstract idea can make all the difference.
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Tough Examiners vs. Unreasonable Examiners
There is a difference. Read about some strategies for the latter.
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Configured To and Other Functional Claim Terms
Burden shifting and inherency interplay with functional claim language.
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Don’t leave the back door wide open – Examiner Citation of Additional Evidence
Be careful with examiner citations of additional evidence and inherency rejections under MPEP 2131 lurking in the background.
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The “Summary” in your PTAB Appeal Brief
Be careful in your PTAB appeal brief Summary – PTAB judges really do look carefully at how you map you claim elements to the specification.
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Merely simple, or elegantly simple?
The interaction between obviousness and simplicity can be counterintuitive for those not familiar with how inventors invent.