Author: LSE
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Obviousness is not established by addressing a problem the primary reference already solves
If the prior art already addresses the motivation to combine, you have a hindsight-based rejection.
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That’s not my invention
Why patent applications sometimes includes things those skilled in the art my think have nothing to do with the “invention.”
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Section 101 at the PTAB – Slot Machines and Technical Advantages
The PTAB uses the specification’s explanation of technical issues addressed by the invention to find that the claims overcome Section 101 by integrating an abstract idea into a practical application under the USPTO’s Revised Eligibility Guidelines.
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Hindsight and Citation to Evidence in the Record
If you allege an examiner is using advantages from the specification, make sure you cite to specification for support.
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Your Claims are Too Broad
There is no such thing as “broad claims” or “narrow claims” in the abstract. It’s all relative to the state of the art.
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New Informative PTAB decisions on Design Choice
Design Choice – compare and contrast two new informative decisions from the PTAB.
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