Author: LSE
-

Anticipation Short Cuts
Do not let examiners take short-cuts with anticipation. Even if a single reference shows all claimed elements, if it does so only by pointing to different embodiments, a case of anticipation has not been established. Specifically, it is well settled that combining separate embodiments of a single reference is improper without some teaching to do…
-

Creating Issues Where There are None
Examiners sometimes focus on creating uncertainty rather than reducing it.
-

Prior Art Date Manipulation on the Internet
Many internet publications are susceptible to date manipulation – yet examiners still cite them.
-

Mastercard saves dependent claims in Section 101 PTAB Appeal
This Mastercard Section 101 PTAB decision illustrates many important issues on how to handle subject matter eligibility.
-

Claims are not Species
Understanding the USPTO’s terminology help identify easy ways to push back against restrictions.
-

USPTO Section 101 Guildelines Have Teeth
Section 101 at the PTAB – how the integration into a practical application plays out.
-

-

The Art of the Background
IBM comes up short in a Section 101 PTAB appeal, despite the new guidelines.
-

PTAB rejects eBay Search Navigation Patent Application
Don’t give the PTAB an easy way to side step issue by arguing claims as a group when their limitations are different.
-

Fire quickly or keep your powder dry?
Selecting the right time to petition a restriction has many factors.