Author: LSE
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Handwaving Does Not Work For Anticipation
The PTAB confirms that it is improper for the Examiner to lump distinct components together and redefine them as one of the components.
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BRI – PTAB Confirms Unreasonable Interpretation Improper
Review an example PTAB decision illustrating how recent case law is having a major impact on whether rejections relying on broad, but unreasonable, interpretations will be reversed.
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Reversed, with authority
The PTAB shows that the notice requirement of Section 132 does have teeth. Read about a particularly egregious rejection from art unit 3747.
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Rejections based on the “Capable Of” Test
Do not let examiners slip a rejection by you based on the idea that the prior art is capable of performing claimed actions of a method.
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Tips and Tricks: Filing a PPH Request in the United States
PPH requests are a great way to move your case to allowance in the US. Learn some tips to make the process even smoother.
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Arguing Mutual Exclusivity With Respect to Restriction Requirements
Learn about mutual exclusivity and the variable definitions applied by the USPTO in restriction practice.
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Vanda, Part II
Following up on our previous post discussing Vanda, some interesting issues on conditional language are considered.
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Gorsuch – A Patent Attorney’s Hero
Oil States – Gorsuch, joined by the Chief Justice, writes a strong dissent that calls the majority’s reasoning into serious questions. Law students will likely be studying this one for years to come.
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Wonderland and Smith — Not so fast PTAB
The Federal Circuit gives more guidance to help reign in the Broadest Reasonable Interpretation.