Author: LSE
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NXP Semiconductors handily overcomes “election by original presentation”
Do not let examiners get away with an improper restriction that limits your ability to make amendments that avoid the cited prior art.
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Why so difficult?
We review an example of how some examiners try every trick in the book in the hopes that the applicant will get frustrated and give up.
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New Ground of Rejection in Examiner’s Answer
The intricacies of a new ground of rejection explained.
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Control System Block Diagrams
There are numerous benefits to including a simple control system diagram in your patent application where applicable.
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Method claim steps in a patent application are presumed not to require a specific order
The PTAB does will not limit method claims to the listed order without a clear indication in the claims, and relying in antecedent basis alone will not be enough.
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Life Tech. Experiences the Practical Interplay Between Written Description and Prior Art Rejections
Do not let an Examiner muddy up a deficient prior art rejection with written description concerns.
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Ordinary and Customary Meaning Evidenced by the Cited Art
A recent PTAB ex part appeal by Schlumberger illustrates a good example of how to limit unreasonably broad interpretations created by an Examiner.
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MR. IP LAW Blog Recognized as one of the Top 100 Intellectual Property Blogs
We are pleased to report that our blog has been awarded as one of the top 100 Intellectual Property Blogs! We are very honored by this recognition and promise to continue bringing our readers more insights into patent prosecution techniques and related matters.
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Is it a “technical problem” or a “business problem”? – Your Success on Appeal Might Depend On It
IBM fails to overcome Section 101 rejection, even with a very detailed claim, because it is directed to a business problem, not a technical problem.
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Finjan, Inc. v. Blue Coat Systems, Inc.: A Refreshing Affirmation of Patent Eligibility
As highlighted in a previous post, Section 101 (Alice) rejections have been increasingly applied according to constantly evolving guidelines that make it difficult to avoid or overcome allegations that a claim is directed to an abstract idea. As evidenced by the examples provided in the above-linked post and even in a recent post about an…