Author: LSE
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Dismissed as Moot
Petitioning restrictions can sometimes result in no decision. This can be good or bad depending on your goals in prosecution. Read more to see some examples that illustrate the distinction.
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Facebook loses Section 101 appeal related to sponsoring content in news feeds based on the users’ connections.
Section 101 appeals are tough to win at the PTAB, and this case illustrates the challenges facing clients hoping to protect their new ideas aimed at improving social networks.
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Restrictions Repeated But Never Made Final
What to do when an Examiner repeatedly shifts the basis for restriction without ever making the requirement final.
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Philips Uses Coordinated Appeal and Petition
Petitions can be part of an appeal strategy and this Philips case illustrates a prime example.
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Keg treatment patent applicant faced with improper restrictions mixing up Unity and Intended Use
Restriction requirements under Unity of Invention should not rely on intended use to read out limitations that fall under a safe harbor of the CFRs.
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Federal Circuit Extinguishes Incomplete PTAB Rejections In Future Proceedings
PTAB Laziness Helps Patentee avoid Prior Art references in Subsequent Proceedings
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PTAB Holiday Decision
Foldable toy patent wins with only functional language differentiating the cited art.
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Patent Office Examiners Cannot Rely on Happenstance for Inherency
Federal Circuit confirms that prior art showing that an action might happen at a claimed instance does not inherently disclose the missing claimed action.
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Election by Original Presentation
Learn about fighting back against restrictions by “original presentation.”
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Federal Circuit Confirms Propriety of Functional Limitations in Exhaust Catalyst Patent
BASF and Johnson Matthey spar over whether an exhaust catalyst “effective for” converting NOx is definite.