Author: LSE
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“Configured to” and “Capable of” – Two Different Claim Scopes in the US
There are claim scope differences between “configured to” and “capable of” at the USPTO.
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Arguing the Dependent Claims on Appeal
Coca-cola strategically uses dependent claims to obtain coverage of their new beverage supply device.
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Interplay Among Different Statutory Rejections
Sometimes when an examiner piles on every possible rejection as to a specific claim element, they are telling you that is the limitation they cannot find in the prior art.
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Software Patent Drafting – Be Wary of Data Labels Providing Novelty
Applying the Printed Matter Doctrine to Software Claims
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Is Teaching Away the Patent Practitioner’s Golden Hammer?
Patent practitioners have a multitude of tools in their belt to deal with obviousness rejections. The trick is picking the right tool for the right set of facts. Teaching away is one tool that can be powerful for the right set of facts. It is one of the clear ways to attack even an amorphous…
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Intended Use Means Different Things in Different Contexts
Intended use is a shorthand for multiple distinct concepts in patent law – read about an example illustrating that even examiners can get them confused.
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What’s in a Name?
Some patent applicants may gain a better understanding of what Juliet was going through.
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Integrating an Algorithmic Abstract Idea into a Practical Application
When arguing for practical integration in response to a Section 101 rejection, be careful not to merely argue for an advantage that is nothing more than a characteristic of the abstract idea/algorithm.
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When an Examiner tells you exactly the wrong procedure, don’t be led astray
Some examiners will try to defend improper interpretations in the most strange ways. Read about a recent case in the biotech arts.