See contrasting examples showing how examiners divide the world into a limited number of choices using the invention as a guide in order to support design choice rejections. See how to back with technical problems and solutions to illustrate criticality, especially when supported by the specification. 

Breaking down claim elements can unintentionally affect claim scope. See a recent example where the PTAB breaks down claim elements to affirm a Boeing application.

When the specification makes no distinction between alternative designs, this can be an admission used against the applicant to support a design choice rejection. Read how to avoid this result in the latest post.

Enjoy the latest holiday-related patent appeal decision!

Examiner reassignment - what does it take? It seems that evidence of obscuring the prosecution history is enough.

Read about some strategies for dealing with an examiner (or their supervisor or a quality specialist) that argues a structural limitation does not further limit the action of a method claim.

Explicit versus implicit negative limitations - be careful, especially during examination.

When prior art intermixes technical terms that the applicant considers distinct, consider whether the specification provides definitions or support that outweighs the extrinsic evidence.

In patent prosecution, using color in utility patent claims can be a double-edged sword. It might highlight a key aspect of an invention—or get dismissed as non-functional "printed matter." In our latest blog post, we dive into this issue, examining the printed matter doctrine and how it often impacts claims involving color.

Patent professionals should be skeptical of any rejection using non-prior art documents, just as they might be skeptical of an alleged Sasquatch sighting.

The Importance of Precision in Claim Drafting: Understanding the Term "Provided"

Do you know the strategic implications of responding to an election over the phone? Read this post to see how things can play out.

Where is the line between the skilled artisan's general desire to make everything better and the notion that there is no motivation to add features to a reference to solve a problem the reference says it already solves?

Struggling with drafting patent claims involving controllers? Find some example formats and best practices to ensure robust protection and avoid pitfalls in this latest blog post.

See how neural network inventions can be impacted by product-by-process claim interpretations during prosecution with an example from NVIDIA. Be knowledgeable of these issues to avoid traps for the unwary.

A recent PTAB decision illustrates what can happen when you draft a short and too the point appeal brief in response to a very detailed rejection with extensive citations.

Prior art at cross-purposes to the invention. Do not fall for the teaching away trap - read about another approach for combating obviousness at the USPTO.

How to thread the need between avoiding incomplete arguments that merely parrot the claims, and improper arguments that rely on features not present in the claims.

If an examiner take logically inconsistent rejections, an applicant must address them both on appeal and cannot rely on the inconsistency itself.

Disclosure of a parameter in the cited art may or may not be because the art recognizes its effect on a desired result. Make sure to evaluate whether the evidence establishes a reason to optimize the parameter to a particular range or value when an examiner relies on MPEP 2144.05.II.A.