While much has been said recently regarding Section 101 following Supreme Court cases like Alice, there is another type of Section 101 rejection sometimes used by Examiners when the invention is said to lack utility. 

Inventions must be non-obvious to qualify for patent protection. While there are many ways to argue obviousness, savvy attorneys like to find a way to use "teaching away" by the prior art. However, a recent case from the PTAB illustrates that a teaching away with respect to features not relevant to the proposed combination are ineffective to overcome an obviousness rejection. 

Restriction requirements (or election of species) can significantly limit an Applicant's ability for subsequent amendments. The limitations on amendments can severely limit and Applicant's ability to distinguish prior art. Therefore, Applicants should be wary of restrictions that may have significant negative consequences for successful prosecution and develop a strategy for responding early in prosecution.

The Patent Trial and Appeal Board (PTAB) of the USPTO announced a new program focused on enabling small businesses to have their appeals expedited.  While this program may be useful in particular situations where speed is essential, there are some notable pitfalls for the unwary.  

As part of the requirement to limit patent applications to a single invention, the US Patent and Trademark Office sometimes issues restriction requirements citing differences among figures in an application.  One drafting tactic to minimize the ability for Examiner to make figure-based restrictions with regards to different aspects of a claimed method, is to utilize a linking flowchart, as well as nesting flowcharts (like sub-routines when coding).  

When the Supreme Court decided Alice, the USPTO took the matter to such an extent that it re-reviewed all allowed cases at that point that had not yet issued, and withdrew many applications. I reviewed many of the cases on the list to see how various Applicants were faring now, almost a year later. 

The doctrine of "Analogous Art" places an additional requirement on prior art that it be either from the same field of endeavor, or reasonably pertinent to the problem solved by the invention. While examiners often assert that a prior art reference is still relevant even when it fails to solve the particular problem solved by the inventors, if the prior art is not from the same field of endeavor binding precedent expressly confirms that it is not available.  

37 C.F.R. 1.2 confirms that business with the US Patent and Trademark Office is to be transacted in writing.  Sometimes, however, the Office of Petitions has direct discussions with Examiners, excluding the Applicant. 

In order to have a better understanding of how the USPTO decides petitions against restriction requirements, it is helpful to review a large number of such decisions.  However, there is no easy way to find or compile such decisions, other than going through serial numbers one by on on PAIR.  Therefore, I filed a FOIA request (LINK) requesting a listing of the relevant serial numbers. 

Obvious-type double patenting is a judicially created doctrine combating two potential evils - extension of patent term and division of ownership of the same invention.  While filing a Terminal Disclaimer is often an easy solution, some start-ups may be surprised when this option is not available to them.  

One area that is a constant headache for clients is restriction requirements from the USPTO. Clients often have a hard time and feel that they are being put through the ringer by an overly-bloated bureaucracy.  On the other side, Examiners often have limited time to examine disparate claim sets in a single application.  In any event, restrictions are very common, and due to the complexity of the rules many Applicants simply give in rather than spend the time and energy to argue.  

The discussion of Exemption 7(A) is continued in the context of FOIA denials by the USPTO, particularly with regard to whether the USPTO can prove that there would be harm in releasing publically available information about Examiners actions. 

Previous posts have discussed some of the ways the USPTO tries to deny FOIA requests, citing Exemption 6 for example. Another exemption the USPTO often cites is Exemption 7(A).  In one example where I was requesting certain public records, an appeal was required explaining why the USPTO FOIA Office’s refusal to disclose the requested records under FOIA Exemption 7(A) was not justified because patent examinations are neither the type of “law enforcement proceeding” contemplated by Exemption 7, nor was the alleged harm in disclosure posited by the FOIA Office realistic.

Restriction requirements (or election of species) are issued by the USPTO when the Examiner determines that there are multiple and/or distinct inventions claimed.  The results is that an Applicant is required...

A previous post illustrated the USPTO's use of Exemption 6 to deny FOIA requests and one reason why such reasoning is improper (i.e.,  that the requested documents did not meet the threshold for the type of information protected by Exemption 6). Here, some of the additional requirements of Exemption 6 are analyzed with regard to whether there is any protectable privacy interest in public patent applications, and whether the public interest in disclosure of such documents outweighs any privacy interest that may exist, if one exists at all.  

Unfortunately, most examiners never experience dealing with the USPTO as an inventor. However, there is at least one former examiner who is now an inventor and representing himself pro se before the Office with respect to an invention for a Handle for Tablet Computers.  So far, the inventor has had to use every bit of his 10 years of experience as an Examiner to deal with the idiosyncrasies of USPTO bureaucracy. 

Patent prosecution before the USPTO is governed by numerous rules that limit an Applicant's ability to take certain actions, such as amending the claims.  A Final Rejection severely limits an Applicant's right to amend, and thus sometimes there are disputes as to whether a rejection is properly made final.  

The National Inventor Hall of Fame inducts a class of inventors every year to honor their breakthrough inventions.  The inductees typically have far reaching inventions that have profound impacts on the world.  On one of my more recent visits to the museum, I was reading about one of the inventions honored at the museum and was struck by some of the issued claims, particularly in light of the Supreme Court’s Alice decision.