When examining patent applications, the USPTO generally applies the broadest reasonable interpretation to patent claim terms, including in post grant proceedings where the patent term has not yet expired.

How to best deal with Alice-based rejections from the USPTO is a complex task due in part to the generally difficult problem of applying the Supreme Court's two-part test to individual cases. An approach is discussed utilizing a technical problem-solution approach based on recent guidance from USPTO training slides.

Alice-based Abstract Idea rejections are flooding patent applicants at the US Patent and Trademark Office. While the USPTO bears the burden of establishing a rejection, it is not clear what level of evidence and explanation is required for the Office to meet its burden. A recent PTAB case is analyzed that shows an example of an insufficient abstract idea rejection.

The Federal Circuit today issued a shockingly broad decision in Synopsys, Inc. v. Mentor Graphics Corporation that affects the scope of power that the US Patent and Trademark Office can employ when deciding the critical question of patent validity in Post-Grant proceedings. The decision, written by Judge Dyk, considers not only the scope of the USPTO's authority, but also the ability for judicial review. Judge Newman writes a detailed dissent, raising significant questions about the decision. Given the Supreme Court's recent decision to review the Cuozzo Speed Technologies case, this decision seems to call out with another reason for the Supreme Court to reign in the Federal Circuit.

The issue of obviousness is at the heart of defining what is, and what is not, an invention. While examples at the extremes are relatively easy to find, many cases tend to lie somewhere in the fuzzy range between obvious non-patentable concepts and non-obvious inventions. Finding and presenting convincing arguments, one way or the other, is part of the challenge that makes patent law so engaging.

Inventions are often solutions to technical problems. Truly appreciating an invention often involves understanding how the new features operate to solve problems with prior approaches and achieve advantages relative to those prior approaches. At the same time, patent drafting techniques should be used to avoid giving away, as admissions, the key recognitions that led to the invention.

The Federal Circuit recently issued a precedential opinion (In re Urbanski) discussing the interrelationship between the issues of teaching away, the obviousness of modifying a reference that would render it inoperable for its intended purpose, and result-effective parameters.

The USPTO and the Federal Courts continue to invalidate patents under Section 101 based on a range of factual assertions, even when considering the issue under a Rule 12(b)(6) motion. Twombly and Iqbal have helped enable this shift. In Priceplay.com v. AOL, Facebook, and Google, the Babe's famous contract negotiations involving a coin flip helped invalidate patents that combined online e-commerce with on-line gaming, where the price was based not only on the buyer's participation in an auction, but also on a competitive activity that is associated with the product being purchased.

The Federal Circuit has issued another abstract idea decision in the context of a vehicle system for testing drivers. The opinion provides numerous hints and guidance as to facts that could have enabled the patent to survive. Those drafting and prosecuting patent applications, particularly in the autonomous or intelligent vehicle area, should take note of the analysis in this case.

Winning a case before the USPTO's Patent Trial and Appeal Board (PTAB) can be a long and arduous journey. Unfortunately, the case is then returned to the Examiner, who may still be inclined to try and deny the application by re-opening prosecution with new rejections. While such actions can be exceptionally frustrating, and whether or not they are reasonable, there are sometimes ways for the Applicant to quickly overcome them.

The highly watched case from the Massachusates Supreme Court absolves an IP Boutique law firm of legal malpractice claims from representing competing clients in the same technical area.  

In a recent case (Inphi Corp. v. Netlist) the Court of Appeals for the Federal Circuit reviewed the standard for determining whether a claim can be amended to add a negative limitation. The CAFC confirmed the rule to evaluate whether a negative claim limitation is supported under Section 112 involves determining whether the specification describes "a reason to exclude the relevant limitation."

When presented with a restriction between groups, one factor to consider in making an election is how to maximize arguments for an eventual petition, if needed.  When electing between groups where the scope of one group is within another group, it can be advantageous to elect the group that includes all of the elements (and more) of the other group.

An appeal can often result in re-opening prosecution, where the USPTO effectively admits the rejections were insufficient. Sometimes, even when the Examiner files an Answer to the appeal brief, certain rejections are withdrawn. Data from each art unit was sampled and the Answers tagged for any withdrawn grounds of rejection.

Examiners often dislike negative claim limitations. Adding a negative limitation without strict support in the specification can therefore be difficult. Further, it can be difficult to convince an Examiner that a prior art references fails to show a certain negative claim element. In a recent PTAB case, the Board confirmed that negative limitations must be considered and that anticipation cannot be achieved by combining disparate embodiments of a single reference. 

USPTO examiners often like to cite an applicant's previous applications against later filed applications. However, this also means that it is possible to access the inventors of the prior application and have them refute, through a declaration, misinterpretations of their disclosure. In some ways, there can be no better evidence of whether a prior art reference shows or suggests certain features than a statement by the inventors of that application. Such evidence can be particularly valuable on appeal, where PTAB judges seem to greatly enjoy knocking down technical arguments of counsel by noting that they are mere attorney argument unsupported by any evidence of record.

With the recent Supreme Court case of Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), many predicted a significant impact on prosecution before the USPTO, where Examiners would require applicants to further amend claims by pointing out potential clarity issues. In a recent PTAB case, the Board made clear that simply alleging a lack of clearness, without a proper explanation, is not proper.

When an Examiner twice or finally rejects an application, the applicant has the right to appeal to the Patent Trial and Appeal Board (PTAB).  This enables the applicant to have a panel of three administrative law judges (ALJs) review the rejection to determine if it is proper.  Unfortunately, the USPTO effectively denies such review in many appeals by reopening prosecution.