Listing terms in a Markush group with "and" versus "or" can make a difference.

The Federal Circuit calls out the USPTO for employing a version of the fallacy of the undistributed middle, noting that just because each of a dog and a cat has four legs does not mean that it would be reasonable to conclude that a cat is a dog under the BRI.  

With the large increase in ex parte appeals at the USPTO, Appellants should take care to deal with Section 112 issues to avoid giving the Board an easy affirmance.

There can often be strong business incentives to protecting certain indicators on products.  However, claiming indicia can be problematic due to the printed matter doctrine and indefiniteness. In a recent appeal, the Proctor and Gamble Company struggled before the PTAB on this issue.

There is nothing inherently wrong with using the term "about" in a claim, as long as it is done properly and the claim scope is clear. In this case, the use of different decimal places coupled with "about" doomed the claims. 

A previous post discussed the issue of Design Choice and the theory the specification does not need to discuss any particular advantage for the missing limitation in the prior art. Here, an often uncited portion of the MPEP confirms that inherent advantages can even be added to the specification and do not constitute new matter. 

INRIX successfully appeals the rejection of a connected car inventions, winning based on the examiner's improper use of inherency. 

Chrysler narrowly avoids infringement by its pick-up truck bed storage compartment because its compartment is sufficiently visible.

On its face, the policy argument for the Patent Office's use of the Broadest Reasonable Interpretation (BRI) when examining patent claims makes sense. Unfortunately, there are fundamental problems with this line of reasoning. Some of the problems result from practical implications while others come from logical gaps in the policy arguments. 

The Federal Circuit finds a data-structure related software invention non-abstract under the first part of the Alice patent eligibility test because it is directed to a specific implementation of a solution to a problem in the software arts. Key to the decision was the use of a specification drafting technique that has received widespread critiscim in recent years.

The USPTO recently issued still further new guidelines on subject matter eligibility with respect to 35 USC Section 101.

In a recent decision, the Federal Circuit found a hair cutting method patent ineligible.  While some will read this case as saying that hair cutting methods are not patentable, that would be a mistaken conclusion and would further miss a key underlying issue at play in this case.

With the significant increase in government fees at the US Patent and Trademark Office, applicants are increasingly sensitive to piecemeal prosecution. A contributing factor that cuts against compact prosecution is incomplete Office action rejections, but Applicants do have a recourse.

While all oral hearings used to occur in Washington (Alexandria), the USPTO and PTAB have expanded hearing locations to satellite offices including Detroit, Michigan, Denver, Colorado, Silicon Valley (San Jose), California and Dallas, Texas. Applicants should take note of the opportunity to request specific locations in order to reduce the burden of oral proceedings

The statute authorizing means claims simply authorizes the use of a certain claim type (e.g., means claims) and defines how claims that fall under the section are interpreted. As such, it cannot form the basis of a rejection by an Examiner, as confirmed in a recent PTAB case.

Patent Examiners often use the theory of "design choice" in formulating rejections. The typical situation is where one or more primary references show all of the elements of a claim except for what the Examiner feels is a minor modification, for example a certain structural feature such as a taper. These rejections can be particularly difficult to overcome when the specific element alleged to design choice is not disclosed in the specification as having any unique advantages.

No one likes double standards, especially when those in power blatantly apply them. A recent PTAB decision denying a motion for joinder illustrates reasoning that should be more broadly and fairly applied by the USPTO.

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.