Category: Uncategorized
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Taco Tuesday at the PTAB: When “Configured To” Actually Matters in Patent Claims
What can a broken taco shell teach us about functional claiming? A recent PTAB decision involving General Mills shows how “configured to” language can carry patentable weight when structure is properly disclosed and argued.
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The Wrong Embodiment Problem: When Examiners Improperly Broaden Claims
What happens when an examiner uses the wrong embodiment to broaden your claims? A recent PTAB decision shows why that move violates basic claim construction principles—and how to spot it early.
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From Europe to the USPTO: How Minimal Disclosure Can Doom U.S. Software Claims
Drafting patent specifications for a global audience can hide serious U.S.-specific risks. This article uses a recent PTAB decision to show how minimal disclosure and functional claiming—especially in software cases—can lead to an unfixable Section 112 failure in U.S. prosecution.
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Form Over Substance at the PTAB: Why Even Good Legal Arguments Can Lose
The PTAB is not hostile to creative advocacy—but it is unforgiving of arguments that do not conform to its doctrinal templates. Read about a case that reminds us of the fact that before an administrative agency, even a good argument can fail if it does not look like the right argument.
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Giving Thanks for Real Reasoning: A PTAB Reminder on Obviousness
This Thanksgiving, I’m grateful for PTAB decisions that keep obviousness grounded in evidence. In a recent turkey-decoy appeal, the Board rejected an examiner’s broad “manufacturing cost” motivation as unsupported. A downward-facing tail may fool a gobbler, but vague rationales won’t fool the PTAB.
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Claiming What Doesn’t Happen: Issues and Options
Claiming what does not happen can have issues, but there are options to making it work. Read about a recent PTAB decision illustrating one possible approach.
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The Secondary Reference Trap
A recent PTAB decision highlights a common pitfall in obviousness practice — focusing on the wrong reference when arguing about modification of a reference making it unfit for its intended purpose.
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It Looked Obvious, Until It Wasn’t:
When “wired vs. wireless” looks obvious, think again. A recent PTAB appeal shows how differences in environment, structure, and reasonable expectation of success can defeat an obviousness rejection — and why prosecutors should put those facts front and center
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Intermediate Products and Anticipation: When “Almost” Doesn’t Count
Examiners sometimes rely on unfinished products to reject device claims—but as a recent PTAB decision shows, “almost” isn’t enough. We break down the case and share practical tips for responding to these nuanced rejections.
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Mere Relative Dimensions in Patent Claims
It is not uncommon for examiners to dismiss dimensional claim limitations—especially relative dimensions—as mere design choices that don’t patentably distinguish over the prior art. Examiners often cite MPEP § 2144.04(IV)(a), which explains that a change in proportions of a prior art device is obvious unless there is some new function achieved. It’s an easy move…
Mr. IP Law 