Read about a case where a patent applicant argued the examiner’s interpretation was too broad but then was burned by their own specification defining the scope to expressly include something that they argued was excluded. Make sure you read your whole specification whenever there is an interpretation issue – even if the examiner did not,…

Read about a recent case where the interpretation of a claim term under broadest reasonable interpretation has downstream impacts on the non-analogous arts test. Decide for yourself whether you would consider a soup with sour cream within the field of citrus beverages.

While every patent professional can strive to write applications to maximize clarity, everyone should recognize the inherent imprecision of language as a significant hurdle that will always leave room for arguments in interpretation during patent prosecution. Read about an invention from Disney where it all came down to the meaning of “visual.”

When a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. See how Dyson approached this issue in an ex…

Read the latest update on how examiners sometimes improperly use restrictions to generate 112 written description rejections.

Silence is not disclosure of a negative limitation, but what about disclosing a feature as optional?

Law of the Case at the PTAB – if you are appealing the same case to the board multiple times, do not lose before you get started.

Is it necessarily obvious (or even disclosed) that every prior art reference cited in an application (e.g., in the Background) can be (or is) combined with the invention described in that application? Read about a recent case on this very issue.

Read about how to potentially introduce new evidence in your PTAB appeal brief without obtaining approval from the examiner.

In the common law, res judicata (the thing that was decided) applies to a situation where a final judgement has been made, yet a party is trying to re-litigate the same case. Res judicata maintains the previous judgement and avoids repetition, thus preserving the effect of the first judgment. Res judicata is also applicable in…