While design patents can serve as prior art in utility applications, their lack of technical disclosure can limit their effectiveness in supporting obviousness rejections. When facing a rejection based on a design patent, look closely at the examiner’s reasoning—especially whether the modification is allegedly motivated by unsupported functionality or just aesthetics.

Official notice can be a useful tool for examiners, but its scope is intentionally limited. Know the limits to ensure that officially noticed facts cannot undergird a rejection on their own.

Read about a recent PTAB decision where the board recognizes that an applicant is explaining the technical benefits of an invention, not trying to limit claims to a particular advantage not expressly recited.

Read about some ways to avoid having your claim scope arguments undermined by dependent claims and claim differentiation.

Patent law is replete with examples of minor linguistic choices having significant legal consequences. The phrase “at least one of A and B” is a prime example of how splitting linguistic hairs can have major ramifications. As Superguide and subsequent PTAB decisions illustrate, even seasoned practitioners can find themselves caught in unintended claim scope traps.…

Read about how Section 112 and Sections 102/103 are sometimes used in coordination by examiner to reject claims, and what to do about it.

See contrasting examples showing how examiners divide the world into a limited number of choices using the invention as a guide in order to support design choice rejections. See how to back with technical problems and solutions to illustrate criticality, especially when supported by the specification. 

Breaking down claim elements can unintentionally affect claim scope. See a recent example where the PTAB breaks down claim elements to affirm a Boeing application.

When the specification makes no distinction between alternative designs, this can be an admission used against the applicant to support a design choice rejection. Read how to avoid this result in the latest post.

Enjoy the latest holiday-related patent appeal decision!