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…

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.