Examiners often dislike negative claim limitations. Adding a negative limitation without strict support in the specification can therefore be difficult. Further, it can be difficult to convince an Examiner that a prior art references fails to show a certain negative claim element. In a recent PTAB case, the Board confirmed that negative limitations must be…

USPTO examiners often like to cite an applicant’s previous applications against later filed applications. However, this also means that it is possible to access the inventors of the prior application and have them refute, through a declaration, misinterpretations of their disclosure. In some ways, there can be no better evidence of whether a prior art…

With the recent Supreme Court case of Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), many predicted a significant impact on prosecution before the USPTO, where Examiners would require applicants to further amend claims by pointing out potential clarity issues. In a recent PTAB case, the Board made clear that simply alleging…

A Freedom of Information Act (FOIA) request was filed asking for a list of the Serial Numbers of all publicly available applications where an appeal brief was filed by the Applicant, the brief filed between March 1, 2014 and March 1, 2015, including an indication of whether prosecution was re-opened.  The data is in and…

When an Examiner twice or finally rejects an application, the applicant has the right to appeal to the Patent Trial and Appeal Board (PTAB).  This enables the applicant to have a panel of three administrative law judges (ALJs) review the rejection to determine if it is proper.  Unfortunately, the USPTO effectively denies such review in…

While much has been said recently regarding Section 101 following Supreme Court cases like Alice, there is another type of Section 101 rejection sometimes used by Examiners when the invention is said to lack utility. 

Inventions must be non-obvious to qualify for patent protection. While there are many ways to argue obviousness, savvy attorneys like to find a way to use “teaching away” by the prior art. However, a recent case from the PTAB illustrates that a teaching away with respect to features not relevant to the proposed combination are…

Restriction requirements (or election of species) can significantly limit an Applicant’s ability for subsequent amendments. The limitations on amendments can severely limit and Applicant’s ability to distinguish prior art. Therefore, Applicants should be wary of restrictions that may have significant negative consequences for successful prosecution and develop a strategy for responding early in prosecution.

The Patent Trial and Appeal Board (PTAB) of the USPTO announced a new program focused on enabling small businesses to have their appeals expedited.  While this program may be useful in particular situations where speed is essential, there are some notable pitfalls for the unwary.  

As part of the requirement to limit patent applications to a single invention, the US Patent and Trademark Office sometimes issues restriction requirements citing differences among figures in an application.  One drafting tactic to minimize the ability for Examiner to make figure-based restrictions with regards to different aspects of a claimed method, is to utilize…