Category: Uncategorized
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Where Does It End?
A head-scratcher of a case comes down from the PTAB as to Section 101. Read about how a technical improvement that reduces memory requirements for a battery monitoring system is nevertheless deemed too abstract because the improvement memory allegedly merely benefited abstract math.
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Are Smartphone Apps Protectable With Utility Patents?
An example PTAB appeal illustrates the substantial hurdles to those trying to protect novel and inventive smartphone apps.
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But That’s Not In Your Claim
This post explains and illustrates a common USPTO practice of side-stepping your arguments with a red herring response.
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All Functional Language Is Not Necessarily Created Equal
Be aware that some PTAB judges can interpret “configured to” claim elements more broadly (and thus more easily rejected in view of prior art) than “adapted to” claim elements.
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Improper Hindsight In Generalizing the Teachings of the Prior Art
Read about improper hindsight, and different ways it can show up in obviousness rejections.
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Obviousness – Merely Being Conventional Is Not Motivation
Whether or not claimed features are conventional, that does not, by itself, constitute a reason to combine them. Read the latest post that discuses a common flaw in obviousness rejections – improper motivation to combine.
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Enhancing Processing Efficiency of the Computer Itself, or Just a Mere Tool
This posts illustrates the challenges in overcoming 101 rejections at the USPTO by relying on the improvement of processing efficiency of the computer itself. Don’t fall into the trap of the computer being a mere tool when trying to secure protection for a software-related invention.
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Core Wireless and Example 37 Help Roche Secure a 101 Win
Read about a recent PTAB case where the particular presentation of data on a user interface is found patent eligible with help from Core Wireless and Example 37 of the USPTO Guidelines.
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Legal Precedent to Support the Prima Facia Case
Read about a recent PTAB case illustrating how evidence can make or break the case when the examiner uses “legal precedent” as the basis for a rejection.
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Coatings, Layers, and Substrates – Different Yet The Same At The PTAB
Be careful if you work in technologies that utilize layers, coatings, and/or substrates. See how these terms can lead to unintended interpretations where any one of them can mean any of the others.