Category: Uncategorized
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Interplay between Obvious to Try and Routine Optimization
When examiners improperly mix together different rationales into a single rejection, be ready to call it out and address each one separately to illustrate errors. Read about a recent case from Under Armor related to a footwear innovation and how the PTAB decided the issue.
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Using Provisional Filing Dates Offensively – It’s Not Automatic
Some examiner skirt the requirements of establishing continuity of disclosure when relying on a US provisional filing date. Read here how to push back.
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Claim interplay under the Broadest Reasonable Interpretation (BRI)
Remember that when arguing about the proper scope of a claim term, it is important to consider the use of the disputed limitation in other claims.
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The Attraction of Simplicity in Hindsight
Viewing things in hindsight can be irresistible to one’s human nature. Read about a case where the simplicity of an invention when viewed in hindsight was overcome at the PTAB with declaration evidence explaining the context of the invention.
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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.