Posts On Patent Prosecution
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From Office Action to Appeal: Exploiting Gaps in Untranslated Prior Art
Examiners sometimes rely on untranslated foreign references and attempt to bridge the gap with figure-based interpretations, but that approach can collapse under scrutiny. This article walks through a recent PTAB reversal and offers practical strategies for identifying and exploiting these evidentiary weaknesses during prosecution and appeal.
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The Danger of Drafting at the Claim Level: AI Specifications and the Written Description Problem
A recent PTAB decision shows that AI patent applications built around high-level flowcharts and functional descriptions can fail the written description requirement, even when they appear technically sound. The takeaway for prosecutors is clear: include concrete algorithmic implementation detail or risk an unfixable § 112(a) problem later.
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Do You Have to Put Numbers in a Patent Specification? Calibration, Breadth, and the PTAB’s Reminder on Indefiniteness
Do you really need to put numbers in your specification when your invention relies on calibratable values? A recent PTAB decision draws a sharp line between breadth and indefiniteness—and pushes back on examiners who require otherwise.
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When The PTAB Masks Inoperability With Teaching Away: A Logical Failure on Obviousness
A recent PTAB decision quietly collapses the “intended purpose” doctrine into the much narrower teaching away standard — effectively excusing combinations that arguably break the technical function of the prior art. An unusual dissent exposes the flaw and offers some guidance for pushing back on obviousness rationales built on doctrinal shortcuts.
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Taco Tuesday at the PTAB: When “Configured To” Actually Matters in Patent Claims
What can a broken taco shell teach us about functional claiming? A recent PTAB decision involving General Mills shows how “configured to” language can carry patentable weight when structure is properly disclosed and argued.
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The Wrong Embodiment Problem: When Examiners Improperly Broaden Claims
What happens when an examiner uses the wrong embodiment to broaden your claims? A recent PTAB decision shows why that move violates basic claim construction principles—and how to spot it early.
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From Europe to the USPTO: How Minimal Disclosure Can Doom U.S. Software Claims
Drafting patent specifications for a global audience can hide serious U.S.-specific risks. This article uses a recent PTAB decision to show how minimal disclosure and functional claiming—especially in software cases—can lead to an unfixable Section 112 failure in U.S. prosecution.
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Form Over Substance at the PTAB: Why Even Good Legal Arguments Can Lose
The PTAB is not hostile to creative advocacy—but it is unforgiving of arguments that do not conform to its doctrinal templates. Read about a case that reminds us of the fact that before an administrative agency, even a good argument can fail if it does not look like the right argument.
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Giving Thanks for Real Reasoning: A PTAB Reminder on Obviousness
This Thanksgiving, I’m grateful for PTAB decisions that keep obviousness grounded in evidence. In a recent turkey-decoy appeal, the Board rejected an examiner’s broad “manufacturing cost” motivation as unsupported. A downward-facing tail may fool a gobbler, but vague rationales won’t fool the PTAB.
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Claiming What Doesn’t Happen: Issues and Options
Claiming what does not happen can have issues, but there are options to making it work. Read about a recent PTAB decision illustrating one possible approach.
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Mr. IP Law 