Posts On Patent Prosecution
No advertising, no sponsors, no pay-to-play nothing but pure patent prosecution bliss.
When the Examiner Is Trying to Tell You Something
Not every rejection deserves a fight, and not every hint from an Examiner deserves to be ignored. This post uses a recent PTAB affirmance to explore when a quick amendment beats an expensive appeal.
Keep reading
Manufactured Complexity: How The USPTO Turns One Word Into a Multi-Front Battle
Patent prosecution has real nuance built into it, but sometimes an examiner’s rejection accumulates so many layers of interpretive theory that a simple question gets lost entirely. This post walks through a recent PTAB reversal where an entire rejection turned on whether a prior art component was actually a “screw,” and how the Board cut through pages of strained argument…
Keep reading
The Possession Problem: Converting a Specific Numerical Change into an Open-Ended Claim Limitation
A recent PTAB decision provides a useful written description lesson on numerical limitations and claim amendments. The case shows why a specification describing a temperature drop of approximately 700°C did not support a later claim amendment requiring a temperature reduction of “at least” 700°C, and offers practical drafting and prosecution guidance for avoiding similar possession problems.
Keep reading
Nouns and Verbs: When Grammar Matters in Patent Examination
A recent PTAB decision illustrates how some obviousness rejections depend on claim interpretations that disregard basic grammar, including attempts to convert structural nouns into functional verbs. The case provides useful lessons on claim drafting, responding to strained BRI positions, and recognizing when an appeal may be the most effective path forward.
Keep reading
Claiming Structure by Implication: When Words Carry More Than Labels
A recent PTAB reversal offers a useful reminder that proper interpretation must remain anchored to the specification, particularly for structural terms such as “integrally formed with.” This article examines how applicants can use specification context, including figures, to defend claim meaning in prosecution and how to draft now for the claim construction disputes that may arise later.
Keep reading
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.
Keep reading
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.
Keep reading
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.
Keep reading
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.
Keep reading
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.
Keep readingSomething went wrong. Please refresh the page and/or try again.
Disclaimer – Note that the views expressed herein do not represent the views of any law firm or client, and may not even represent the views of the author. This blog is NOT legal advice and is for informational purposes only. No attorney client relationship can be formed by reading this blog or using any of the information provided. The accuracy of the information provided has not been verified.
Mr. IP Law 