Tag: writing
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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.
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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.
Mr. IP Law 