Identifying the “Point of Novelty”
We were asked whether we ever identify the “point of novelty” in the claims during prosecution of a utility patent application. At the outset, the… Read More »Identifying the “Point of Novelty”
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Responses to 105s
Under 37 CFR 1.105, an Examiner at the US Patent and Trademark Office may require the Applicant submit “such information as may be reasonably necessary… Read More »Responses to 105s
Nodal, Session 7, M-or-T Discussion
Nodal, Session 7, considers a prosecution in which the Applicant apparently relied on claim recitations of a motor, a thermometer, and a control unit in… Read More »Nodal, Session 7, M-or-T Discussion
Obviousness of Species
US patent attorneys focused on chemical and biological arts are familiar with the idea that a prior art genus does not necessarily render obvious a… Read More »Obviousness of Species
Art-Recognized Equivalents
We received a request to address the topic of art-recognized equivalents and, in particular, the substitution of equivalents known for the same purpose. MPEP 2144.06… Read More »Art-Recognized Equivalents
Japanese Translation of “Configured To”
Our post entitled “Configured To” has been translated into Japanese by Oshima Yoshitaka-san of Beikoku Patent Translation Lab. The translation is available here.
Foreign Filing Licenses
Commonly, a foreign parent company makes patent protection decisions for its subsidiary companies. Therefore, the US subsidiary informs the foreign parent about any inventions on… Read More »Foreign Filing Licenses
Effective Pre-Appeal Use
The Pre-Appeal Brief Request for Review program is about to celebrate its sweet sixteenth birthday. This celebration should suggest Applicants already know how to use… Read More »Effective Pre-Appeal Use
A “Narrative” Narrative
USPTO Examiners sometimes reject claims in translated patent applications with a “blanket” indefiniteness rejection, rather than detailing specific issues in particular claims. Such a rejection… Read More »A “Narrative” Narrative
Recasting Nonanalogous Art Arguments
When searching claims, an Examiner might begin with a primary reference showing the state of the art prior to Applicant’s invention. Of course, the reference… Read More »Recasting Nonanalogous Art Arguments