Last week, we discussed the difficulty of demonstrating that an Examiner’s proposed modification would render the prior art inoperable for its intended purpose. Accordingly, Applicants… Read More »Inefficient Obviousness Arguments
Patent applicants, especially those familiar with the patent laws of non-US jurisdictions, sometimes find it difficult to accept how US Examiners can combine prior art… Read More »Avoid Rendering an Unsatisfactory Argument
Office Actions sometimes include both a nonstatutory, obviousness-type double patenting rejection and an art rejection, such as an anticipation or obviousness rejection. Applicants typically focus… Read More »MPEP Double Patenting Update
It is time to prepare for the end of 2020. Even if a company’s fiscal year does not conclude with the calendar year, a company… Read More »End of Year Planning
Claims are sometimes drafted or amended to include negative limitations, such as “irrespective of a position at which a touch is detected.” The MPEP makes… Read More »Another Negative Limitation
I remember some treatise (Chisum?) making the point that an Examiner can find almost any combination of elements at a low-level of granularity. Thus, in… Read More »Design Choice
Some patent applications discuss networks including a single server and a single client. As a result, when claiming one device (for example, Client A), the… Read More »Device in a Box
Applicants have limited ability to obtain review of the actions of Primary Examiners. The classic option is to file an Appeal. Applicants often overlook the… Read More »The Untouchables
We previously discussed “broadest reasonable interpretation” claim construction as featured in, but distinct from, obviousness rejections. Let’s consider one uncommon situation that clarifies this distinction.… Read More »Single-Reference Obviousness Rejections
The best way to address errors in patent prosecution is to not make them. But what happens when mistakes inevitably occur? This question was most… Read More »Rescinding Errors