Last week, we considered what “teaching away” is not. What is teaching away? “Teaching away” requires criticizing, discrediting, or discouraging investigation into the claimed invention. … Read More »Teaching Toward “Teaching Away”
“Teaching away” is a topic frequently misunderstood at (almost?) all levels of patent review. It is not a surprise that non-US Applicants and Examiners make… Read More »Teaching Away From “Teaching Away”
Last week, we briefed In re Ratti. 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959); MPEP 2143.01 VI. Ratti clarifies that a secondary… Read More »Principle of Operation Arguments
We recently considered arguments directed to rendering the prior art inoperable. A related conclusion, articulated In re Ratti, clarifies that a secondary reference cannot modify… Read More »On In re Ratti
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
After our extensive discussion of Terminal Disclaimers, we now turn our attention to the issue raised during Study Group Session 13 on November 26, 2020. … Read More »Filing a Terminal Disclaimer in Preparation for Appeal
Two weeks ago, we began considering the USPTO’s policy change regarding the holding of a double patenting rejection in abeyance. This change might result in… Read More »Post-Allowance 182 Petitions for Terminal Disclaimers
Last week, we considered the USPTO’s recent shift in policy revolving around double patenting rejections. Representatives now risk receiving a Notice of Non-Compliant Amendment, if… Read More »Timing to Withdraw a Terminal Disclaimer
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