Japanese-style obviousness arguments typically are ineffective at the USPTO. Why? Initially, during prosecution, “the patent examiner must first set forth a prima facie case .… Read More »Japanese-Style Arguments at the USPTO
We received a question about responding to obviousness rejections with several (e.g., 3 or more) references. Such a rejection complicates drafting a response. The natural… Read More »Obviousness Rejections with Several References
Our friend, Nüni, pointed out we did not follow-up from our blog post regarding Obviousness of Species. Specifically, we explained that USPTO Examiners (particularly, mechanical… Read More »Generalizing Species
Let’s consider an invention in which a car has been enhanced to include a camera on the rear of the car. The camera is angled… Read More »Brief Case Analysis
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
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
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
Nodal, Session 3, considered the rejection under 35 USC 101 in PTAB Appeal No. 2020-006023. Viewers will know we recommended amending Claim 1 to incorporate… Read More »Nodal, Session 3, Follow-Up
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”