Achieving “Brand Loyalty” Found to Be a Surprising Result
October 2, 2020
On September 15, 2020, the Patent Trial and Appeal Board (PTAB) issued a decision in Ex parte Lebovich reversing the Examiner’s rejection of claims directed to a packaged
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Product-by-Process Not Limited to Recited Process Steps Even When Nested Within a Method Claim
September 30, 2020
A “product-by-process” limitation exists where a recited product, such as a composition or article, is defined in terms of the method used to manufacture the product.
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Comprising is Not a Weasel Word
September 24, 2020
The term “comprising,” when used in the preamble of a claim, permits the inclusion of other elements or materials in addition to those specified in the
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Inconsistent Teachings Weigh Against a Reason to Modify or Combine Prior Art References
September 21, 2020
A prima facie obviousness rejection combining multiple disclosures requires a reason to modify or combine the prior art to achieve the claimed invention with a reasonable
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PTAB Reverses Examiner Due to Non-Analogous Art
September 18, 2020
For a prior art reference to be properly used in an obviousness rejection, the reference must be analogous art to the claimed invention. In re Bigio, 381
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Enablement and Definiteness of Broad, Generic Chemical Formulae – Past “Informative” PTAB Decisions
September 14, 2020
Ex parte Hicks is a 2007 decision of the Board of Patent Appeals and Interferences (BPAI) that is listed among the Patent Trial and Appeal Board’s
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Claimed Parameter is Not a “Result-Effective” Variable Unless the Prior Art Recognizes a Clear Nexus Between the Parameter and the Relevant Property or Result
September 10, 2020
When considering the obviousness of ranges, it is a fundamental principle of U.S. patent law that “where the general conditions of a claim are disclosed in the prior
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Board Finds Rejection Based on Overlapping Prior Art Genus Insufficient; Election Requirement Withdrawn by Broadened Initial Search
September 7, 2020
On July 14, 2020, the Patent Trial and Appeal Board issued a decision in Ex parte Park (Appeal 2019-006050) in which a rejection over an overlapping prior art
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Inherency Requires Reference Unavoidably Teach Claimed Property
September 4, 2020
On August 19, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Boutillier (Appeal No. 2020-000348) reversing an Examiner’s obviousness rejection
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Examiner’s Written Description Rejection Comes Up Short
August 31, 2020
On July 31, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Marco (Appeal No. 2020-000873) reversing an Examiner’s rejection for
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