Nonobviousness: Prior Art Already Solves the Alleged Problem
July 24, 2020
On July 1, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Allen reversing an Examiner’s obviousness rejection for failing to
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Necessity of Articulated Reasoning with Rational Underpinning in an Obviousness Rejection
July 20, 2020
A rejection for obviousness must include “some articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
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Functional Limitations vs. Intended Use
July 17, 2020
On July 10, 2020, the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s anticipation and obviousness rejections in Ex parte Loveless. The rejections were based on the Examiner’s construction of certain claim limitations as relating to an intended use, rather than being structural
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Revisiting “Informative” Board Decisions: Indefiniteness and Parameter Patents
July 13, 2020
Ex parte Bobrowski is a 2008 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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Patentee’s Failure to Fully Define Non-Standard Physical Characteristic Leads to Invalidity Holding
July 10, 2020
On June 30, 2020, the Federal Circuit issued a decision in Pacific Coast Building v. Certainteed Gypsum, Inc. (nonprecedential) agreeing with the District Court that patentee’s own term
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Needless to Say, Originally Filed Claims Satisfy the Written Description Requirement
July 6, 2020
On May 13, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Ismagilov reversing an Examiner’s rejection of original claims for
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“License” versus “Effective Assignment” – The Terms of a Licensing Agreement Should Be Carefully Considered to Avoid Double Patenting
July 3, 2020
Obviousness-type double patenting (“ODP”) is a judicially-created doctrine designed to prevent a party from extending its right to exclude by enforcing claims in a later-filed patent that are
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Examiners Must Construe Claim Terms in the Context of the Entire Disclosure
June 29, 2020
During patent examination, examiners must give claim terms “their broadest reasonable interpretation consistent with the specification.” MPEP 2111. The Patent Trial and Appeal Board (“Board”) emphasized
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Examiner’s Proposed Modification Not Obvious, Would Render Prior Art Inoperative for Intended Purpose
June 26, 2020
On June 9, 2020, the Patent Trial and Appeal Board (“Board”) ­reversed the Examiner’s obviousness rejections in Ex parte Leibold. The obviousness rejections were based on
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Revisiting “Informative” Board Decisions: Anticipation of Method of Treatment Claims
June 22, 2020
Ex parte Batteux 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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