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
Read more
Federal Circuit Affirms the Preclusive Effect of Settlement Agreements Under the Kessler Doctrine
June 18, 2020
Under the doctrine of “claim preclusion” (res judicata), a judgment on the merits in a prior suit bars a second suit involving the same parties or
Read more
Negative Limitation Inferred From the Invention Summary and Examples
June 16, 2020
On April 29, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Martin reversing, inter alia, an Examiner’s rejection of a
Read more
Selection of Any Order for Performing Process Steps is Prima Facie Obvious Only When the Process Steps are Already Known and Used in the Prior Art
June 12, 2020
Section 2144.04(IV)(C) of the Manual of Patent Examining Procedure describes legal precedents relating to “Changes in [the] Sequence of Adding Ingredients” and cites to In re
Read more
Device Having a Chamber “Loaded With” a Composition Positively Requires Presence of Composition in Device
June 9, 2020
On March 20, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Ferreyro reversing, inter alia, an Examiner’s rejection of a claim directed to a device comprising an injection part “having
Read more
Limiting Modifier Trumps Open Transitional Phrase
June 4, 2020
On April 27, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Nagai reversing an Examiner’s obviousness rejection premised on a
Read more
Disclosure-Dedication Doctrine Can Bar Infringement Under the Doctrine of Equivalents Even When the Equivalency is Not Described in the Context of the Claimed Invention
June 1, 2020
The doctrine of equivalents is a judicially-created form of infringement whereby an accused product or process that fails to literally infringe a patent claim may nonetheless
Read more
Examiner’s Speculative Interpretation of a Foreign Reference Lacking a Translation Insufficient to Support Obviousness Rejection
May 29, 2020
On April 3, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Wallero reversing an Examiner’s obviousness rejection because the Examiner
Read more
Prior Art Disclosure of Interchangeable Chemical Species Insufficient to Teach Their Combination
May 26, 2020
On April 2, 2020, the Patent Trial and Appeal Board issued a decision in Ex parte Humphrey reversing an Examiner’s obviousness rejection because the Examiner’s factual
Read more