Summary A proper rejection on obviousness requires that the examiner show how one of ordinary skill in the art would have been motivated to combine two or more prior art references to make the claimed invention. In Personal Web Technologies v. Apple (Fed. Cir. 2/14/17), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) failed to explain why a relevant … [Read more...]
Patent application process
The patent application process includes three main time frames: 1) before filing patent application, 2) after filing a patent application and 3) after patent grant. Browse related articles below.
For an examiner to reject a claim based on anticipation, each and every limitation must be found either expressly or inherently in a single prior art reference. An anticipation rejection is a rejection where the examiner is of the opinion that the claimed invention is not novel. However, the United States Patent and Trademark Office (USPTO) has taken a liberal approach to … [Read more...]
In the past few years software patent protection have come under intense scrutiny by the courts and the United States Patent and Trademark Office (USPTO). In that short time, it has become commonplace to see software inventions characterized as an abstract idea and thus not eligible for patent protection under 35 U.S.C. 101. As such, for software patent protection, one must … [Read more...]
Brief history of patentable subject matter rejections Ever since Alice/Mayo, a number of decisions have been rendered regarding patentable subject matter or 35 USC 101. In other words, whether a claim in a patent or patent application is eligible for patent protection under Section 101. Each new case adds to the body of patentable subject matter case law to help the … [Read more...]
Basic facts In D’Agostino v. MasterCard International (Fed. Cir. 2017), the limits of what is the broadest reasonable interpretation of a claim limitation is explored. In this case, if the interpretation is illogical based on the claim structure, the patent specification and the file history, then the interpretation would be unreasonably broad. MasterCard petitioned the … [Read more...]