Posts in Patent Prosecution


PolarityTE stock tumbles, harassed by activist short seller misrepresenting Public PAIR data

Whether the Citron report is intentionally wrong for the purpose of causing PolarityTE stock to tumble, which it has, or whether it is recklessly wrong, or just …
By Gene Quinn
9 days ago 21

Understanding U.S. Patent Prosecution

The journey to a patent begins much before actually filing the patent application, but this article, however, provides an overview of the patent application and patent prosecution …
By Gene Quinn & Michael Benson
20 days ago 4

Federal Circuit Denies Petition for Rehearing En Banc in Xitronix Appeal on Walker Process Claims

On Friday, June 15th, the Court of Appeals for the Federal Circuit denied a petition for panel rehearing and rehearing en banc in Xitronix Corporation v. KLA-Tencor …
By Steve Brachmann
29 days ago 0

Creating Better Applications Through Patent Strengthening

Events along the prosecution process create multiple windows of opportunity for strengthening a portfolio. Decisions are based on indications of market adoption using evidence from specialized technical …
By Martin Bijman
1 month ago 1

CAFC Vacates Board for Moving Target Rejections, Failure to Consider Reply Brief

The moving target rejections were largely due to the fact that the examiner's first clear explanation that she was relying on structural identity, and not inherency, appeared …

Federal Circuit Vacates, Remands After PTAB Fails to Consider Arguments in Reply Brief

On Friday, June 1st, the Court of Appeals for the Federal Circuit issued a decision in In re: Durance striking down a decision by the Patent Trial …
By Steve Brachmann
1 month ago 6

Incorporation By Reference Does Not Establish Priority

In an IPR brought by E*Trade in response to an infringement suit by Droplets, the Board found that the Droplets ‘115 patent was invalid due to obviousness. …

Patent Practitioner Training: Everything Patent Practitioners Need to Know

You’ve passed the patent bar exam. Now what? We have heard that question too many times to count over the years as we have collectively spent …
By Gene Quinn & John White
3 months ago 8

USPTO memo explains changed Alice Step 2B to examiners

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the …
By John M. Rogitz
3 months ago 3

USPTO issues 101 guidance limiting examiner ability to merely conclude elements are well-known, convention or routine

The Notice is significant because in a 101 rejection, an examiner cannot simply assume that elements or a combination are "well understood, routine or conventional." Examiners will be …
By Gene Quinn
3 months ago 22

Are fewer continuations the sign of a healthy patent system?

Hirshfeld explained to me that he is well aware of all of the portfolio reasons why continuations are very important, but the Office does really want to …
By Gene Quinn
3 months ago 39

Innovative Use of Patent Examiner Statistics Improves Efficiency and Strengthens Portfolios

We recently handled an application in which the examiner rejected the independent claims as obvious in view of six references from a variety of different fields. Submitting …
By Robert Jensen
3 months ago 1

Claimed and prior art ranges must have meaningful difference for nonobviousness

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed …
By James Yang
3 months ago 3

Federal Circuit Decisions Breathe New Life Into Alice Responses by Patent Prosecutors

While most commentary to date has focused on the implications for litigation, two recent Federal Circuit decisions have promising implications for patent prosecutors struggling to overcome conclusory …

Prosecution Disclaimer 101: Argument relied upon by examiner results in prosecution disclaimer

The PTAB found the claims in question obvious for two reasons. First, in its primary ruling the PTAB held that there was no prosecution disclaimer, finding the "…
By Gene Quinn
5 months ago 2

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