Posts Tagged: "112 rejections"

PTAB Overturned on Criticality of Broadened Claim Term in Reissue

Global IP Holdings, LLC, the owner of U.S. Patent No. 8,690,233, achieved a victory with the Federal Circuit vacating a decision of the Board and remanding for the Board to address predictability and criticality of the claim term to determine whether the written description requirement has been satisfied. Although victorious, Global did not achieve everything it wanted. Global had requested the Federal Circuit to simply overrule the Board. Judge Stoll, however, explained that there was not support in the record sufficient to determine whether the “plastic” claim limitation was critical or important. Therefore, the Federal Circuit vacated the Board’s decision and ordered the Board, on remand, to address predictability and criticality of the claim term in question in order to determine whether the written description requirement has been satisfied.

Patent Drafting: Tips for Avoiding and Arguing 112 Rejections

While it remains necessary to draft patent applications carefully, and cautiously, so as to not run afoul of KSR v. Teleflex, courts seem increasingly skeptical of patents and patent applications that do not explain what the innovation really is, and why it is an improvement.What does this changing landscape mean for patent application drafting best practices? What tips and tricks should be employed in order to provide a specification that has maximal opportunity for success during examination? How can you effectively and persuasively frame arguments in responses?

Even If New Matter, Entire Application Relevant to Assessing Compliance with Written Description Requirement

Several weeks ago, in a non-precedential opinion, the Court of Appeals for the Federal Circuit issued a decision in In re: David Tropp, which vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB). The PTAB decision had affirmed an examiner’s rejection of a patent application covering a luggage inspection technology. The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Raymond Clevenger and Kimberly Moore determined the PTAB erred in its written description analysis by failing to consider all of the language of the specification as filed when determining whether there was sufficient support for the claimed invention. “Even if it is new matter, the language in the ’233 application as filed is relevant to assessing compliance with the written description requirement,” Judge Moore wrote. “The Board’s failure to consider this language was erroneous.”

Patent Drafting Webinar: Trends and Realities of 112 Disclosure Requirements

Join Gene Quinn on Thursday, November 9 at 2:00 PM ET for a free webinar conversation on the trends and reality of 112 disclosure requirements. Gene will be joined by Todd Van Thomme, a shareholder with Nyemaster Goode PC, and Cynthia Gilbert, co-founder of Blueshift IP. Van Thomme specializes in mechanical and food science related innovations, while Gilbert specializes in computer implemented inventions. We will, therefore, focus our 112 discussions on these specific areas.

§ 112 Rejections: Where They Are Found and How Applicants Handle Them

In this article, we will explore both § 112(a) and § 112(b) rejections by taking a look at where they are most common, how applicants respond to them, and how successful those responses tend to be. Nothing herein should be interpreted as advice as to how a particular patent applicant should or should not respond to a § 112(a) or (b) rejection. It is instead an overview of the statistical trends surrounding these rejections and a general analysis of the most effective procedural means to overcome them.