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Posts Tagged: "final rejection"

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Several weeks ago, in a non-precedential opinion, the Court of Appeals for the Federal Circuit issued a decision in In re: David Tropp, which vacated and remanded a decision of the Patent Trial and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.”

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 ignorant is impossible to tell. But what Citron says can without question be characterized as absolutely incorrect… Citron says that the non-final rejection was made known to PolarityTE on March 31, 2017, which they find to be conclusive proof of fraud because PolarityTE closed a transaction with shareholders on April 7, 2017. The problem, however, is the non-final rejection was mailed by the USPTO and sent to the law firm representing PolarityTE on April 7, 2017… Citron also claims that PolarityTE has engaged in fraud because they received a final rejection from the patent examiner and did not notify shareholders. Again, only those who are completely unfamiliar with patent practice and procedure could possibly make such an erroneous claim. A final rejection is anything but final in the everyday meaning of the word.

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 and Appeal Board (PTAB) that affirmed a patent examiner’s obviousness rejection of a microwave vacuum-drying apparatus and associated method. The Federal Circuit panel consisting of Judges Alan Lourie, Jimmie Reyna and Raymond Chen…

§ 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.

Patent Prosecution 101: Understanding Patent Examiner Rejections

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the rejection is called a final rejection all hope is not lost and there are things that can be done to continue to attempt to persuade and ultimately convince the patent examiner you are entitled to a patent… Generally speaking, what you will want to do after you get a final rejection will not be the type of thing you will have the right to do. In that likely situation, the most common thing to do is file what is called a Request for Continued Examination (RCE), which is allowed under 37 CFR 1.114. An applicant request continued examination of an application at any time after prosecution in the application is closed.

Section 103 Rejections: How Common Are They and How Should You Respond?

There are several major statutory rejections that an applicant can receive during the course of patent prosecution at the USPTO, each one corresponding to the relevant section of the Patent Act: § 101 (subject matter), § 102 (novelty), § 103 (non-obviousness), § 112(a) (specification), and§ 112(b) (definiteness). Any application can receive any one of these rejections, but some are more common than others, especially when considering technology center and the type of technology involved. For example, § 101 rejections are very common in TC 3600 due to the presence of the§ 112(a) Alice-heavy e-commerce art units, while fairly simple inventions are more likely to receive § 102 rejections. In addition to prevalence based on technology type, the type of rejection an applicant can receive can also depend upon where their application is in the prosecution process. When it comes to first final rejections, § 103 rejections are the most common.

USPTO Modifies After Final Amendment Pilot Program

Last week the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modified the After Final Consideration Pilot Program (AFCP) to create the After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. There are, however, three differences between old and new AFCP.

New PTO Initiative Gives More Opportunities to Amend After Final

All and all this seems like a positive development. If you do provide a claim set that defines the invention from broad to narrow it seems extremely likely that at least some claims could be obtained in a case given that amendments can now be filed if they place the application in condition for allowance by adding one or more new limitations that require only a limited amount of further consideration or search. Assuming that the Patent Examiners do search the disclosure, like they are supposed to, and not just the initial claim set, allowable matter should be present and allowed to be added to the case. This should be quite beneficial to independent inventors, small businesses and start-ups who absolutely, positively need to get patents as quick as possible to continue to raise funds from investors.

An Overview of the U.S. Patent Process

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

Patent Searching 102: Using Public PAIR

If you are really serious about doing a high quality patent search on your own I recommend doing whatever you can to find 1 or 2 patents or patent applications that closely relate to your invention, whether that means in terms of structure or concept. I hear all the time that inventors do searches and cannot find anything relevant, which is unbelievable. If you do a search and find nothing then you are doing something wrong. See No Prior Art for my Invention. Do whatever you have to, and in a pinch to find something quick that is at least somewhat relevant Google Patent Search will do. Then visit Public PAIR and see what you can find out about the prior art found and used by the patent examiner against that patent or patent application.