A recent PTAB decision illustrates how some obviousness rejections depend on claim interpretations that disregard basic grammar, including attempts to convert structural nouns into functional verbs. The case provides useful lessons on claim drafting, responding to strained BRI positions, and recognizing when an appeal may be the most effective path forward.
A recent PTAB reversal offers a useful reminder that proper interpretation must remain anchored to the specification, particularly for structural terms such as “integrally formed with.” This article examines how applicants can use specification context, including figures, to defend claim meaning in prosecution and how to draft now for the claim construction disputes that may arise later.
Examiners sometimes rely on untranslated foreign references and attempt to bridge the gap with figure-based interpretations, but that approach can collapse under scrutiny. This article walks through a recent PTAB reversal and offers practical strategies for identifying and exploiting these evidentiary weaknesses during prosecution and appeal.
A recent PTAB decision shows that AI patent applications built around high-level flowcharts and functional descriptions can fail the written description requirement, even when they appear technically sound. The takeaway for prosecutors is clear: include concrete algorithmic implementation detail or risk an unfixable § 112(a) problem later.
Do you really need to put numbers in your specification when your invention relies on calibratable values? A recent PTAB decision draws a sharp line between breadth and indefiniteness—and pushes back on examiners who require otherwise.
A recent PTAB decision quietly collapses the “intended purpose” doctrine into the much narrower teaching away standard — effectively excusing combinations that arguably break the technical function of the prior art. An unusual dissent exposes the flaw and offers some guidance for pushing back on obviousness rationales built on doctrinal shortcuts.
A recent PTAB decision illustrates how some obviousness rejections depend on claim interpretations that disregard basic grammar, including attempts to convert structural nouns into functional verbs. The case provides useful lessons on claim drafting, responding to strained BRI positions, and recognizing when an appeal may be the most effective path forward.
A recent PTAB reversal offers a useful reminder that proper interpretation must remain anchored to the specification, particularly for structural terms such as “integrally formed with.” This article examines how applicants can use specification context, including figures, to defend claim meaning in prosecution and how to draft now for the claim construction disputes that may arise later.
Examiners sometimes rely on untranslated foreign references and attempt to bridge the gap with figure-based interpretations, but that approach can collapse under scrutiny. This article walks through a recent PTAB reversal and offers practical strategies for identifying and exploiting these evidentiary weaknesses during prosecution and appeal.
A recent PTAB decision shows that AI patent applications built around high-level flowcharts and functional descriptions can fail the written description requirement, even when they appear technically sound. The takeaway for prosecutors is clear: include concrete algorithmic implementation detail or risk an unfixable § 112(a) problem later.
Do you really need to put numbers in your specification when your invention relies on calibratable values? A recent PTAB decision draws a sharp line between breadth and indefiniteness—and pushes back on examiners who require otherwise.
A recent PTAB decision quietly collapses the “intended purpose” doctrine into the much narrower teaching away standard — effectively excusing combinations that arguably break the technical function of the prior art. An unusual dissent exposes the flaw and offers some guidance for pushing back on obviousness rationales built on doctrinal shortcuts.
Mr. IP Law 