Your Inside Perspective on Intellectual Property

Latest Posts
- From A to B: Why Claim Interpretation Depends on the Facts
Two ways to interpret “From A to B” – two divergent views within days at the PTAB. - Routine Optimization: a Destination is Not Just a Direction
“Just optimize it.” Examiners often rely on routine optimization to do a lot of work in an obviousness rejection, and a recent PTAB decision illustrates one way to push back when you claim the destination and the prior art merely provides directions. In other words, knowing which direction to go is not necessarily enough to… Read more: Routine Optimization: a Destination is Not Just a Direction - When the Examiner Is Trying to Tell You Something
Not every rejection deserves a fight, and not every hint from an Examiner deserves to be ignored. This post uses a recent PTAB affirmance to explore when a quick amendment beats an expensive appeal. - Manufactured Complexity: How The USPTO Turns One Word Into a Multi-Front Battle
Patent prosecution has real nuance built into it, but sometimes an examiner’s rejection accumulates so many layers of interpretive theory that a simple question gets lost entirely. This post walks through a recent PTAB reversal where an entire rejection turned on whether a prior art component was actually a “screw,” and how the Board cut through pages of strained argument with a straightforward, common-sense answer. A good reminder that not every dispute needs to be complicated to be won. Read the full breakdown here. - The Possession Problem: Converting a Specific Numerical Change into an Open-Ended Claim Limitation
A recent PTAB decision provides a useful written description lesson on numerical limitations and claim amendments. The case shows why a specification describing a temperature drop of approximately 700°C did not support a later claim amendment requiring a temperature reduction of “at least” 700°C, and offers practical drafting and prosecution guidance for avoiding similar possession problems. - Nouns and Verbs: When Grammar Matters in Patent Examination
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.