The PTAB confirms in a Honda appeal that system diagnostic inventions do not need to perform an action in response to the diagnostic determination to be patent eligible.
The USPTO is denying they have Section 101 experts at the same time as these experts are conducting interviews and providing guidance to examiners. Why?
An early appeal before the examiner has had a chance to “better” the rejection can sometimes end the case without ever having to deal with those “better” rejections.
To emphasize or not in your patent prosecution arguments. While we do not answer this question, this post illustrates how the applicant should be careful - it can be dangerous to emphasize language that in a way that the other side can use the emphasis to their advantage.
It can show up even when you are not expecting it. Anytime an applicant is relying on a visual indicator’s function to differentiate the state of the art, be careful to consider the Printed Matter Doctrine.
Routine optimization rejections require that the examiner establish the general working conditions of the claimed invention are disclosed by the cited art.
In a design patent claiming a product, does prior art showing the same design, but for just a component of a product, anticipate? Read about Kim Kardashian West’s skim’s design at the PTAB and find out.
Be careful not to fall into the trap of arguing that the examiner has not followed the most obvious solution in the prior art - such an argument says nothing about less obvious, but still obvious, approaches.