Using Provisional Filing Dates Offensively - It's Not Automatic
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1d ago
USPTO examiners will take a liberal view of written description requirements when it suits their rejection, particularly when they need to find support in a priority document because only the priority document qualifies as prior art. Appeal 2024-001531, Application 17/626,453, to Bridgestone relates to an invention for a tire manufacturing system.  Claim 1 recites:  1. A system to manufacture a tire, the system comprising: one or more processors and a memory, the memory configured to store instructions that are executable by the one or more processors and cause the one or more proce ..read more
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Claim interplay under the Broadest Reasonable Interpretation (BRI)
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1w ago
The interplay between independent claims and dependent claims can have a substantial affect on claim interpretation. Most discussed is the issue of claim differentiation, where for example a more specific feature in a dependent claim is used to justify an interpretation in the independent claim that is in some way broader that the dependent claim’s specific feature. But that is not the only way in which dependent and independent claims can impact one another. This post reviews a patent application from Soundhound related to speech processing. In this case, the dependent claims are used to just ..read more
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Where Does It End?
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1M ago
The USPTO’s data (here) on Office actions over the last two years confirms that Section 101 rejections are continuing to increase at a rate of approximately 15% year over year from the beginning of 2022 to the end of 2023. At the same time, the legal analysis to apply the so-called “test” to a given case remains fraught with uncertainty and ambiguity. Almost any claim can be picked apart and found too abstract, especially when most of the analysis under Section 101 is akin to arguing about how many angels can dance on the head of a pin. A recent case on appeal at the USPTO shows that the PTAB ..read more
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Are Smartphone Apps Protectable With Utility Patents?
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1M ago
The smartphone platform, with its built-in sensors, processing power, display, and portability, opened up a whole world of new software tools that now impact our daily lives. Through apps, a smartphone becomes a level, a voice recorder, an alarm clock, an airline boarding ticket, and on and on.  Most people today use hundreds of apps without ever thinking twice. But can one use utility patents to protect new and non-obvious features encapsulated in a smartphone app? According to various sources on the internet, the resounding answer is “YES” (with the usual caveats). And in theory, this a ..read more
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But That's Not In Your Claim
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1M ago
When arguing against a rejection, it can be helpful to put the invention in context and explain technical problems solved by the invention. This approach can often lead naturally to discussions of how the cited prior art is unable to solve such technical problems, or how the state of the art is deficient in various applications. Such explanations can help the reader better appreciate the invention by understanding how it affects and improves the real world and perhaps even society. When viewed correctly, the understanding that comes about in this way can be powerful and persuasive. Unfortunate ..read more
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All Functional Language Is Not Necessarily Created Equal
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
2M ago
Functional language is used by many applicants. See a previous post here discussing some of the issues around terms like “configured to” and ‘adapted to". However, applicants should be aware that at least some PTAB judges consider that there is a difference in scope between such terms. Specifically, a recent case, discussed below, was decided solely on this basis. The case (Appeal 2023-003258, Application 17/172,951) relates to a camera monitoring system. Claim 1 on appeal utilized “configured to” language. For example, the claim required “at least one controller configured to” carry out vario ..read more
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Improper Hindsight In Generalizing the Teachings of the Prior Art
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
2M ago
A recurrent issue that nags every patent professional is the misuse of hindsight by patent examiners during the examination process. A common scenario unfolds when patent examiners, in their pursuit of examining patent applications, rely on improper hindsight to combine references. This often happens when the examiner provides a purported reason for the combination, and the sole evidence supporting that reason is extracted from the inventor's own patent application. This circular reasoning can create a significant hurdle for patent professionals, as it undermines the objectivity of the examina ..read more
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Obviousness - Merely Being Conventional Is Not Motivation
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
3M ago
This post considers a recent PTAB appeal by Nestle in which the examiner maintained rejections in which features from references were combined merely because the features were conventional. The PTAB reversed confirming that merely because features are convention is not, in and of itself, a reason to combine them. The case is Appeal 2023-000273, Application 16/533,196. This case has a rather complicated prosecution history. The application on appeal claims priority back to an earlier (now-abandoned application) that was itself subject to an appeal (in which the examiner was affirmed). This may ..read more
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Enhancing Processing Efficiency of the Computer Itself, or a Just a Mere Tool
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
3M ago
Section 101 has become a critical battleground for patent professionals seeking to secure protection for software-related inventions. The challenge lies in distinguishing innovations that genuinely contribute to technological progress from those deemed mere abstract ideas. This post aims to shed light on a specific exception recognized by the Federal Circuit — the improvement of processing efficiency of the computer itself — and the delicate balance between said enhancement and the ineligible mere use of the computer as a tool. Section 101 of the U.S. patent law sets forth the statutory subjec ..read more
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Core Wireless and Example 37 Help Roche Secure a 101 Win
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
3M ago
US patent applicants continue to face challenges with the application of Section 101 abstract idea rejections. Section 101 rejections continue to be not only prevalent, but difficult to overcome and with a relatively low chance of success on appeal. Whether that is due to patent applicants and the patent bar attempted to push the boundary, or the over-zealous application by the USPTO, is left for another day. What matters from a practical point of view is understanding what factors and arguments can lead to a successful application, including a successful appeal if necessary. Today we review a ..read more
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