Category Archives: Patent Applications

Examining the Examiner Interview

Author: Adriana L. Burgy
Editor:  Michelle Pacholec, Ph.D.

Compact or streamlined prosecution is in vogue in prosecution circles these days.  While examiner interviews are a tried and true “old” tool in a prosecutor’s tool box, they are reemerging as a means to facilitate compact or streamline prosecution, benefiting both clients and the USPTO. Some of the advantages that are driving their popularity include the fact that examiner interviews can reduce prosecution costs, minimize arguments of record, and decrease prosecution time.  Continue reading

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Markush Groups: Traps for the Unwary

Author: Amy Proctor
Editor: Adriana L. Burgy

While many patent examiners prefer Markush claims, which recite lists of alternatively useable species, to be formatted as “selected from the group consisting of A, B, and C,” Applicants should carefully consider claim construction before adopting this format. “A trap for the unwary claim drafter using Markush group language is the severely closed nature of a Markush group.”  3-8 Chisum on Patents § 8.06 (2017).
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Reflections on USPTO Design Day 2017: What’s Next?

Reflections on USPTO Design Day 2017: What’s Next?

Author: Elizabeth D. Ferrill
Editor: Eric P. Raciti

Each April, the design patent community gathers at the USPTO to discuss design prosecution and protection. This year, on April 25, another sell-out crowd of over 300 people attended the 11th Annual USPTO Design Day, which is sponsored by the USPTO, IPO, AIPLA, the IP section of the ABA, and the IDSA. This year’s event including important updates on changes in Technology Center 2900 (which is responsible for all design examination), international protection of designs, including a special guest from the Canadian IP office, as well as evolving trends in fashion, the usefulness of motions to dismiss in design patent cases, and the potential effect of prosecution history in litigation and claim construction.
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Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only on Artisans “Immediately Envisioning Them”

Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only on Artisans “Immediately Envisioning Them”

Author: J. Derek McCorquindale
Editor: Eric P. Raciti

The recent Federal Circuit decision, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. et al., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), explained the anticipation teachings of earlier precedent and unanimously reversed the invalidity determination of the Patent Trial and Appeal Board (“PTAB”). In the March 14, 2017, panel opinion by Circuit Judge Moore, alongside Circuit Judges Lourie and Taranto, the court rejected the PTAB’s anticipation analysis and corrected a misapplication of 35 U.S.C. § 102 used to invalidate a claim. Continue reading

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Thales : Federal Circuit Forces Acceleration on § 101 for Physics-Based Claims

Author: Christopher C. Johns
Editor: Adriana L. Burgy

CAFC DecisionThales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017)

Decision:  In Thales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit reversed a decision of the Court of Federal Claims, 122 Fed. Cl. 245 (2015), that found claims drawn to an inertial tracking system ineligible. In reversing, the Federal Circuit found that the claims were not directed to an abstract concept. Continue reading

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