by Steve Driskill | May 27, 2016 | [sub] prosecution history, Estoppel / Disclaimer
Distinguishing the claimed invention from conventional implementations may constitute a clear disclaimer that one or more claim limitations do not cover such conventional implementations. Here, for example, the claimed “fractionating” was found to exclude conventional...
by Steve Driskill | May 26, 2016 | [sub] claim context, Claim Interpretation
Claim language that “is tailored to, characterizes, and delimits” a claim element may be interpreted as an intrinsic requirement of that element rather than expressing a mere possibility. Here, for example, specifying that the claimed picture frame / display is...
by Steve Driskill | May 25, 2016 | [sub] inter partes review, PTO Procedure
The PTO need not evaluate unargued limitations in a motion to amend during inter partes review. Here, for example, the PTO’s failure to evaluate objective indicia of non-obviousness and various new limitations in certain proposed claims was found to be proper because...
by Steve Driskill | May 18, 2016 | [sub] motivation, Obviousness
For the purposes of establishing obviousness under 35 U.S.C. § 103, there can generally be no motivation to modify a prior art device in a manner that is inconsistent with the prior art’s stated goals. Here, for example, no motivation was found to add complexity to a...
by Steve Driskill | May 17, 2016 | [sub] Alice step one, Subject Matter Eligibility
The use of conventional technology in a well-known environment that does not address any problems presented by the conventional technology is generally directed to an abstract idea under step one of the Mayo/Alice framework. Here, for example, attaching classification...
