by Steve Driskill | Feb 18, 2015 | [sub] preamble, Claim Interpretation
A claim preamble can be limiting of that claim even when it only breathes life into another claim dependent thereon. Here, for example, a “repetitive motion pacing system” as recited in the preamble of an independent claim was found to be limiting of that independent...
by Steve Driskill | Feb 12, 2015 | [sub] prosecution history, Estoppel / Disclaimer
A patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation. Here, for example, statements on the record that a “personal identification number” distinguishes over the prior art by being user- rather than...
by Steve Driskill | Feb 10, 2015 | [sub] teaching away, Obviousness
In order for a prior art reference to teach away from the claimed invention, it must criticize or otherwise discourage use of the claimed invention rather than merely provide an alternative. Here, for example, a reference’s mere emphasis that the absence of due dates...
by Steve Driskill | Feb 9, 2015 | [sub] breadth, Indefiniteness
Even an otherwise improper open Markush group may be interpreted as a definite closed group when the intrinsic record is reasonably clear in indicating what the claim intended to cover. Here, for example, a semiconductor substrate claimed as being “selected from the...
by Steve Driskill | Feb 6, 2015 | [sub] claim context, Claim Interpretation
Differentiation among the claims can serve to counter an inference that restrictions on one claim term should be applied to other claim terms. Here, for example, “posts” and “separators” were found to be sufficiently distinct elements based on their inclusion in...
