by Steve Driskill | Jul 25, 2014 | [sub] inherency, Anticipation
Silence in the prior art is not sufficient to sustain a rejection on the grounds of anticipation without inherency, which requires more than the mere possibility or even probability that the feature at issue is contemplated. Background / Facts: The application on...
by Steve Driskill | Jul 16, 2014 | [sub] motivation, Obviousness
A rejection “based on ranges approaching each other” is not appropriate without “a teaching in the prior art that the end points of the prior art range are approximate, or can be flexibly applied.” Where “differences clearly exist and there is no evidence that they...
by Steve Driskill | Jul 14, 2014 | [sub] prosecution history, Estoppel / Disclaimer
In general, although the “mere disclosure of potentially material prior art to the [PTO] does not automatically limit the claimed invention,” “an applicant’s remarks submitted with an [IDS] can be the basis for limiting claim scope.” In particular, as here,...
by Steve Driskill | Jul 11, 2014 | [sub] common terms, Claim Interpretation
Unless the specification explicitly states otherwise, a “user” will most likely be limited to human consumers and not encompass inanimate objects (e.g., smartphone apps performing background operations). Background / Facts: The patent being asserted here is directed...
by Steve Driskill | Jul 11, 2014 | [sub] Alice step one, Subject Matter Eligibility
“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Tying the manipulation to an underlying data structure—even one that is technological in...
