by Steve Driskill | Aug 30, 2016 | [sub] inter partes review, PTO Procedure
A showing that the combination of newly added features in substitute claims for inter partes review distinguishes over the prior art is generally sufficient to satisfy the requirements of a motion to amend without addressing whether each newly added feature was...
by Steve Driskill | Aug 15, 2016 | [sub] written description, Adequate Disclosure
Original claims can provide written description support even for later added claims. Here, for example, the asserted claims were found to be supported by the original disclosure even though the specification focused on a narrower embodiment and even though the...
by Steve Driskill | Aug 15, 2016 | [sub] Alice step two, Subject Matter Eligibility
Ordinary data processing steps to achieve a desired result do not transform an otherwise abstract idea into a patent-eligible application under 35 U.S.C. § 101. Here, for example, a method of processing oil well drill state information was found to be...
by Steve Driskill | Aug 10, 2016 | [sub] motivation, Obviousness
A “common sense” reason for adding a missing limitation to the prior art to establish obviousness is generally improper unless the limitation is unusually simple and a reasoned analysis is still provided. Here, for example, adding a search operation to detect...
by Steve Driskill | Aug 9, 2016 | [sub] broadest reasonable interpretation, Claim Interpretation
The PTO must apply the Phillips standard for claim construction whenever a patent expires, even in the middle of proceedings that had previously used the broadest reasonable interpretation standard. Here, for example, the Board’s continued use of the broadest...
