by Steve Driskill | May 8, 2014 | [sub] conception, Inventorship
Inventorship requires contributions above the conventional state of the art. A co-inventor “must contribute in some significant manner to the conception or reduction to practice of the invention [and] make contribution to the claimed invention that is not...
by Steve Driskill | May 8, 2014 | [sub] biotech, Subject Matter Eligibility
In general, “clones” which are identical genetic copies of a cell, cell part, or organism are nonstatutory subject matter under 35 U.S.C. § 101, unless the claims “describe clones that have markedly different characteristics from the donor animals of which they are...
by Steve Driskill | May 6, 2014 | [sub] clarity, Indefiniteness
The MPEP’s indefiniteness standard in § 2173.05(e), namely, that “[a] claim is indefinite when it contains words or phrases whose meaning is unclear,” has been approved by the Federal Circuit as a reasonable implementation of the USPTO’s examination responsibility as...
by Steve Driskill | May 1, 2014 | [sub] importing limitations, Claim Interpretation
It is normally improper to construe claims in a manner that would exclude the preferred embodiment, especially where it is the only disclosed embodiment. In particular, “where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to...
by Steve Driskill | Apr 25, 2014 | [sub] invocation, Means Plus Function
This now appears to be the seminal case regarding invocation of means-plus-function limitations under 35 U.S.C. § 112, ¶6. In summing up the case law to this point, it states that “[t]hese cases teach that, if a limitation recites a term with a known structural...
