BOSE CORPORATION v. SDI TECHNOLOGIES, INC. (Fed. Cir. 2014) (NP) – Physical vs. paper relationships among claim components

by Steve Driskill | Mar 14, 2014 | [sub] claim context, Claim Interpretation

On the one hand, this is a good case to cite during prosecution when facing a broadest reasonable interpretation based on the examiner drawing an arbitrary box around certain components in the prior art and labeling that box with the name of the claim element at...

E2INTERACTIVE, INC. v. BLACKHAWK NETWORK, INC. (Fed. Cir. 2014) (NP) – Prosecution disclaimer based on argued dstinctions over the prior art

by Steve Driskill | Mar 12, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Unambiguously arguing that the claimed invention is allowable over certain prior art because the prior art fails to disclose a particular feature implies that this feature is a required part of the claimed invention, and is sufficient to satisfy the clear and...

ANCORA TECHNOLOGIES, INC. v. APPLE, INC. (Fed. Cir. 2014) (P) – Inaccurate examiner statements and the sliding scale of claim term disclaimer

by Steve Driskill | Mar 3, 2014 | [sub] prosecution history, [sub] specification, Estoppel / Disclaimer

For disclaimer to attach to a given claim term, there must be a clear and unmistakable disavowal of claim scope by the applicant. Comments by other parties, such as the examiner in his or her reasons for allowance, are not by themselves sufficient to rise to the level...

CYBERFONE SYSTEMS v. CNN INTERACTIVE GROUP (Fed. Cir. 2014) (NP) – Patent eligibility of data categorization and storage implemented by computers

by Steve Driskill | Feb 26, 2014 | [sub] computer-related, Subject Matter Eligibility

“[T]he well-known concept of categorical data storage, i.e., the idea of collecting information in classified form, then separating and transmitting that information according to its classification, is an abstract idea that is not patent-eligible.” The fact that a...

IN RE HOFFMANN (Fed. Cir. 2014) (NP) – Acknowledging need for further experimentation

by Steve Driskill | Feb 25, 2014 | [sub] enablement, Adequate Disclosure

While a fact and technology specific case, it is worth noting that characterizing certain calculations as “preliminary” and discussing the need for further experimentation may be detrimental to enablement. Background / Facts: The application on appeal here from...