K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC (Fed. Cir. 2014) (P) – Assertion of common knowledge that a limitation is well-known

by Steve Driskill | May 27, 2014 | [sub] examination, PTO Procedure

The PTO is required to produce factual evidence to show that a given limitation is known in the art. Although “an assessment of basic knowledge and common sense” may factor into the obviousness rationale for making a proposed combination of known elements, such...

IN RE WALLEN (Fed. Cir. 2014) (NP) – The PTO’s evidentiary burden

by Steve Driskill | Apr 23, 2014 | [sub] examination, PTO Procedure

When the PTO makes “core factual findings in a determination of patentability,” it “cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense.” Instead, the PTO “must point to...

TEMPO LIGHTING, INC. v. TIVOLI, LLC (Fed. Cir. 2014) (P) – Prosecution history in claim interpretation at the PTO & third-party requester cross-appeals

by Steve Driskill | Feb 10, 2014 | [sub] broadest reasonable interpretation, [sub] reexamination, Claim Interpretation, PTO Procedure

(1) Prosecution history serves as intrinsic evidence for purposes of claim construction even “in construing patent claims before the PTO,” such that an “examiner err[s] by resorting to extrinsic evidence that [is] inconsistent with the more reliable intrinsic...

NOVARTIS AG v. LEE (Fed. Cir. 2014) (P) – Patent term adjustment calculations under request for continued examination practice

by Steve Driskill | Jan 15, 2014 | [sub] patent term adjustment, PTO Procedure

For the purposes of calculating the patent term adjustment under § 154(b), the time between allowance and issuance is not “time consumed by continued examination” and therefore not to be excluded from adjustments given to the patentee under § 154(b)(1)(B)(i)....

GARRIDO v. HOLT (Fed. Cir. 2013) (NP) – Waiver of arguments absent from opening brief on appeal before PTAB

by Steve Driskill | Oct 22, 2013 | [sub] appellate, PTO Procedure

Arguments not raised in an opening brief will generally be considered to have been waived. Background / Facts: The reexamination application on appeal here from the PTAB is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand....

IN RE BIEDERMANN (Fed. Cir. 2013) (P) – What constitutes a new rejection by the PTO

by Steve Driskill | Oct 18, 2013 | PTO Procedure

“[M]ere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection.” When the PTO “relies on new facts and rationales not previously raised,” this constitutes a new rejection “to which...