by Steve Driskill | Jun 14, 2016 | [sub] teaching away, Obviousness
Conflict with mere advantages or preferences identified in the prior art does not by itself constitute teaching away from a proposed combination. Here, for example, the prior art’s expressed preference for automated computer systems over trained clinicians was found...
by Steve Driskill | Jun 10, 2016 | [sub] inter partes review, PTO Procedure
The PTO may not change its claim construction in the final written decision of an inter partes review without giving both of the parties an opportunity to respond. Here, for example, the Board’s assertion that its change in claim construction was non-prejudicial...
by Steve Driskill | Jun 6, 2016 | [sub] claim differentiation, Claim Interpretation
The doctrine of claim differentiation does not apply where the claims are not otherwise identical in scope. Here, for example, while certain claims clearly distinguished between “instances” of text strings and “all instances” of the text strings, the claimed invention...
by Steve Driskill | May 31, 2016 | [sub] specification, Estoppel / Disclaimer
Broadening statements in the specification may act as a ceiling for claim breadth. Here, for example, the claimed “communications path” was found to be limited to wired communication at the exclusion of wireless communication because the specification, in asserting...
by Steve Driskill | May 27, 2016 | [sub] prosecution history, Estoppel / Disclaimer
Distinguishing the claimed invention from conventional implementations may constitute a clear disclaimer that one or more claim limitations do not cover such conventional implementations. Here, for example, the claimed “fractionating” was found to exclude conventional...
