by Steve Driskill | Dec 9, 2014 | [sub] terminal disclaimer, PTO Procedure
The existence of a mistake by an attorney, other than the type falling under § 255 or a lack of actual authority from a client, is not sufficient grounds to withdraw a terminal disclaimer. Here, for example, a miscommunication about the desire to file a terminal...
by Steve Driskill | Dec 8, 2014 | [sub] corresponding structure, Means Plus Function
Although a means-plus-function element may be illustrated in black box form, the corresponding structure must be clearly articulated in the specification—the black box itself is not sufficient—and clearly distinguished from other embodiments in order to provide...
by Steve Driskill | Dec 5, 2014 | [sub] Alice step two, Subject Matter Eligibility
In contrast to claims that are directed to “nothing more than the performance of an abstract business practice on the Internet or using a conventional computer,” claims that are “necessarily rooted in computer technology in order to overcome a problem specifically...
by Steve Driskill | Dec 4, 2014 | [sub] invention by another, Prior Art
Absent the application of a statutory exception (e.g. § 103(c)), secret § 102(g) prior art may serve as prior art under § 103 for the purposes of establishing obviousness. Here, for example, the accused infringer’s prototype, which was conceived before the patented...
by Steve Driskill | Dec 4, 2014 | [sub] direct, Infringement
A manufacturer can directly infringe an apparatus claim if its system or product is “reasonably capable” of satisfying the claim elements even though it may also be capable of non-infringing modes of operation. Here, for example, a Wi-Fi compliant device was found to...
