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...
by Steve Driskill | Apr 23, 2014 | [sub] motivation, Obviousness
“[W]here the general conditions of a claim are disclosed in the prior art, … it is not inventive to discover the optimum or workable ranges by routine experimentation.” Background / Facts: The patent on appeal here from reexamination at the PTO is directed to air or...
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...
by Steve Driskill | Apr 22, 2014 | [sub] importing limitations, Claim Interpretation
A definition section in the specification will almost certainly be taken as controlling, even, as here, where it contradicts the preferred embodiment. If used at all, extra care and attention should be taken to draft definitions only to the extent absolutely...
by Steve Driskill | Apr 22, 2014 | [sub] obviousness-type, Double Patenting
A patent that issues after but expires before another patent still qualifies as a double patenting reference for that other patent. This expiration-date centric analysis is a departure from the traditional issue-date centric analysis. “[L]ooking to patent issue dates...
