by Steve Driskill | Aug 1, 2016 | [sub] specification, Estoppel / Disclaimer
Both repeated and summation characterizations of the invention serve to limit the invention as a whole. Here, for example, the generic term “node” was found to be limited to a “pager … that operates independently from a telephone network” because the specification...
by Steve Driskill | Jul 28, 2016 | [sub] invocation, Means Plus Function
A coined-term element is generally subject to a means-plus-function interpretation. Here, for example, the claimed “symbol generator” for plotting user locations on a map was found to invoke 35 U.S.C. § 112, ¶ 6 because its name was coined for the purposes of the...
by Steve Driskill | Jul 25, 2016 | [sub] inter partes review, PTO Procedure
The burden of proof does not automatically shift between the petitioner and the patent owner as soon as the PTO institutes an inter partes review. Here, for example, the petitioner’s failure to specifically address a motivation to combine the two prior art references...
by Steve Driskill | Jul 22, 2016 | [sub] specification, Estoppel / Disclaimer
Descriptions that are only tangentially related to characterizations of “the present invention” should not be read as constituting a mandatory claim limitation to be read into the claims. Here, for example, a statement about the “present invention” in the first...
by Steve Driskill | Jul 19, 2016 | [sub] secondary considerations, Obviousness
The claimed combination as a whole can serve as a nexus between the claimed invention and any objective indicia of non-obviousness. Here, for example, the nexus was found to be provided by the combination of a prior art automobile engine and cooling modifications for...
