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...
by Steve Driskill | May 26, 2016 | [sub] claim context, Claim Interpretation
Claim language that “is tailored to, characterizes, and delimits” a claim element may be interpreted as an intrinsic requirement of that element rather than expressing a mere possibility. Here, for example, specifying that the claimed picture frame / display is...
