by Steve Driskill | Feb 12, 2015 | [sub] prosecution history, Estoppel / Disclaimer
A patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation. Here, for example, statements on the record that a “personal identification number” distinguishes over the prior art by being user- rather than...
by Steve Driskill | Feb 10, 2015 | [sub] teaching away, Obviousness
In order for a prior art reference to teach away from the claimed invention, it must criticize or otherwise discourage use of the claimed invention rather than merely provide an alternative. Here, for example, a reference’s mere emphasis that the absence of due dates...
by Steve Driskill | Feb 9, 2015 | [sub] breadth, Indefiniteness
Even an otherwise improper open Markush group may be interpreted as a definite closed group when the intrinsic record is reasonably clear in indicating what the claim intended to cover. Here, for example, a semiconductor substrate claimed as being “selected from the...
by Steve Driskill | Feb 4, 2015 | [sub] overlapping jurisdiction, PTO Procedure
The PTO’s decision whether or not to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit. Here, for example, the Federal Circuit found that it lacked jurisdiction to review the PTO’s decision to institute IPR, even after a final decision....
by Steve Driskill | Feb 2, 2015 | [sub] consistency, Claim Interpretation
It is generally improper to impose requirements on claim terms that are foreign to what the specification describes as the invention’s relevant advance over the prior art. Here, for example, it was found to be improper to require the claimed “virtual” files to be...
