by Steve Driskill | May 6, 2014 | [sub] clarity, Indefiniteness
The MPEP’s indefiniteness standard in § 2173.05(e), namely, that “[a] claim is indefinite when it contains words or phrases whose meaning is unclear,” has been approved by the Federal Circuit as a reasonable implementation of the USPTO’s examination responsibility as...
by Steve Driskill | May 1, 2014 | [sub] importing limitations, Claim Interpretation
It is normally improper to construe claims in a manner that would exclude the preferred embodiment, especially where it is the only disclosed embodiment. In particular, “where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to...
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...
