by Steve Driskill | Feb 24, 2014 | [sub] prosecution history, Estoppel / Disclaimer
Although the Federal Circuit has “cautioned against indiscriminate reliance on foreign file histories,” it has acknowledged that “statements made before foreign patent offices are sometimes relevant to interpreting the claims.” This is particularly true where, as...
by Steve Driskill | Feb 21, 2014 | [sub] prosecution history, Estoppel / Disclaimer
An examiner’s interpretation of the prior art by itself is not sufficient to warrant prosecution history disclaimer or estoppel. Background / Facts: The patent being asserted here is directed to protecting substrates – for example, manhole covers, underground tanks,...
by Steve Driskill | Feb 12, 2014 | [sub] invention by another, Prior Art
The doctrine of inurement, defining when the activities of others inure to the benefit of an inventor, does not require that the prior inventor under § 102(g)(2) expressly request or direct a non-inventor reducing the invention to practice to perform the reductive...
by Steve Driskill | Feb 10, 2014 | [sub] broadest reasonable interpretation, [sub] reexamination, Claim Interpretation, PTO Procedure
(1) Prosecution history serves as intrinsic evidence for purposes of claim construction even “in construing patent claims before the PTO,” such that an “examiner err[s] by resorting to extrinsic evidence that [is] inconsistent with the more reliable intrinsic...
by Steve Driskill | Jan 27, 2014 | [sub] motivation, Obviousness
Although probably dicta, it is encouraging that the court “caution[ed] the Board and the PTO that [obviousness] reasons must be clearly articulated” and that “[i]t is not enough to say that there would have been a reason to combine two references because to do so...
