The ex parte Appellant successfully argued that the Examiner had not established a prima facie case of obviousness by failing to adequately explain why one skilled in the art would have made the proposed modification in Ex parte T…
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In Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V., No. 2016-1996, 2017 U.S. App. LEXIS 13909 (Fed. Cir. Aug. 1, 2017), the Federal Circuit vacated and remanded a PTAB decision, holding that an obviousness rej…
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The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter. Of particular interest given the claim language, the Appellant was unsuccessful with argum…
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How is the USPTO’s Patent Trial and Appeal Board (PTAB) addressing patent-eligibility rejections under 35 U.S.C. § 101 in ex parte appeals? What arguments work, and what arguments fail, when you are trying to persuade the PTA…
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Citing KSR Inti Co. v. Teleflex Inc, the PTAB in Ex Parte Mattisson (Appeal No. 2016-004484, April 14, 2017) agreed with the ex parte Appellants and reversed the Examiner’s rejection based on insufficient rationale to support an…
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Many practitioners view words of approximation, such as “substantially,” as useful tools to broaden claim language. MPEP §2173.05(b) states that words of approximation are acceptable if one of ordinary skill in the art would…
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Claims to managing social media privacy survive the Mayo/Alice patent-eligibility test, says the PTAB, reversing an Examiner’s rejection under 35 U.S.C. § 101. Ex parte Drake Sutton-Shearer, Appeal 2015-003977, Application 1…
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Lest anyone think that patent-eligibility determinations at the USPTO’s Patent Trial and Appeals Board (PTAB) are easy, even in appeals in ex parte patent prosecution, consider the recent case of Ex parte Plondke, Appeal 2016-00…
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In roughly the last month, the PTAB has decided 41 ex parte appeals involving arguments that the proposed modification in an obviousness rejection impermissibly changes the principle of operation of the primary reference. By way o…
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Thirty-five PTAB decisions cite Ex parte Schulhauser since that case was designated precedential in October 2016. Of those thirty-five decisions, all except for one held that the broadest reasonable interpretation of a method cl…
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