Arguments of Impermissible Change in the Principle of Operation in Ex Parte PTAB Decisions

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… Read More

PTAB: BRI of Method Claim Requires Conditional Limitation

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… Read More

Patent-Eligibility at the PTAB in Ex Parte Appeals

Far from finding relief from an examiner’s patent-ineligibility rejection at the Patent Trial and Appeal Board (PTAB), patent applicants may find that ex parte appeals are their undoing.  A recent decision in an appeal file… Read More

The PTAB Can Be Aggressive in Raising Patent-Eligibility Under Alice

Entering a new ground of rejection under 35 U.S.C. § 101, the Patent Trial and Appeal Board, deciding an ex parte appeal, applied Alice Corp. Pty. Ltd. v. CLS Bank Int’l. to hold that claims directed to a system and method for… Read More

CAFC Reverses Examiner’s and PTAB’s Broadest Reasonable Interpretation of “Wireless”

In an appeal from the Patent Trial and Appeal Board (PTAB), the Court of Appeals for the Federal Circuit (CAFC) reversed the rejection of independent claims 1, 34, and 43 of U.S. Patent Application No. 09/874,423 in In re Kevin R.… Read More

Upcoming Webinar

Christoper Francis and Charles Bieneman will conduct a two-part webinar to discuss best practices for preparing, and then prosecuting, patent applications at the USPTO. The presentation will dive underneath the basic legal requirements to provide ade…Register

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