Person Having Ordinary Skill in the Blogosphere

Trying to articulate most precisely why an obviousness rejection is flawed can sometimes be a frustrating affair.  You know the Examiner is stepping outside the established bounds of obviousness, and you want to fight back.  You look around at all the legal and technical weapons at your disposal, but you can’t decide which one is … More The KSR quote most likely to slay an obviousness rejection at the PTAB

Treat others as they should be treated.  This includes patent examiners – many of who do a fantastic job.  Be respectful to an examiner, but don’t let an examiner disrespect your client.  Patent prosecution strategy is complex.  At least, it should be complex.  If you are hanging on to hard and fast rules regarding appeals, … More “Patent Examiner, You Aren’t Doing Your Job” – Can You Say That? (an analytics perspective)

Improper hindsight bias is a problem that is ever present in patent law.  Trying to determine whether an invention would have been obvious is an inherently backward-looking analysis.  As a result, reasonable minds can disagree, so knowing the law and how to frame obviousness allows you to be a better advocate for your client. As … More Are You Improperly Arguing Improper Hindsight Bias?

I find ex parte appeal analytics at the USPTO, specifically from LexisNexis PatentAdvisor, to be the most straightforward and informative patent prosecution analytics when it comes to searching language in patent prosecution documents and the resulting impact.  Reviewing patent analytics for language used in Office Actions and Responses to Office Actions can be interesting, but … More Does QAS involvement impact PTAB ex parte appeal win rate?

I frequently like to hedge my bets while prosecuting patent applications before the USPTO.  If an examiner is arguably wrong in rejecting claims based on the prior art, I will often suggest to my clients to argue the rejection without amending the claims, but also to add new dependent claims that distinguish over the cited … More The value of adding new dependent claims during patent prosecution

Please check out my article on IPWatchdog regarding whether arguing that the Examiner has not established a prima facie case of obviousness is an effective strategy according to patent analytics from LexisNexis PatentAdvisor. https://www.ipwatchdog.com/2022/10/05/using-analytics-assess-effectiveness-common-patent-prosecution-practices/id=151863/

A common argument used by patent attorneys and agents during patent prosecution at the USPTO is that a reference teaches away from the claimed invention. This argument is used to traverse an obviousness rejection (side note – teaching away does not apply to anticipation rejections), which is the most common rejection from the USPTO. For … More Do not fall into the teaching away trap