Person Having Ordinary Skill in the Blogosphere

Don’t Let the USPTO Get Away with Speculating that a Feature of an Invention is Obvious

March 28, 2023

One of the most frustrating fact patterns an applicant or patent attorney can face is when you are up against an examiner who thinks everything is obvious. This feature – obvious. That feature – obvious. Everything in the application – obvious. Even when the Examiner does not have sufficient evidence to back up these assertions. … More Don’t Let the USPTO Get Away with Speculating that a Feature of an Invention is Obvious

Does QAS involvement impact PTAB ex parte appeal win rate?

January 3, 2023

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?

The value of adding new dependent claims during patent prosecution

October 25, 2022

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

Using Analytics to Assess the Effectiveness of Common Patent Prosecution Practices

October 25, 2022

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/

Do not fall into the teaching away trap

August 25, 2022

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

PTAB patent analytics say not to argue a reference is non-analogous

August 15, 2022

Over the past couple of years I have really taken an interest in patent analytics, mainly using PatentAdvisor from LexisNexis. I figured out that if you search by different codes using the file wrapper search that you get guidance about how effective arguments are on Ex Parte Appeal within the USPTO at the PTAB. I … More PTAB patent analytics say not to argue a reference is non-analogous

Aren’t there enough patent nerds blogging?

August 14, 2022

No! The answer is definitely no!! Everyone has a relatively narrow career path, and everyone hears a limited amount of voices. I have worked at the same firm my entire career, and because of this, I have frequently read US patent law blogs to expand my perspective. Over the years, there have been a plurality … More Aren’t there enough patent nerds blogging?