Patent practitioners who regularly face §101 rejections at the USPTO know that arguing a technical improvement can be a workable approach for overcoming an abstract idea-based rejection. But just as often, practitioners find themselves caught in a frustrating trap: the USPTO agrees that there’s an improvement—but only to the abstract idea itself. And thus, the
PTAB Claim Interpretations In AI Fields Might Keep You Awake At Night
By John Russell
In rapidly evolving fields like artificial intelligence, the precise meaning of claim terms can make—or break—a patent. As practitioners know, clarity in terminology ensures both robust protection and smooth prosecution. However, the issues are clarity often only crystalize long after drafting. Below, we explore how rapidly evolving technologies such as in AI cases result in…
Traversing Official Notice: How Much Is Enough?
By John Russell
In a previous post, we explored the limitations on the use of Official Notice in patent prosecution, emphasizing that while this tool can expedite examination, it is only appropriate when the noticed fact is truly capable of instant and unquestionable demonstration. But what happens when the Applicant disagrees with the use of Official Notice?…
When “Common Knowledge” Weakens a Rejection: A Critical Look at Examiner Assertions
By John Russell
As patent prosecution professionals, we are all familiar with the sometimes vexing challenge of responding to examiner rejections, particularly when those rejections hinge on claims of “common knowledge.” While examiners may sometimes invoke this term to support an obviousness argument or to make the obviousness rejection seem even more daunting to overcome, patent professionals should…
Navigating Claim Amendments at the USPTO When Support is Open to Attack
By John Russell
When amending patent claims during prosecution, practitioners must ensure all changes adhere to 35 U.S.C. § 112(a)’s written description and enablement requirements. Amendments must derive explicit or inherent support from the original specification and figures, avoiding the introduction of new matter. As emphasized in 37 CFR 1.83, every element in the claims must be illustrated…
Using Design Patents as Prior Art in Utility Applications: What Patent Prosecutors Need to Know
By John Russell
Obviousness rejections under 35 U.S.C. § 103 require examiners to establish that a claimed invention would have been obvious to a person of ordinary skill in the art (POSITA) based on prior art references. Typically, prior art in obviousness rejections comes from utility patents, published applications, or other technical references. However, design patents can also…
Understanding the Limits of Official Notice in Patent Prosecution
By John Russell
In the patent prosecution process, official notice can play a supporting role in streamlining examination by allowing examiners to assume certain facts without requiring formal evidence. However, as with every tool in the examiner’s kit, there are limits to its proper use—limits that every practitioner should understand and vigilantly monitor.Specifically, official notice refers to facts…
Advancing Technical Benefit Arguments in Patent Prosecution
By John Russell
In patent prosecution, sometimes an examiner seems to sidestep well-crafted arguments by dismissing the technical benefits of a claimed feature simply because those benefits are not explicitly recited in the claim. Despite a thorough explanation of how a particular difference yields advantages over the prior art, an examiner may reduce the issue to a narrow…
Managing Dependent Claims in Appeal Briefs: Avoiding the Claim Differentiation Pitfall
By John Russell
When crafting an appeal brief, even a seemingly minor detail can become a stumbling block. In previous posts on www.mriplaw.com, we have discussed how the PTAB scrutinizes your specification to ensure that your arguments remain consistent with the record—even if the examiner didn’t initially raise any such issues. Today, we focus on another subtle trap:…
The Uncertainty in "At Least One of A and B": Lessons from Superguide and the PTAB
By John Russell
Patent professionals know that even seemingly straightforward words and phrases can become battlegrounds for outcome-determinative arguments. In patent law, where every word in a claim matters, courts and administrative bodies must often dissect common phrases that, in everyday life, we interpret effortlessly using context. One such phrase that has led to significant legal debate is…