Patent professionals often break down claim elements into smaller portions—whether for creating claim charts, mapping claims to prior art, or mapping them onto an allegedly infringing device. While this practice can be useful, it carries inherent risks: improperly dissecting claim elements can inadvertently alter their scope. Even small missteps can lead to unintended consequences, such…

When drafting patent applications, the specter of a “design choice” rejection looms large for practitioners. According to the Manual of Patent Examining Procedure (MPEP) § 2144.04, a rejection based on design choice can arise when the examiner asserts that the claimed feature represents an arbitrary selection between alternatives that perform the same function in substantially…

In honor of the holidays, we return to an innovation near and dear to any chocolate lover’s heart. The invention relates to a case we covered almost four years ago https://www.mriplaw.com/blog/0vnots3n6cfizyuoaeteychb506vfa“Carl, the legendary drinking chocolate snowman from Kate Weiser Chocolate! Carl is made of a dark chocolate shell, and filled with hot cocoa and mini…

At the USPTO, patent applications are assigned an examiner that continues with the case through issuance. As public data confirms, examiners have widely varying approaches. For example, even examiners in the same art unit can have widely varying allowance rates. Commentators often lament this variation as a substantial problem where the assignment of an application…

A solid understanding of how dependent claims can limit structure in relation to method claims is something all patent professions should understand, even quality assurance specialists at the USPTO. Unfortunately, a recent appeal case illustrates that some still struggle with this concept. This misconception leads to unnecessary rejections, so perhaps it is worth addressing in…

In patent prosecution, we’ve often encountered situations where claim language, either explicit or implicit, seems to describe a limitation negatively, but the phrasing is not immediately obvious. The distinction between a positive limitation and a negative limitation may seem straightforward based on the words used, but things can get complicated. And the proper interpretation, whether…

When drafting a patent application, one approach to differentiate prior art may include precision in defining and using terms in the specification. This can become somewhat tricky when prior art intermixes terms that the applicant wishes to distinguish. For example, the inventor may consider two terms as having a subtle distinction that is particularyly relevant…