The U.S. Patent Office has just published new examination guidelines for determining obviousness in light of the Supreme Court’s recent decision in KSR International Co. v. Teleflex Inc. The published guidelines can be found here. Ramifications of this important decision were discussed in this earlier post. If you like this post, why not grab the…
Category: Prosecution Strategy
A Technique To Assert The Patentable Weight Of A Claim Preamble
Generally, during the examination of an application, an Examiner attempts to rebut the novelty and non-obviousness of a claim by identifying, in the prior art, teachings or suggestions of each feature of that claim. Some claim features, however, may be ignored in this analysis. These features are said not to be entitled to any “patentable…
Comments On And Practical Suggestions For Improved After Final Practice
This post concerns “after final practice,” that is, practice after a final Office Action has been issued in an application. A brief survey of some basics of after final practice follows, along with some suggestions, sample paragraphs, and practice tips for after final practice. Prosecution After Final Rejection is Restricted The most significant aspect of…
Practical Prosecution Strategies In View Of The U.S. Patent Office’s New Continuation Rules – Part I
On August 21, 2007, the long awaited final rules (“the new rules”) substantially changing (limiting) continuation practice and requests for continued examination (RCEs) were published. This post is the first of a series discussing practice suggestions and prosecution strategies to consider in response to these changes. A Summary of the New Rules Regarding Continuation Practice…
Practical Take Aways Regarding “Associated” Applications In View Of McKesson
In McKesson Information Solutions, Inc., v. Bridge Medical, Inc., No. 06-1517 (Fed. Cir. 2007), the Federal Circuit affirmed a dismissal of an infringement suit after finding that the patent in suit was unenforceable due to inequitable conduct. In doing so, the Federal Circuit reaffirmed that a patent may be rendered unenforceable for inequitable conduct if…