I recently had a debate with a colleague about whether it is preferable to cite the Manual of Patent Examining Procedure (MPEP) or to court/board decisions in support of a patentability argument. Although this is an open question, in my experience, citing the MPEP has been more effective. Furthermore, almost every practitioner with whom I…
The Benefits Of Efficient Responses And Approaches For Efficiently Responding To Rejections Under 35 U.S.C. §103
There is an old saying that “sometimes, less is more.” This advice has particular applicability to patent prosecution where, with each word written, an Applicant risks generating argument estoppel. Additionally, each written word presents with it an inherent risk of introducing error. Further, extended arguments are generally more expensive since they require additional time to…
Announcing My New Law Firm – The Law Office Of Michael E. Kondoudis
My apologies, everyone, for the infrequency of the postings on this blog as of late, but there has been quite a bit going on. After months of preparation, I am pleased to announce that I have started my own practice. It is both a challenging and exciting endeavor, and those are two good reasons to…
Obviousness After KSR – The U.S. Patent Office’s New Published Examination Guidelines
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…
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…