Traversing a Design Choice Rationale Asserted in an Obviousness Rejection

Design Choice is a type of rationale utilized within the context of an obviousness rejection (35 USC 103).  This article discusses a recent BPAI decision which articulates a rigorous factual standard for establishing a design choice rejection.   Ex parte Gunasekar – Recent BPAI Decision The BPAI in Ex parte Gunasekar, a somewhat recent decision [...]

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Teaching Away | Obviousness

“Teaching away” is one of the most persuasive arguments an Applicant may further during patent prosecution to traverse an obviousness rejection (35 USC 103).  To successfully implement a teaching away argument, a number of items should be considered to determine whether a prior art reference would indeed teach away from the claimed invention.   Background [...]

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Advantages of a Provisional Patent Application

1)   Patent Term Extension:    For applications filed on or after June 8, 1995, the term of a patent (other than a design patent) is 20 years from the date that patent application was filed.   (MPEP 2701 – Patent Term).    More specifically, as the 20 year patent term is measured from the non-provisional patent [...]

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Design Patents vs. Utility Patents and Trademarks

Design Patents and Utility Patents | Overlap Design patent protection and utility patent protection may be available simultaneously.  For example, utility patent protection may obtained to protect various functions related to a laptops operation (e.g., components/processes), while design patent protection may be obtained for some aspect(s) of the laptops appearance (e.g. shape of case, etc.). [...]

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Trademark vs. Patent

What do trademarks and patents protect?  This article broadly answers the aforementioned question by discussing the types of items which are protected by trademarks and patents.  Additionally, various items (e.g., creation, requirements, procurement time, duration of rights, etc.) related to both trademarks and patents are discussed herein. Definition | Trademark The United States Patent and [...]

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Prior Art | Patent

What is “Prior Art”? Prior art may be broadly described as information made publicly available prior to a specified date which may be used to analyze the patentability of an invention further to 35 USC 102 and 35 USC 103 (novelty and obviousness, respectively).  The exact definition of what constitutes a “prior art” reference may be found [...]

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Patent Claim Drafting Tips

Relative Terminology When used appropriately, it is generally preferred that claims employ relative terminology in view of the broadening advantages that such terms provide.  However, if relative terms are employed in a claim, an Applicant must be aware of potential definiteness issues (35 USC 112, Second Paragraph).  More specifically, MPEP 2173.05(b) states: “the fact that claim [...]

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Drafting Patent Claims

Parts of a Claim / Transitional Phrase Unless there is a compelling reason otherwise, the transitional term “comprising” should always be used in a patent claim as it is “inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” (see MPEP 2111.03 – Transitional Phrases)  Further, MPEP 2111.03 states that the transitional [...]

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Utility Patent Application

What is a Utility Patent? Of the several different types (e.g., utility patent, design patent, and plant patent) of patent documents issued by the United States Patent and Trademark Office (USPTO), utility patents are the most popular.  More specifically, as the greatest number of patents which are granted by the USPTO are utility patents, this patent [...]

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Non-Final Office Action | Patent Application

What is a Non-Final Office Action? A non-final office action is a communication issued by the United States Patent and Trademark Office (USPTO) in which the Applicant must “reply and request reconsideration or further examination, with or without amendment” if the office action is adverse in any way.  (see 37 CFR 1.111 – Reply by [...]

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