Author Archive | Chris Francis

PTAB: BRI of Method Claim Requires Conditional Limitation

Thirty-five PTAB decisions cite Ex parte Schulhauser since that case was designated precedential in October 2016.  Of those thirty-five decisions, all except for one held that the broadest reasonable interpretation of a method claim does not require conditional limitations.  The one exception is Ex parte Hehenberger, Appeal No. 2015-007421 (Jan. 31, 2016). By way of […]

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CAFC Rejects Construction of “Controller” in Patent Claim

In a de novo review of claim construction, the Federal Circuit rejected the District Court’s (ILND) claim construction of the patent claim term “controller” in The Chamberlain Group, Inc. v. Techtronic Industries Co. LTD (Fed. Cir. 2017). The District Court had granted the plaintiff-appellee’s motion for a preliminary injunction.  The Federal Circuit disagreed with the District […]

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PTAB Broadest Reasonable Interpretation: “in response to” Means “subsequent to”

In an ex parte appeal, the PTAB upheld the Examiner’s broadest reasonable interpretation of the patent claim language “in response to” as merely meaning “subsequent to.”  The decision is Ex parte Youngri Kim et al. (PTAB Jan 19, 2017). The subject patent application is drawn toward an ebook reader, and the claim language at issue […]

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PTAB Upholds Indefiniteness Rejection of Inferentially Claimed Element

One of the first rules often taught to a young patent attorney, especially for mechanical apparatus claims, is to avoid inferential claiming, i.e., avoid introducing a new element in the middle of a recitation of another element.  This type of drafting can lead to ambiguity about whether this new term is positively recited, and thus […]

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PTAB Applies Precedential Opinion: Broadest Reasonable Interpretation Excludes Conditional Limitation

Here is an important reminder that so-called conditional claim limitations may not be accorded patentable weight, i.e., may be useless in arguing against a patent examiner’s prior art rejections.  In applying a precedential PTAB opinion, a PTAB panel recently affirmed an examiner’s rejection stating that a patent claim was obvious over a combination of references, […]

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PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combine the references because there is nothing that would “tie” the approaches of the references together. The […]

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