Overcoming Obviousness Rejections

Introduction This article addresses overcoming obviousness rejections.  This is sometimes referenced as a Section 103 rejection.  Rejections under 35 U.S.C. 103 are the most common basis for an examiner refusing to allow issuance of a patent.  Section 103 states that an improvement or modification that would be obvious to a hypothetical person of ordinary skill…

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Sample Patent Flow Chart

Introduction: Attached below is a sample patent flow chart.  I start with the inventor’s conception of the idea.  Included are the steps to be taken to reach the point of possible patent filing.  (Note my sample assumes that a provisional application is filed first.  However it is possible to go directly to the Non-provisional application…

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Post Patent Grant Challenge

INTRODUCTION: After you have achieved the award of a patent, you may still be subject to challenge from competitors.  You may face a post patent grant challenge.  Part of the America Invents Act or AIA the USPTO established a procedure called a Post Grant Review.  The procedure gives third parties up to 9 months after the grant of…

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Patent Goulash For Engineers

INTRODUCTION: I wrote an article in October 2019 for mechanical engineers (and others) warning that the Section 101 morass, i.e., Patent Goulash, was not limited to computer software business methods or medical diagnostic procedures.  The long twisted arm of unpatentable “natural law” and “abstract ideas” was extending to patent applications for improved mechanical structures.  See Mechanical Engineering and…

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Design Choice and Obviousness

INTRODUCTION: Many of my recent articles have focused upon the whether an innovation is eligible for patent protection.  This has been described as a Section 101 issue.  Many innovations have been barred from patenting as being merely abstract ideas.  This is a confused area.  However, even if an innovation is deemed patentable subject matter, it still needs to be…

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Appealing an Obviousness Rejection

INTRODUCTION: This article looks at appealing an obviousness rejection. It should not be a surprise that there are obstinate patent examiners.  For whatever reason, they can be determined to not allow your patent application.  Frequently, this situation can be experienced when an examiner rejects your application based on alleged obviousness (a 103 rejection).   An assertion of obviousness…

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Patent Classification Review

Introduction Crafting the specification, and particularly the claims, of a patent application can be critical to the chances of ultimate allowance of the application into a legally enforceable patent.  This applies not only to distinguishing your invention over the prior art or confirming that your invention is eligible for patent protection, e.g., not merely an abstract…

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When is Computer Software Patentable?

Software is patentable when and if it can meet the following two part test: Does the claim recite (expressly state or inherently infer) that the software pertains to a method of organizing human activity (including satisfying legal obligations), mathematical formulas or mental processes?  If no, then the software claim is patent eligible.  If yes, then go to the second part…

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Patenting Medical Devices

Introduction This article is meant to be read in conjunction with my article Patentability Swamp.  In this prior article, I have discussed the newest USPTO Guidelines (October 17, 2019) pertaining to patenting matters that may incorporate patent ineligible material under 35 USC Section 101, i.e., natural law, natural products, natural phenomena or abstract ideas.  I have discussed the…

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Patentability Swamp

Introduction I have recently posted a blog of mechanical device patents becoming ensnared in the patentability swamp.  The swamp is the ineligibility of patenting “natural laws”, “natural phenomena” and “abstract ideas”.  This has followed the adverse rulings for patenting medical procedures and business methods. There has been another shift in the ground underlying this swamp.  Further guidance was issued from the USPTO…

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