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Patent Office Action Insights

Inspiring Arguments to Overcome Design Choice Rejections in the Mechanical Arts

“Effective ways to overcome obviousness rejections in the domain of ‘Thermal & Combustion Technology, Motive & Fluid Power Systems’ – AU 3740” Mechanical and electromechanical inventions often receive obviousness rejections

Is There Room for Improvement?

“Given the overwhelming public interest” the patent office is seeking feedback on its existing subject matter eligibility guidance, which feedback may be submitted through October 15 via the Federal eRulemaking

Inspiring Arguments to Overcome Design Choice Rejections on Chemical Apparatus Inventions

“AU 1770 – Chemical Apparatus, Separation and Purification, Liquid and Gas Contact Apparatus” Group Art Unit 1770 handles applications for chemical apparatus. As such, this unit typically deals with claims

Measuring Uncertainty

               Current subject matter eligibility jurisprudence is often criticized for increasing uncertainty. However, this raises the question: how can we measure uncertainty to know that it has increased? Until very

In re Killian: Defining “Abstract Idea” and “Inventive Concept”

In re Killian is interesting because the Federal Circuit used that case to respond to the frustration many patent applicants feel regarding the amorphous and unpredictable nature of analysis under

Don’t trust the MPEP, Exhibit 2144.04(VI)(C): Rearrangement of Parts

The position that you should cite to the MPEP rather than case law is widespread among patent prosecutors. For example, in A Case for Citing to the Manual of Patent

Why Innovative Features Don’t Overcome the Prior Art

Having an examiner treat a feature which is absent from the cited art as insufficient to establish patentability can be a serious setback during patent prosecution. If the applicant amends

Inferential Claiming: A Wrongly Maligned Descriptive Tool

Until recently, I did not know that there was a rule against describing a claim element in terms of another device or structure which is not referred to elsewhere in the claim.


One of the things that I think has significantly improved both my quality of life and my success as a patent prosecutor is front-loading patent applications to avoid interminable cycles

How a Solo Inventor can (and Can’t) Identify if Their Patent Attorney is “Great” – Part 2

  This is the second part of a two part series responding to’s Seven Signs You’ve Hired a Great Patent Attorney. In Part 1 I dealt with the first

How a Solo Inventor Can (and Can’t) Identify if Their Patent Attorney is “Great” – Part 1

If you’ve followed my previous posts on how to achieve success in the workplace, you know the importance I place on surrounding oneself with a great team. Hire people smarter

Cert denied in American Axle

Surprisingly, despite a solicitor recommendation, the Supreme Court denied cert in American Axle. I can’t say I’m particularly disappointed. I recorded a video last year (best viewed at 2x speed)

American Axle v. Neapco: Some thoughts (2021)

I want to talk about American Axle v. Neapco.  This is a reasonably interesting case in its own right, since it applied section 101 to driveline propeller shaft manufacturing technology,

Getting Out of Autodrive: Arguments to Overcome “Automatic Means to Replace Manual Activity” in Obviousness Rejections

On its surface, the rationale behind “automatic means to replace manual activity” rejections seems to make sense. Simply replacing work done by hand with the same work performed by a

More than “Just the Facts”: Exploiting Legal Arguments to Your Advantage in Obviousness Rejections

Obviousness rejections enter into the uncanny territory between objective fact and subjective interpretation, contributing to their status as the bane of most patent attorneys’ existence.  On the one hand, prior

Anti Alice Responses to Overcome 101 Rejections in the AI and Simulation Modeling Arts

Group Art Unit 2128 deals with some of the most exciting and cutting-edge technology in the Patent Office, artificial intelligence and simulation modeling. However, patent examiners sometimes reduce these inventions

Request for Continued Examination | Get Off The RCE Merry-Go-Round

“It’s annoying to hear – your arguments are not persuasive or they are considered moot in the view of new grounds of rejection” Negotiating a Patent with the Examiner Patent

Anti Alice Responses to Overcome 101 Rejections in Automated Vehicle Systems Domain

AU 3668 – Computerized Vehicle Controls and Navigation, Radio Wave, Optical and Acoustic Wave Communication, Robotics, and Nuclear Systems Every patent practitioner has faced the same obstacle — a client’s

4 Requirements of a Concrete Intellectual Property Collaboration Agreement

“Having loose ends in an intellectual property collaboration agreement can lead to disaster.” An inventor has a brilliant idea but doesn’t have the capability to implement it. He needs a

In re Stanford: Ruined by a Processor and a Memory

“The Federal Circuit’s focus on an aspect of the Stanford application which no one could (or did) argue was a protectable innovation not only damaged Stanford, it also squandered an opportunity to

How to Write a Winning Patent Office Action Response | USPTO

Prosecution is the bread and butter of the patent lawyer’s practice. Because you will likely spend most of your time during the workday reading and responding to office actions, honing

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide

“If MPEP is the rule book, Arguminer is the practical guide to how patent prosecutors have applied those rules (and more) to overcome patent rejections.”  Area of help (Broad) Area

Celebrating Excellence: Women Patent Prosecutors with Remarkable Track Records in 101

We used our extensive database of patent prosecution documents to identify patent attorneys and agents with the highest performance, based on their ability to overcome 101 rejections, considering both granted

Three Steps To Achieve Effective Delegation | The Gamechangers

“If you want to do a few small things right, do them yourself. If you want to do great things and make a big impact, learn to delegate.”   –

3 Anti Alice Responses to Overcome §101 Rejections in Molecular Biology

Patent lawyers love the overused quote from Diamond v. Chakrabarty, “everything under the sun invented by man.” Forty years later, this remains good law in most situations. However, Mayo v.

5 Tips to Having a Good Patent Examiner Interview

Interviewing with the patent examiner can provide many benefits to your clients. Oral communication is much more efficient than written communication. As a result, you can often cover more ground

How To Effectively Analyze Office Actions

“For the things we have to learn before we can do them, we learn by doing them.” – Aristotle After stepping out of law school, passing your patent bar exam,

3 Obvious Mistakes to Avoid when Responding to Office Actions

It’s natural to trust the examiner and approach things like a lawyer while prosecuting patent applications. However, it may not always be the right course of action to get the

5 Reasons Why Your Patent Application Gets Rejected

Did you know - "Behind every 102/103 type rejection lies a 112 rejection?" Take a look at patent rejection from patent prosecutor's eye. As a bonus, you shall learn 2 effective ways to deal with the patent rejections!

3 Anti Alice Responses to Overcome 101 Rejections in Printing and Measuring Domain

In some technology classes, subject matter eligibility rejections are par for the course, but in others, they can come as more of a surprise. Take, for example, the field of