Four Boilerplate Responses For Responding To Subject Matter Rejections Based On The USPTO Hypotheticals

This is a summary of the sample argument sections of a longer article based on the USPTO’s subject matter-based hypotheticals.Hypothetical 1: Removing Malicious Code From EmailsWhen responding to a rejection at the USPTO, you might try a response along these lines. The current claim is similar to hypothetical 1 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In…

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The USPTO’s Alice-Based Patentable Subject Matter Hypotheticals With Boilerplate Responses

The USPTO recently published hypotheticals to help guide applicants when defining patentable subject matter. Instead of just a case law review, the office provided claim drafting examples. While not legally binding, these provide a helpful roadmap for practitioners when addressing subject matter rejections. I’ve parsed the hypotheticals below and for each one, provided a sample argument that practitioners might…

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The Federal Circuit Breathes More Life Into Claim Preambles

By Stephen B. SchottClaim preambles are given little weight in claim interpretation, which is seemingly incongruous with the amount of scrutiny courts give to all the other words in patent claims. But the Federal Circuit recently breathed just a little more life into preambles in Pacing Technologies, Inc. v. Garmin International, Inc.The decision focused on US patent 8,101,843 claim 25:…

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Towards More Reliable Trial Court Decisions On Claim Construction

By Stephen B. Schott The Federal Circuit, which has exclusive domain over patent-related appeals, overrules district court findings at an alarming rate. The Supreme Court has decided that turnabout is fair play. Continuing a string of reversals or at least in this case remands, the Supreme Court recently overturned years of Federal Circuit precedent and outlined a new standard…

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