WHIPgroup successfully persuaded the PTAB to reverse rejections for a computer-implemented invention. The invention is directed to a control system for a materials separation process that can be used for pulp and paper production. The claims were rejected for lack of enablement, indefiniteness, and anticipation. On Appeal, WHIPgroup argued the disclosure should be presumed to be enabled and a patent need not teach, and preferably omits, what is well known in the art. In addition, WHIPgroup argued the inventors are skilled in the art and the Office failed to provide any evidence rebutting their teachings in the specification. Finally, WHIPgroup argued that programming creates a new machine once it is programmed and the Office failed to give patentable weight to these limitations. The PTAB Board agreed and reversed all rejections. This case demonstrates that examiners continue to struggle with computer-implemented inventions. Oral argument was held on April 25 from WHIPgroup’s video hearing room, which provides a cost-effective alternative to in-person arguments in Washington, D.C.
By Robert D. Keeler There are multiple strategies for addressing Final Office Actions at the USPTO. WHIPgroup already explained why examiners like RCEs (and why you shouldn’t). One alternative to an RCE – an Appeal [Read More…]
Owning Your Brand: Essential Steps For Successful Trademark Protection Walter B. Welsh, Esq., Member 9/20, 10:15 am in Sheraton Grand, Stamford, CT Starting a company? Launching a Product? Re-branding? Securing the right to use and [Read More…]
Protecting Your Business With Strategic Patenting Walter B. Welsh, Esq., Member 9/20, 2:30 pm in Sheraton Grand, Stamford, CT Are you innovating? Launching a new software product? Improving a supplier’s product? Obtaining economically valuable patent [Read More…]