In the chemical arts, method claims can sometimes seem like an afterthought. Oftentimes presented simply to fill out a claim set, they generally play “second fiddle”
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Even a casual, unscientific survey of recent PTAB decisions shows a clear and unmistakable trend: shorter decisions, with little or no discussion of issues not specifically
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A typical Markush group is structured as “selected from the group consisting of A, B, and C.” The language is closed in nature due to the
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In Ex parte Kano (Appeal No. 2021-004640), the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s finding of obviousness that was premised on a nonoverlapping
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In Ex parte Scheich (Appeal No. 2021-003495), the examiner rejected the claims as obvious over a combination of two references. The PTAB reversed. Independent claim 1
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Ex parte Myers is a recent decision of the Patent Trial and Appeal Board (PTAB) addressing enablement and written description of a claim amended to recite
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In Ex parte Watabe, No. 2020-005979 (P.T.A.B. Sep. 28, 2021), the Patent Trial and Appeal Board (PTAB) reversed an Examiner’s rejection of claims directed to a
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In Ex parte Zhang (Appeal No. 2021-005022), the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s finding of obviousness that was premised on an unappreciated
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In Ex parte Price (Appeal 2021-003888), the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejection because of Appellant’s successful showing of unexpected results.
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In Ex parte Ruvolo (Appeal No. 2021-001708), the examiner rejected nucleotide claims as anticipated under § 102. The PTAB reversed. Independent claim 12 recited (in part):
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