Tag Archives: Enablement

Federal Circuit Finds Lack of Enablement in Prior Art Reference

In Raytheon Technologies v. General Electric Corp., Appeal 2020-1755, (Fed. Cir. April 16, 2021), the Federal Circuit reversed a PTAB inter partes review decision that determined Raytheon’s claims, directed to gas turbine engines, are unpatentable as obviousness over “Knip,” a 1987 NASA technical memo. In particular, the court determined that Knip did not enable a … Continue Reading

Mine Your Patent Application and You Might Find a Licensee

By Sandip H. Patel on December 2, 2020 Posted in Appeals, Claim Construction, Interferences, Section 112

A patent interference is an adversarial proceeding where each party is trying deprive its opponent of a patent on an invention that that the Patent Office has already decided is patentable. Long after the AIA became effective to phase out interferences, the Patent Trial and Appeal Board continues to declare and administer them where at … Continue Reading

PTAB Declines to Institute IPR on Immersion’s Indefinite Means Plus Function Claims

By Lynn L. Janulis, Ph.D. on February 17, 2017 Posted in Claim Construction, Institution / Denial, Inter Partes Review, IPR, Section 112, Sections 102/103

Petitioners are finding themselves caught in a Catch-22. The PTAB declares claims too indefinite under Section 112 to construe, but then declines to address the patentabilty of the claims. Section 112 deficiencies are not grounds to challenge a patent in an IPR, but the PTAB has authority to find such deficiencies. Recently, the PTAB decided … Continue Reading

Squeezing the ‘Antibody Exception’ to Written Description into a Corner

By Marshall Gerstein on June 20, 2016 Posted in Biotechnology, Inter Partes Review, Section 112

The PTAB has continued the trend of pushing the -“antibody exception” to written description into an ever-smaller corner. Claims to methods of using antibodies that bind Siglec-15 to impair osteoclast differentiation and inhibit bone resorption were deprived of priority because the parent application failed to disclose the “antigenic regions useful for generating antibodies having the … Continue Reading