The primary goal for claim drafting is clarity. Means plus function claims should include the term “means” plus one function. In the present case, the patentee claimed a “release means for retaining…”. The Court construed the claim to those embodiments in the specification related to both the releasing and retaining functions.
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A few years ago, the Supreme Court decided KSR a landmark case discussing the standard for determining whether an invention is obvious. Before KSR, the Patent Office required examiners to find a teaching, suggestion or motivation (referred to as the TSM test) in the prior art in order to reject a claim as being obvious. In KSR, the Supreme Court rejected the TSM test as the sole test for determining obviousness. They acknowledged that the TSM test is a good indicator of obviousness but it should not be the sole test. The Supreme Court felt that rigid application of the TSM test caused examiners to disregard “common sense” in favor of the TSM test. KSR v. Teleflex, 550 U.S. 398 (2007).
Examination of a patent application is different from litigation. In litigation, two opposing sides argue view points favorable to their respective clients. During patent examination, the Examiner is a government employee supposedly trying to make a fair evaluation as to whether the claimed invention should be granted a patent protecting it, under various statutory and administrative requirements.
After brainstorming for relevant keywords and finding relevant classes and subclasses related to your invention, it is now time to search the United States Patent Office databases. However, it is important to understand the limitations of the two databases before you begin.The US Patent Office website has two different databases, specifically, issued patents and published […]
The Patent Office classifies each patent document within one or more classes. Within each class, there are further divisions which relate to finer distinctions. When searching within a particular class and subclass, irrelevant references are also reduced or eliminated since references in other art units will not show up on the search results.