November 17, 2017
Authored and Edited by Christopher B. McKinley; Paula E. Miller
In Ex Parte Schulhauser, No. 2013-007847 (P.T.A.B. April 29, 2016), the PTAB affirmed an examiner’s rejection of a claim directed to a method for monitoring heart conditions. The claim, however, contained a condition precedent that, under the broadest reasonable interpretation, did not require most of the claimed steps. The applicant was left with a method claim void of any meaningful steps, for which there was ample prior art. This was a precedential decision. Inventors and practitioners should carefully consider whether recited conditions limit claim scope. Further discussion of the decision can be found on Finnegan’s Prosecution First Blog.
Patent Trial and Appeal Board (PTAB), United States Patent and Trademark Office (USPTO), Obviousness (35 USC § 103), Food and Drug Administration (FDA)
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