Federal Circuit Decisions Relating to PTO’s Conclusory Assertions

This week, the U.S. Court of Appeals for the Federal Circuit delivered two different opinions, which may be useful to Applicants during prosecution, in appropriate scenarios. Specifically, these cases are relevant where the Patent Office fails to set forth the requisite factual findings to support a rejection, or where the Patent Office substitutes “common sense” in place of evidence that should be used to support a rejection.

The first opinion (In re Warsaw Orthopedic) confirms that “The [Patent Office] cannot rely on conclusory statements when dealing with … prior art and specific claims, but must set forth the…

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