Unpredictability, not Inherency, Important for Obviousness

by Peter Keros on August 8th, 2017
In Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V., No. 2016-1996, 2017 U.S. App. LEXIS 13909 (Fed. Cir. Aug. 1, 2017), the Federal Circuit vacated and remanded a PTAB decision, holding that an obviousness rej… Read More

Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

by Christopher Francis on July 11th, 2017
The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter.  Of particular interest given the claim language, the Appellant was unsuccessful with argum… Read More

Patent-Eligibility Lessons from the PTAB (No. 1)

by Charles Bieneman on May 30th, 2017
How is the USPTO’s Patent Trial and Appeal Board (PTAB) addressing patent-eligibility rejections under 35 U.S.C. § 101 in ex parte appeals?  What arguments work, and what arguments fail, when you are trying to persuade the PTA… Read More

PTAB Finds Reasoning for 103 Rejection Insufficient in Ex Parte Appeal

by Christopher Francis on May 15th, 2017
Citing KSR Inti Co. v. Teleflex Inc, the PTAB in Ex Parte Mattisson (Appeal No. 2016-004484, April 14, 2017) agreed with the ex parte Appellants and reversed the Examiner’s rejection based on insufficient rationale to support an… Read More

“Substantially” is a Definite Term in Recent PTAB Decisions

by Christopher Francis on April 28th, 2017
Many practitioners view words of approximation, such as “substantially,” as useful tools to broaden claim language. MPEP §2173.05(b) states that words of approximation are acceptable if one of ordinary skill in the art would… Read More

PTAB: Social Media Privacy Management Is Patent-Eligible

by Charles Bieneman on April 19th, 2017
Claims to managing privacy in a social network survive the Mayo/Alice patent-eligibility test, says the PTAB, reversing an Examiner’s rejection under 35 U.S.C. § 101.  Ex parte Drake Sutton-Shearer, Appeal 2015-003977, Applica… Read More

PTAB Panel Can’t Agree on Patent-Eligibility

by Charles Bieneman on April 10th, 2017
Lest anyone think that patent-eligibility determinations at the USPTO’s Patent Trial and Appeals Board (PTAB) are easy, even in appeals in ex parte patent prosecution, consider the recent case of Ex parte Plondke, Appeal 2016-00… Read More

Arguments of Impermissible Change in the Principle of Operation in Ex Parte PTAB Decisions

by Christopher Francis on April 7th, 2017
In roughly the last month, the PTAB has decided 41 ex parte appeals involving arguments that the proposed modification in an obviousness rejection impermissibly changes the principle of operation of the primary reference. By way o… Read More

PTAB: BRI of Method Claim Requires Conditional Limitation

by Christopher Francis on February 28th, 2017
Thirty-five PTAB decisions cite Ex parte Schulhauser since that case was designated precedential in October 2016.  Of those thirty-five decisions, all except for one held that the broadest reasonable interpretation of a method cl… Read More

Patent-Eligibility at the PTAB in Ex Parte Appeals

by Charles Bieneman on July 26th, 2015
Far from finding relief from an examiner’s patent-ineligibility rejection at the Patent Trial and Appeal Board (PTAB), patent applicants may find that ex parte appeals are their undoing.  A recent decision in an appeal file… Read More

Upcoming Webinar

Business Methods and Patent-Eligibility at the USPTO
September 22, 2017 at 12:00 pm EDT
During the webinar, Charles Bieneman will discuss recent trends and current practices with respect to patent-eligibility at the USPTO’s business methods arts units – including a looks at how some cases are surviving Section 101 rejections. Register

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