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Precedential PTAB Ex Parte Decision on Indefiniteness

In an Ex parte McAward, Appeal No. 2015-006416 (published August 25, 2017), the Patent Trial and Appeals Board ruled that the Supreme Court opinion in Nautilus, Inc. v. Biosig Instruments, Inc. does not mandate a change in the USPTO’s approach to indefiniteness during patent examination.  The PTAB has designated this case precedential, which is rarely done with ex parte decisions. By way of background, the Supreme Court decision in Nautilus set forth a new standard for indefiniteness – that the claims must inform a person of skill in the art of the invention with “reasonable certainty.” In Ex parte McAward, the PTAB outlined that, in determining indefiniteness, the Office first determines the scope of the claims based on the broadest reasonable interpretation.  Based on the broadest reasonable interpretation, the Office establishes a prima facie case of indefiniteness by explaining how the metes and bounds of the claim are not clear because…

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Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

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 arguments that 1) the claims do not disproportionately tie up the use of any underlying idea, 2) the claim provides an improvement in the technological field of mass spectrometry, and, 3) with respect to dependent claim 3, that the claims tied the mathematical formula with technological field of mass spectrometry analyte detection. (citing Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)). The independent claim is as follows: A method for selecting a target ion and a plurality of qualifier ions for identifying an analyte by mass spectrometry, the method comprising: (a) obtaining a reference spectrum for the analyte; (b) identifying a retention time window for the reference spectrum; (c) extracting a…

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PTAB Panel Can’t Agree on Patent-Eligibility

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 2016-006905, Application 13/241,673 (PTAB April 3, 2017).  The claims at issue were directed to data processing software patents, specifically to an improved technique for searching for a “global extremum,” i.e., a max or min value.  Two of the three panel judges agreed to reverse the examiner’s patent-eligibility rejection under 35 U.S.C. § 101, but their third colleague dissented. Exemplary claim 1 recites: A method of determining an extremum in a processing system, the method comprising: storing a reference location identifier and a reference extremum in a storage medium; receiving an input data set comprising two or more data elements from a memory system; determining an input extremum of the two or more data elements of the…

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

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 of background, this type of argument, including caselaw, is outlined in MPEP §2143.01 IV. Of the 41 recent decisions, only five have resulted in the PTAB reversing the obviousness rejection. One example of a successful application of this argument by an Appellant is Ex parte Zha, Appeal No. 2014-004074 (March 6, 2017). The claims in Ex parte Zha are directed toward a method of cleaning a porous polymeric membrane. The primary reference in the obviousness rejection discloses a method for cleaning a membrane device. This method of the primary reference includes a “concentration” step in which bursting air bubbles are created and cause a scouring of the membrane surface to dislodge accumulated sludge. The Examiner…

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