Transubstantiation of a Machine into an Abstract Idea

January 20th, 2017

In the Catholic Church “transubstantiation” is the belief that the wafer and the wine become the actual body and blood of Christ during the communion ceremony. Recently, the PTAB went into the mystic to transform claims to a multi-station MRI apparatus into abstract ideas, and then to reject them under s. 101. Ex parte Hiroyuki Itagaki, Appeal No. 2015-002702 (PTAB 2016), application serial no. 12/598168.

And this rejection was entered after the panel found that the MRI apparatus was unobvious over the art cited by the Examiner.

This legal result requires us all to call the Alice/Mayo rule unworkable and to shout out that this is a claim to a machine, not to a conventional process carried out by a generic computer. Even the panel refers to claim 1 as an “apparatus” or as describing “a multi-station MRI.”

The panel seems to have arrived at the conclusion by taking the broadest possible view of the claims, and then [incorrectly] stating “the claimed subject matter is directed to classification…The classification concept is an abstract idea.” No it’s not. Claim 1 is directed to a machine that would probably at least maim you if it tipped over. But once you have transubstantiated metal and glass into an abstract idea, you have done quite enough to demonstrate why rejections based on identification of the invention as an abstract idea have run amok.

I was recently at a symposium in which one of the panel members declared that the term “abstract idea” is tautological; all ideas that remain ideas are abstract. We are approaching magical thinking if not outright legal magic. It’s high time to stop pulling abstract rabbits out of real top hats.

Read the decision on appeal.

Chisum Academy Awards for 2016 to Federal Circuit Decisions

January 18th, 2017

This is a guest post from the Chisum Patent Academy.

Chisum and Mueller selected the following fifteen (15) cases as the most impactful of the Federal Circuit’s precedential patent law decisions issued in 2016. We excluded Supreme Court patent decisions, all of which are inherently impactful. Our remarks about each case indicate why we think it made a difference–for better or worse. Our comments, views, and opinions are strictly our own and do not reflect the views of any persons other than Chisum and Mueller.

We have listed our selections by patent law topic/issue rather than rank the cases in an overall sense. Nor did we attempt to include every disputed issue in patent law. The order of topics and the number assigned to each case within a topic does not indicate a ranking.

Read the full Awards list.

Guidance on Biosimilar Development Finalized by FDA

January 3rd, 2017

PillsBloomberg BNA posted an overview of the FDA’s guide on biosimilar development.

Read the overview here.

In re NuVasive, Inc. – Explain Yourself!

December 12th, 2016

In re NuVasive Emphasizes the Importance of Reasoning in the Obviousness Question.

Business Man Holding Contract Agreement Vector Illustration Signed Treaty PaperSince KSR, 127 S.Ct. 1727 (2007), repudiated as “rigid and mandatory” the Federal Circuit “rule” for obviousness –  that the prior art must provide a teaching, suggestion or motivation (TSM) to combine references so as to arrive at the claimed invention. Since then, it is my opinion that reliance on secondary considerations to support obviousness determinations has steadily increased. Such considerations include unexpected results, long-felt need, failure of others, teachings away from the invention, commercial success and the like. Likewise, Examiners have increased their reliance on factors such as common sense and routine optimization.

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