Category Archives: Section 101

PTO Issues Section 101 Memorandum after Vanda Decision

I have posted twice recently on the Fed. Cir.’s opinion in Vanda Pharms., Inc. v. West-Ward Pharm. Int’l, Ltd., Appeal no. 2016-2107 (Fed. Cir., April 18, 2018). The Fed. Cir. affirmed the district court’s ruling that Vanda’s claims in U.S. … Continue reading

Posted in Federal Circuit, Opinion Practice, Section 101, USPTO Practice and Policy | Tagged , , , , , , , , | Leave a comment

Ex Parte Smith: What We’ve Got Here Is A Failure To Communicate!

In Ex parte Smith, Appeal No. 2016-007565 (PTAB, May 16, 2016), the Board reversed the examiner’s s.101 and 103 rejections of a claim to a modified flavivirus envelop (E) protein comprising a mutated envelop protein, where the unmodified E-To domain … Continue reading

Posted in Section 101 | Tagged , , , , | Leave a comment

Ex Parte Stone: The “Disappearing Doctor” Leaves a Medical Device Behind

I know that Fed. Cir. s 101 decisions are inherently more instructive than PTAB decisions, but PTAB (and district court) s. 101 decisions are like legal potato chips – if you sample one, you just can’t quit. For example, in … Continue reading

Posted in PTAB, Section 101 | Leave a comment

In re Urvashi Bhagat – The Slippery Slope of Natural Product Claims

I will start out by recommending that you read all of MPEP 2106 – Patent Subject Matter Eligibility. I rarely admire PTO policy rules and guidelines, but this section reflects a lot of work, particularly in the standards for evaluating … Continue reading

Posted in Alice, Govt Policy/PTO Policy, s.102, Section 101, USPTO Practice and Policy | 1 Comment