Tag Archives: PTO

PTO Releases New Guidelines on Subject Matter Eligibility

On Oct. 17th, the PTO published Guidelines intended to supplement the Jan. 2019 Subject Matter Eligibility Guidelines (“2019 PEG”). The Guidelines and associated Examples are extensive. Only two of the Examples (43 and 44) are concerned with the life sciences. … Continue reading

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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

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Ex parte Galloway – Two Correlations are Better than One

Although, somehow, examiners and PTAB Judges are supposed to refrain from considering anticipation or obviousness when evaluating claim elements for the “inventive step” required for patent eligibility, that’s just not possible. The claims in Ex parte Galloway were directed to … Continue reading

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PTO Releases Revised Guidance on Compliance with Mayo/Alice Rule

On April 19, the USPTO released a Memorandum from Robert Bahr, The Deputy Commissioner for Patent Examination Policy, that summarized the support required for a finding if a claim directed to a judicial exception to s. 101 eligibility under Step … Continue reading

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