Author Archives: Warren Woessner

PTO Issues Section 101 Memorandum after Vanda Decision

Posted on June 11, 2018 by Warren Woessner

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 →

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Ex Parte Galloway – Berkheimer Meet s. 103 Part II

Posted on June 4, 2018 by Warren Woessner

In Ex parte Galloway, Appeal No. 2017-004696 (PTAB, May 24, 2018), the Board reversed the examiner’s rejections of claims to a method of diagnosing bladder cancer. The method comprised isolating cells from the urine of a subject, dispersing at least … Continue reading →

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

Posted on May 29, 2018 by Warren Woessner

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

Posted on May 25, 2018 by Warren Woessner

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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