Author Archives: Warren Woessner

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

Posted on May 22, 2018 by Warren Woessner

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 Patent Eligible Subject Matter | Leave a comment

PTO Releases Revised Guidance on Compliance with Mayo/Alice Rule

Posted on May 14, 2018 by Warren Woessner

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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PTO Proposes to Change Claim Construction Standard Used by PTAB

Posted on May 8, 2018 by Warren Woessner

On May 9th, the USPTO released a short “Notice of proposed rulemaking” entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.”  In brief the Notice proposes to replace the broadest … Continue reading →

Posted in Claim Interpretation, PTAB, USPTO Practice and Policy | Tagged , , , | 1 Comment