Category Archives: Patent Eligible Subject Matter

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 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 →

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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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Ex Parte Buck: Can a Composition Claim be a Natural Phenomenon?

Posted on May 3, 2018 by Warren Woessner

In a recent decision, Ex Parte Buck, Appeal no. 2017-005470 (PTAB, April 20, 2018), the Board affirmed the examiner’s ruling that a composition claim reciting two natural products was patent-ineligible as an attempt to claim a natural phenomenon: 7. A … Continue reading →

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