Earlier this week I wrote about the patent-eligibility decision from the USPTO Board of Patent Appeals and Interferences in In re Kelkar. While reviewing the prosecution history of the appeal, I was struck by the number of times the Appeal Brief was “bounced” for failing to comply with one or more requirements of 37 CFR § 41.37. The USPTO recently transferred responsibility for reviewing briefs for compliance with these rules from the examiner to the Board, but this case illustrates just how unreasonable and dilatory the appeal brief review process could be.
Last week, Dennis Crouch highlighted recent decisions from the Patent Office Board of Appeals and Interferences that evaluated the patent-eligibility of claims under 35 USC § 101. One case with relevance to biotech and pharmaceutical applicants upheld the § 101 rejection of IBM claims directed to methods for clustering genes having potential functional similarity by comparing gene expression profiles based on both the time and intensity of gene expression. In that case, In re Kelkar, the Board found that the claims failed the “machine or transformation test” (MOT) and were directed to an abstract idea, despite language that invoked the use of a computer.