Category Archives: USPTO Board Decisions

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Federal Circuit Affirms Board Finding That Exclusion Of Genus Does Not Provide Written Description For Exclusion Of Species

In In Re Bimeda Research & Development Ltd., the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (PTAB) that found that a claim that excluded the presence of a specific compound was not supported by a description that excluded a genus of compounds. This case illustrates the challenges of establishing written … Continue reading this entry

New Explanation By Patent Trial And Appeal Board Is Not A New Ground Of Rejection

In In re Adler, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the Examiner’s determination that the claims at issue were obvious. In so doing, the court rejected Adler’s arguments that the PTAB decision was based on a new ground of rejection that would have entitled Adler … Continue reading this entry

A Quick Look At The First Patent Trial And Appeal Board Decision In a Covered Business Method Patent Proceeding, SAP America, Inc. v. Versata Development Group, Inc.

On June 11, 2013, the USPTO Patent Trial and Appeal Board (PTAB) issued its first final decision in a covered business method patent (CBM) proceeding, in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001). Although this case is not in the field of pharmaceuticals or biotechnology, a few aspects of this decision will be … Continue reading this entry

Who Can Appear In Patent Trials Before The USPTO Patent Trial And Appeal Board?

Now that new patent trials are being conducted at the USPTO Patent Trial and Appeal Board (PTAB), questions are arising as to who can best represent the parties in such proceedings. Should  it be patent attorneys, who have  experience with Patent Office practice, or should it be litigators, who may have more experience taking depositions of … Continue reading this entry

An Easy Patent Eligibility Exercise

While we struggle to understand the ramifications of difficult patent eligibility cases like Prometheus and Myriad, it can be helpful to examine an application that plainly fails to satisfy 35 USC § 101. When the USPTO Board of Patent Appeals and Interferences affirmed the Examiner’s rejections in Ex parte Nerenberg, it may not have added … Continue reading this entry

Board Finds IBM Method of Analyzing Genomic Data Is Not Patent-Eligible

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 … Continue reading this entry