Archive | PTAB

“Substantially” is a Definite Term in Recent PTAB Decisions

Many practitioners view words of approximation, such as “substantially,” as useful tools to broaden claim language. MPEP §2173.05(b) states that words of approximation are acceptable if one of ordinary skill in the art would understand what is claimed, in light of the specification. In fact, MPEP §2173.05(b)III discusses the acceptable use of various words of […]

Continue Reading

PTAB: Social Media Privacy Management Is Patent-Eligible

Claims to managing privacy in a social network survive the Mayo/Alice patent-eligibility test, says the PTAB, reversing an Examiner’s rejection under 35 U.S.C. § 101.  Ex parte Drake Sutton-Shearer, Appeal 2015-003977, Application 12/770,4711, Technology Center 3600 (PTAB Feb. 28, 2017).  Citing Federal Circuit decisions in Enfish, LLC v. Microsoft Corp. and Affinity Labs of Tex., […]

Continue Reading

Statutory Disclaimer Moots Covered Business Method Review

When a patent owner disclaims patent claims for which another party petitions for Covered Business Method Review, the petition is moot.  The rule is pretty clear on this point: “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a),” and “[n]o post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § […]

Continue Reading

PTAB Panel Can’t Agree on Patent-Eligibility

Lest anyone think that patent-eligibility determinations at the USPTO’s Patent Trial and Appeals Board (PTAB) are easy, even in appeals in ex parte patent prosecution, consider the recent case of Ex parte Plondke, Appeal 2016-006905, Application 13/241,673 (PTAB April 3, 2017).  The claims at issue were directed to data processing software patents, specifically to an […]

Continue Reading

Arguments of Impermissible Change in the Principle of Operation in Ex Parte PTAB Decisions

In roughly the last month, the PTAB has decided 41 ex parte appeals involving arguments that the proposed modification in an obviousness rejection impermissibly changes the principle of operation of the primary reference. By way of background, this type of argument, including caselaw, is outlined in MPEP §2143.01 IV. Of the 41 recent decisions, only […]

Continue Reading

PTAB Unpersuaded by Evidence of Commercial Success

The burden on an Appellant is seemingly high when arguing commercial success as a secondary consideration of nonobviousness in an ex parte PTAB appeal.  The decision in Ex parte Thatcher, Appeal No. 2015-002163 (April 4, 2017) is an example of the PTAB remaining unpersuaded by arguments of commercial success. The patent application at issue claims […]

Continue Reading

PTAB Broadest Reasonable Interpretation: “in response to” Means “subsequent to”

In an ex parte appeal, the PTAB upheld the Examiner’s broadest reasonable interpretation of the patent claim language “in response to” as merely meaning “subsequent to.”  The decision is Ex parte Youngri Kim et al. (PTAB Jan 19, 2017). The subject patent application is drawn toward an ebook reader, and the claim language at issue […]

Continue Reading

PTAB Upholds Indefiniteness Rejection of Inferentially Claimed Element

One of the first rules often taught to a young patent attorney, especially for mechanical apparatus claims, is to avoid inferential claiming, i.e., avoid introducing a new element in the middle of a recitation of another element.  This type of drafting can lead to ambiguity about whether this new term is positively recited, and thus […]

Continue Reading

Post-Solution Activity in Menu Generation Patent Claims Does Not Overcome Alice

In holding all claims of patents directed to generating electronic menus patent-ineligible under 35 USC § 101, a Federal Circuit panel handed Covered Business Method Review petitioners an even bigger win than they had gotten from the Patent Trial and Appeal Board (PTAB).  Apple, Inc. v. Amaranth, Inc., Nos. 2015-1792, 2015-1793 (Fed. Cir. Nov. 29, […]

Continue Reading

Court Holds Patent Claims Fail Alice Test After PTAB Declined to Institute CBM on Patent-Eligibility Grounds

Patent claims directed to “providing money or an item of value to an account-holder” and “paying on behalf of a person for money or an item of value” fail the abstract idea test of Alice Corp. v. CLS Bank, according to a federal district court.  Global Cash Access Inc. v. NRT Technology Corp., No. 2:15-cv-00822 […]

Continue Reading

Powered by WordPress. Designed by WooThemes