Archive | PTAB

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 […]

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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 […]

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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, […]

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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 […]

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The PTAB Can Be Aggressive in Raising Patent-Eligibility Under Alice

Entering a new ground of rejection under 35 U.S.C. § 101, the Patent Trial and Appeal Board, deciding an ex parte appeal, applied Alice Corp. Pty. Ltd. v. CLS Bank Int’l. to hold that claims directed to a system and method for “propagating a media item recommendation” were not patent-eligible. Ex parte Svendsen, Appeal 2012-010845; […]

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