Far from finding relief from an examiner’s patent-ineligibility rejection at the Patent Trial and Appeal Board (PTAB), patent applicants may find that ex parte appeals are their undoing. A recent decision in an appeal filed in 2012, reversing an examiner’s prior art rejections under 35 U.S.C. § 103(a), but setting forth a new ground of […]
Archive | Patent Appeals
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; […]
CAFC Reverses Examiner’s and PTAB’s Broadest Reasonable Interpretation of “Wireless”
In an appeal from the Patent Trial and Appeal Board (PTAB), the Court of Appeals for the Federal Circuit (CAFC) reversed the rejection of independent claims 1, 34, and 43 of U.S. Patent Application No. 09/874,423 in In re Kevin R. Imes. The Federal Circuit held that the PTAB had improperly applied the broadest reasonable […]