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USPTO Subject Matter Eligibility Guidance, the Federal Circuit and Diagnostic Method Claims: Clear as Mud?

In our January 22, 2019 Blog Post related to the January 2019 USPTO Subject Matter Eligibility Guidance (“the Guidance”), we noted that in Prong Two of Step 2A of the Guidance, an Examiner is tasked with evaluating “whether the claim as a whole integrates the recited judicial exception into a practical application of the exception.” More importantly, we commented that an Examiner may never have to consider whether additional elements “represent well-understood, routine, conventional activity” when determining whether the claim is directed to a judicial exception.  If the Examiner feels that the additional claim elements, no matter how routine or conventional, make the claim not directed to the judicial exception, then the analysis stops.  The claim is determined to be patent eligible.  As stated in the Guidance:

Prosecution, USPTO, Patent Eligibilty, Personalized Medicine
Author: Jeffrey K. Mills, Ph.D.

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Does USPTO Subject Matter Eligibility Guidance Muddy the Personalized Medicine Waters?

The USPTO’s recently revised guidance for determining subject matter eligibility under 35 U.S.C. § 101 (“the Guidance”),  provides some clarity to Examiners and Applicants as to what constitutes an “abstract idea.”  While the Guidance identifies several abstract ideas that fall within the scope of a “Judicial Exception” during Prong One of the Alice/Mayo test (Step 2A of the Guidance), the Guidance specifically indicates that:

Prosecution, USPTO, Patent Eligibility, Personalized Medicine
Author: Jeffrey K. Mills, Ph.D.

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USPTO Revised Guidance for Subject Matter Eligibility, Effective January 7, 2019

On January 4, 2019, the USPTO announced revised guidance taking effect on January 7, 2019, for determining subject matter eligibility under 35 U.S.C. § 101 (“2019 Revised Patent Subject Matter Eligibility Guidance”).  The revised guidance supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”

USPTO, Prosecution
Authors: Minxi Rao, Cynthia M. Bouchez, PhD.

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Federal Circuit Upholds PTAB Ruling that Tradeshow Catalog is a Printed Publication

Despite previously affirming the ITC's decision that a dental tradeshow catalog was not publicly accessible, the Federal Circuit recently upheld the PTAB's opposite conclusion. The Federal Circuit explained that it was not bound by its prior affirmance of the ITC's judgment because it was based on a different factual record with a different burden of proof, i.e., preponderance of the evidence at the PTAB versus clear and convincing evidence at the ITC.

Prosecution
Author: Cynthia M. Bouchez, Ph.D.

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