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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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USPTO Guidance for Application of 35 U.S.C. § 112 to Computer-Implemented Methods, Effective January 7, 2019

On January 4, 2019, the USPTO announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (“Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112”), which took effect on January 7, 2019.  The Guidance stated that for a computer-implemented 35 U.S.C. § 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function to avoid an indefiniteness rejection under 35 U.S.C. § 112(b). It is not sufficient to argue that one of ordinary skill in the art is capable of writing software to convert a general purpose computer to a special purpose computer (i.e., a computer programmed to perform the disclosed algorithm) to perform the claimed function.

Authors: Minxi Rao, Cynthia M. Bouchez, Ph.D.

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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.

Author: Cynthia M. Bouchez, Ph.D.

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