Posts Tagged: 101 rejections


Dissecting Dissents for Ex Parte Appeals

Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  …
By Eli Mazour & Sora Ko
1 month ago 8

Where is the line between patentable subject matter and non-patentable products of nature?

A conflict exists between the incentive to invent and the breadth of patent-eligible subject matter. It has become difficult to recognize the line between patentable subject matter …

USPTO memo explains changed Alice Step 2B to examiners

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the …
By John M. Rogitz
6 months ago 3

Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the …
By Christopher Hall
1 year ago 8

In precedential decision, Federal Circuit rules patent directed to encoding and decoding image data is not patent-eligible

The Federal Circuit held that the claim was directed to the abstract idea of encoding and decoding image data. According to the panel, the claim recited “a …
By John M. Rogitz
1 year ago 60

Examining USPTO Business Method Patent Eligibility Examples

On December 15, 2016, the USPTO published three subject matter eligibility examples focusing on business method claims. The purpose of these examples is to give guidance on how claims …
By Kris Rhu & Paul Gurzo
2 years ago 1

§ 101 Rejections in the Post-Alice Era

The § 101 rejection rate for patent applications in the e-commerce work groups approaches 100%, then drops precipitously for the remaining seven of the top ten work groups with the …
By James Cosgrove
2 years ago 3

Operational Mathematics on a Processor is not an Abstract Idea

Mathematics has long been accepted as a tool to model the physical reality. For many it is hard to grasp that math actually “does something.” The reality …
By Peter Lablans
2 years ago 47

Patent Prosecution 101: Understanding Patent Examiner Rejections

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the …
By Gene Quinn
2 years ago 24

The ITC: Reviewing 2016 and Looking Ahead

In 2016, the ITC had its busiest year since 2011--which was the peak of the “smartphone wars”--in terms of new investigations instituted. In 2016, 55 complaints were filed, notably, 16 …
By Lisa Kattan
2 years ago 0

PTAB declares MRI machine an abstract idea, patent ineligible under Alice

In what can be described only as an utterly ridiculous, intellectually insulting, and idiotic decision, the Patent Trial and Appeal Board (PTAB) of the United States Patent …
By Gene Quinn
2 years ago 163

A Look into Uber’s Patent Prosecution History

Since the Supreme Court’s decisions in Mayo Collaborative Services v. Prometheus Laboratories (2012) and Alice Corp. v. CLS Bank Int’l (2014), patent practitioners have struggled in overcoming …
By Audrey Ogurchak
2 years ago 0

Section 103 Rejections: How Common Are They and How Should You Respond?

There are several major statutory rejections that an applicant can receive during the course of patent prosecution at the USPTO, each one corresponding to the relevant section …

Square fights off Alice rejection on payment transfer patent proving financial patents are not dead

U.S. Patent No. 9378491, entitled Payment Transfer by Sending E-mail. This discloses a computer-implemented method which enables the seamless initiation of a payment transfer through e-mail from …
By Steve Brachmann
2 years ago 1

USPTO ‘judgment calls’ to blame for reopening prosecution after complete Board reversal

Robert Bahr, the Deputy Commissioner for Patent Examination Policy, responded that “hindsight is great,” and went on to explain that they thought that the rejections that were …
By Gene Quinn
2 years ago 53

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