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Posts Tagged: "Deputy Commissioner Bahr"

USPTO to Clarify Guidance on Written Description of Antibodies

The memorandum points to Amgen for stating that the “newly characterized antigen” test could not stand because it contradicted the quid pro quo of the patent system whereby in order to obtain a patent one must describe an invention (the antibody, not the antigen recognized by the antibody). The memorandum states that in view of Amgen, “adequate written description of a newly characterized antigen alone should not be considered adequate written description of a claimed antibody to that newly characterized antigen, even when preparation of such an antibody is routine and conventional.”

Doc’s Orders: Analogize to Overcome Patent Eligibility Rejections

Taking a hint from what has worked before can give patent prosecutors an advantage. The question is then how to find such examples for use in forming arguments and claim amendments to address Alice v. CLS Bank rejections…. If you happen to face an Alice v. CLS Bank rejection or are sorted into an art unit that experiences a high volume of Alice v. CLS Bank rejections, consulting the prosecution history of successful cases in Public PAIR can prove fruitful for identifying analogous claim limitations and arguments that may help stimulate your thinking in forming a successful strategy for patentability.