MVS Filewrapper® Blog: Ways to Accelerate Patent Examination Before the USPTO – Part 4, Finale

By Jill Link

As discussed in a series of prior postings, there are various options to expedite examination and/or decrease the pendency and delays associated with patent examination before the United States Patent and Trademark Office (USPTO). These include: (1) the First Action Interview Pilot Program (see Part 1); (2) Track One Prioritized Examination (see Part 2); (3) Accelerated Examination (see Part 3); (4) the Patent Prosecution Highway; (5) Petitions to Make Special Based on either Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (6) Petitions to Make Special Based on Applicant’s Health and/or Age.

Patent Prosecution Highway and Petitions to Make Special are discussed in this posting.

The Patent Prosecution Highway (PPH)

The PPH program is available to patent applicants with foreign patent applications and is a mechanism to expedite the search and examination before either the USPTO or certain participating foreign countries. The PPH program does not guarantee a final disposition within a certain period of time; instead the program allows a USPTO Examiner to rely on the work (i.e. search and examination results) from an examiner in another country which has issued the same patent application. The requirement is that the U.S. patent claims be substantially similar to claims that have been found to be either allowable or have received a favorable international search report.

To utilize the PPH program, a request must be submitted prior to initiation of U.S. examination. The request must provide the examiner with the relevant search and examination results and there are no government fees associated with the request.  When this is done it is customary to receive a first Office Action within 3-6 months. Notably, use of the PPH program does not guarantee the U.S. examiner will issue the case (as laws differ between countries); however, providing this information can improve the odds (and pace) of receiving a U.S. patent.

Further detail of the PPH and its use for fast-tracking examination is available at the USPTO website.

Petitions to Make Special

The remaining two options for patent applications to expedite examination before the USPTO are only available to select applicants. These include a subject matter based qualification and an age and/or health based qualification. The petitions include: (1) Petitions to Make Special Based on Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (2) Petitions to Make Special Based on Applicant’s Health and/or Age.

(1) Petitions to Make Special Based on Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism

The first petition relating to the subject matter of a patent application allows the application to be advanced out of order for examination and is treated as "special" throughout the examination by virtue of the fact the invention relates to enhancing environmental quality, relates to conservation of energy resources and/or counter terrorism. There are no guaranteed time frames for a final disposition by using this form of petition; however, they are generally handled on an "expedited" basis. Such a petition is filed with the application and does not require an additional government filing fee. However, the petition must be accompanied by an Accelerated Examination (AE) Pre-Examination Search Document and an AE Examination Support Document. Further detail of the petition requirements is available at the USPTO website.

(2) Petitions to Make Special Based on Applicant’s Health and/or Age

This petition available based on the age and/or health of an inventor also advances the application out of turn and receives "special" treatment before the USPTO. Again, there is no assured timeframe for receiving a final disposition, however the goal is that they are handled in an expedited matter to ensure the patent applicant is able to participate in the examination of the patent application. To qualify, a patent applicant must show evidence they are 65 years of age or older and/or demonstrate their health is insufficient to allow their assistance in prosecution of an application pursuant to "its normal course." There are no additional government fees to file this petition, nor are there any requirements to file exanimation search and/or support documents. Those filing petitions are reminded that any information filed to show support for one's age and/or health will become public (unless filed pursuant to secrecy measures). Further detail of the requirements for Accelerated Examination is available at the USPTO website.

Patent applicants in need of promptly examined and issued patents may find value in these various programs discussed in this 4-part series. However, the decision to utilize any of the programs should be discussed with your patent attorney.

MVS Filewrapper® Blog: Oral Arguments Held in Appeal of First IPR

By Jonathan Kennedy

 

On November 3, 2014, a three-judge panel of the Federal Circuit heard oral arguments in In re Cuozzo—the appeal from the first inter partes review ("IPR") instituted by the USPTO.  As noted in our previous post, the appeal presents a number of interesting procedural and substantive issues.

 

While the oral argument did not address all of the issues on appeal, the arguments from counsel and questions from the judges featured some interesting moments.  The panel of judges included Circuit Judge Pauline Newman, Circuit Judge Raymond C. Clevenger, III, and Circuit Judge Timothy B. Dyk.  Some of the particular arguments and questions of note are discussed below.

 

One of patentee-appellant Cuozzo's primary contentions in the appeal is that the PTAB lacked authority to institute the IPR for claims 10 and 14 on grounds of unpatentability not identified in the petition.  In response the PTO argued that the decision to institute the proceeding is unreviewable by a court of appeal.  In particular, counsel for the USPTO argued that Congress "made the decision to institute the proceeding entirely unreviewable."  The judicial panel disagreed stating, "you can’t raise it by appeal, but [the statute] doesn't say that it is unreviewable."  One of the judges noted that there are other statutes that make it clear certain agency decisions are entirely unreviewable on appeal or otherwise.  However, in this instance the statute states, "The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable."  35 U.S.C. § 314(d).   Counsel for the USPTO countered arguing because it is clear the decision not to institute an IPR is not reviewable, likewise the decision to institute an IPR is not reviewable.  Again, the panel pushed back, noting the decision not to institute an IPR is within the USPTO's discretion, but if the PTAB blatantly exceeds its authority then that may provide grounds for review.

 

Another interesting argument related to patentee-appellant Cuozzo's argument that the broadest reasonable interpretation standard should not apply in an IPR.  The USPTO's position during arguments was two-fold.  First, counsel for the USPTO argued application of the broadest reasonable interpretation standard is consistent with decades of case law from the Federal Circuit.  Second, the counsel for the USPTO argued that in an IPR, or other post-grant proceeding, the patentee has the ability to amend the claims without further examination, and therefore the broader standard should apply. The USPTO pointed to the discrepancy between post-grant proceedings and court proceedings in the ability to amend the claims to support its position that the Philips standard, applicable to claim interpretation in the court, should not be applied in IPR. 

 

Judge Newman responded to the characterization that this issue has been decided for decades as not wholly accurate, since the decisions of record "haven't really gotten to the question of the difference between the appropriateness before the patent issues and after."  Judge Newman went on to state the ability to amend claims in post-grant proceedings is not as easy as the counsel indicated in the argument.  Counsel for the USPTO responded that amendments in post-grant proceedings should not be so easy, because no further search follows and examination follows.  Thus, the onus is on the patentee to explain why the amended claim would be patentable.

 

This dovetailed into a discussion of the appropriate requirement standard for amending claims in an IPR—another issue on appeal.  One of the judges asked, "[I]f the[] [patentee] make[s] a motion to amend and they can show that the amended claim is patentable, then they get the amendment, that is the test?" Counsel for the USPTO responded stating, "In order to make the motion they have to demonstrate or at least explain, give us a story as to why the claim is patentable."  The panel sought clarification asking, "Yes, but is that the only thing they have to do?"  Counsel for the USPTO replied with a caveat as to the number of claims for which the patentee is seeking to amend, noting the amendment would likely be denied for 500 claims, but "that is what they have to do" at least when seeking to amend one claim.  The USPTO also noted that in this instance the claim amendment was denied because it was not supported by the written description.

 

In rebuttal, the patentee-appellant, Cuozzo, noted that in 2 years of post-grant proceedings—including covered business method patent review, post grant review, and IPR—zero opposed motions to amend have been granted and only one unopposed motion to amend has been granted.  In conclusion, counsel for the patentee-appellant argued that the difficulty to amend demonstrates there is not a per se right to amend that would justify use of the broadest reasonable interpretation standard.

 

Ultimately, the Federal Circuit's widely anticipated opinion should provide clarity on a number of issues, and should be expected to issue in the next several months.

 

A recording of the oral arguments is available here.

MVS Filewrapper® Blog: Ways to Accelerate Patent Examination Before the USPTO – Part 3

By Jill Link

 

As discussed in a two postings last week, there are a few options to patent applicants to combat the long pendency, slow processing and delays in examination before the United States Patent and Trademark Office (USPTO). The First Action Interview (FAI) Pilot Program and Track One Prioritized Examination were discussed as options to expedite the pace of patent examination.

The various options and programs that be outlined in this series of blog posts include the following: (1) the First Action Interview Pilot Program (discussed last week); (2) Track One Prioritized Examination (discussed last week); (3) Accelerated Examination; (4) the Patent Prosecution Highway; (5) Petitions to Make Special Based on either Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (6) Petitions to Make Special Based on Applicant’s Health and/or Age.

Accelerated Examination is discussed today.

Accelerated Examination is another option for truly "fast tracking" a patent application from start to finish. Similar to Track One Prioritized Examination, Accelerated Examination provides a patent application with "special status" that advances the application out of turn to more quickly proceed toward a final disposition within 12 months of filing the application (i.e. issuance of a Notice of Allowance or abandonment of the application). Accelerated Examination is a permanent program implemented by the Patent Office and there are no limitations on the number of applications that may be processed under the program.

Accelerated Examination begins with a petition (i.e. a request) made with the initial patent filing requesting the accelerated treatment. Such request must be made with the initial patent filing (or a continuation application filing); the petition cannot be made with a Request for Continued Examination (RCE). The government filing fee for Accelerated Examination is substantially less than the previously discussed Track One program, with a petition fee of $140 (reduced to $70 or $35 for small or micro entities, respectively).

Key components associated with using the Accelerated Examination program are the supporting documents required, including a Pre-Examination Search Document and an Examination Support Document. The Pre-Examination Search Document illustrates that a search was conducted and meets the program requirements (e.g. employs a particular search logic). The Examination Support Document explains why the claimed invention is patentable in light of the prior art identified in the search document. These steps of conducting a search and providing written distinctions of the prior art present the largest hurdles associated with the Accelerated Examination program. Further description of these supporting documents is outlined in USPTO guidance.

Additional criteria for employing the Accelerated Examination program include: a limitation on claims presented (no more than 3 independent claims and 20 total claims); a requirement that a single invention be disclosed; availability to conduct an Examiner Interview; and a shortened reply time frame of 1 month for responding to Office Actions (with an application abandoning for failure to meet this time frame for response). 

Further detail of the requirements for Accelerated Examination is available at the USPTO website.

Patent applicants in need of promptly examined and issued patents may find value in the Accelerated Examination program. However, the decision to utilize Accelerated Examination (or any other program described in these series of postings) should be discussed with your patent attorney.

 

 

 

MVS Filewrapper® Blog:Ways to Accelerate Patent Examination Before the USPTO – Part 2

By Jill Link

As discussed in a first posting earlier this week, there are a few options to patent applicants to combat the long pendency, slow processing and delays in examination before the United States Patent and Trademark Office (USPTO). The First Action Interview (FAI) Pilot Program was discussed as one option to expedite the pace of patent examination once an application reaches a patent examiner.

The various options and programs that be outlined in this series of blog posts include the following: (1) the First Action Interview Pilot Program (discussed earlier this week); (2) Track One Prioritized Examination; (3) Accelerated Examination; (4) the Patent Prosecution Highway; (5) Petitions to Make Special Based on either Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (6) Petitions to Make Special Based on Applicant’s Health and/or Age.

Today, the Track One Prioritized Examination (Track One PE) is discussed.

The Track One PE is a true form of "fast tracking" an application from start to finish and provides a patent application with "special status" to ensure that a final disposition is achieved within 12 months of filing the application. As mentioned earlier, a final disposition refers to the issuance of a Notice of Allowance, the patent applicant filing of a Request for Continued Examination, or abandonment of the application. The USPTO will grant up to 10,000 Track One PE per year (which has not yet been reached in any single year). As of October 9, 2014 USPTO data shows that over 9000 Track One PE requests have been filed for FY2014 along. The overall pendency data for the program from 2011 through 2014 shows that "fast tracking" is indeed happening, with an average pendency to a First Office Action being only 2.4 months from the grant of the Track One PE request and a final disposition occurring within an average of 6 months.

Qualifications for the Track One PE include: filing a request to utilize the program with an initial patent filing (or when filing a Request for Continued Examination); including all signature documents with the initial filing; and payment of the government fee for the prioritized examination (large entity / undiscounted $4,000; small entity $2,000; micro entity $1,000).  An application cannot contain more than 4 independent claims and 30 total claims to use Track One PE. There are also time limits for responding to Office Actions (3 months without using extensions of time).  Further detail of the requirements for the Track One PE program is available at the USPTO website.

Despite the significant filing fee to enter the Track One PE, many have touted the benefits of the program as cost-effective due to the expedited examination (and often elimination of unnecessary rounds of examination and/or filings of Requests for Continued Examination). The examination statistics show an overall allowance rate of 59% (based on number of allowances of total final dispositions under Track One PE), indicating that over half of the applications are allowed within the 12 month period.

Patent applicants in need of promptly examined and issued patents may find significant value in the Track One PE program. However, the decision to utilize the Track One PE program (or the previously discussed FAI program) for a patent application should be discussed with your patent attorney.

MVS Filewrapper® Blog: Ways to Accelerate Patent Examination Before the USPTO

By Jill Link

Long pendency, slow processing and delays in examination due to patent backlog before the United States Patent and Trademark Office (USPTO) are common concerns voiced by patent applicants. Although it may provide some comfort to know that backlogs are decreasing and overall examination timeframes are improving, many patent applicants remain frustrated while waiting in line for an average of nearly 19 months for a first Office Action, or an average of 27.5 months to receive a final disposition (e.g., Notice of Allowance, filing of a Request for Continued Examination, or abandonment).

Did you know there are options for patent applicants to expedite or advance the pace of patent prosecution with the USPTO? In fact, there are a number of different programs offered by the USPTO aimed at significantly decreasing the total time required for patent examination. Each of the programs have specific requirements and often government fees required. However, they may provide an enticing option for accelerating patent examination.

The various options and programs will be outlined in a series of blog posts describing each of the following: (1) the First Action Interview Pilot Program; (2) Track One Prioritized Examination; (3) Accelerated Examination; (4) the Patent Prosecution Highway; (5) Petitions to Make Special Based on either Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (6) Petitions to Make Special Based on Applicant’s Health and/or Age.

Today, the First Action Interview (FAI) Pilot is discussed.

The FAI expedites prosecution once the patent application is assigned to a patent examiner and that examiner begins examination of your application. This means that once an examiner searches your invention and is ready to provide an Office Action there is an accelerated pace of examination. However, up until that point there is no "special" treatment or acceleration. Under the FAI an examiner will issue a First-Action Interview Office Action under the program, which is best described a shortened version of a regular Office Action, as it gives an overview of any rejections and cites references from the prior art search. In general, this triggers a 30 day reply period to schedule an interview with the examiner and thereafter another expedited reply period to file a response. The interview between applicant and the examiner is aimed at reaching an agreement on allowable subject matter through discussion of the rejections. However, if no agreement is reached, then any subsequent Office Actions proceed in the normal fashion without further expedited handling.

Qualifications for the FAI program include a request to enter the FAI program prior to an examiner beginning work on a first substantive Office Action (which does not include a Restriction Requirement). An additional key requirement is the limitation to the number of patent claims in the application (no more than 3 independent claims and 20 total claims). Further detail of the requirements for the FAI program is available at the USPTO website.

Beneficially, there are no government fees to utilize the FAI pilot program. USPTO statistics from the Data Visualization Center also show in increased allowance rate for applicants using the FAI pilot program. In September 2014, there was a 30% allowance rate (at time of an application's publication) under the FAI program as opposed to only 13% allowance rate for all other applications. Overall, this program may provide benefit in obtaining an early audience with the examiner and provide an opportunity to more promptly address patentability concerns.

The decision to utilize the FAI pilot program for a patent application will vary depending on many circumstances and should be discussed with your patent attorney.

MVS Filewrapper® Blog: Federal Circuit Schedules Oral Hearing in First Appeal of Inter Partes Review

Post by Jonathan Kennedy

The Federal Circuit has scheduled oral arguments for the first appeal of an inter partes review ("IPR") decision by the Patent Trial and Appeal Board ("PTAB").  Oral arguments have been scheduled for November 3, 2014.  The appeal involves a number of interesting issues.  First, it arises from the first IPR filed with the PTAB—Garmin USA, Inc. v. Cuozzo Speed Technologies, LLC (IPR2012-00001).  In that IPR, the PTAB invalidated three claims (claims 10, 14, and 17) of U.S. Patent No. 6,778,074.  Second, pursuant to a settlement agreement, Garmin agreed not to take part in any appeal.  Instead, once Cuozzo appealed the PTAB's decision, the Patent Office intervened under 35 USC § 143 to oppose Cuozzo's appeal, effectively taking Garmin's place. 

 

Cuozzo appealed four issues from the PTAB decision, relating both to procedural and substantive matters:  (1) "Whether the PTAB lacked authority to institute IPR for claims 10 and 14 on grounds of unpatentability not identified in the Petition"; (2) "Whether the B[roadest] R[easonable] I[nterpretation] standard applies to IPR, and whether the PTAB erred by construing the term 'integrally attached'"; (3) "Whether, if the PTAB had jurisdiction over claim 10, it erred in cancelling claim 10 as invalid under 35 U.S.C. § 103"; and (4) "Whether the PTAB erred in denying Cuozzo's motion to amend the claims." 

 

The petition for IPR originally filed by Garmin alleged forty-three different grounds of invalidity based on a number of patents.  The PTAB rejected forty-one of those grounds and chose to institute the IPR based on two grounds of invalidity alleged by Garmin against dependent claim 17.  However, when instituting the IPR the PTAB applied those same two grounds of invalidity against claims 10 and 14, even though Garmin had not asserted those grounds against claims 10 or 14.  In its final decision, the PTAB cancelled claims 10, 14, and 17 based on the two grounds Garmin had raised against claim 17.  Whether the PTAB can expand the scope of its review by applying grounds of invalidity against claims in a manner not raised by the Petitioner is a significant question and clarity from the Federal Circuit is greatly anticipated. 

 

Garmin's petition did not set forth any proposed claim constructions.  Despite this, in instituting the IPR—without any input from either party—the PTAB chose to construe the claim term "integrally attached" based on the broadest reasonable interpretation standard.  In its brief, Cuozzo argues this standard is improper for PTAB and only appropriate during examination and reexamination.  Instead, Cuozzo argues that the PTAB should be held to the standards set forth in the Federal Circuit's Phillips' decision.  The PTAB's construction of the term was pivotal in the other decisions in the IPR.  For example, the PTAB denied Cuozzo's motion to amend claims during the IPR under 35 USC § 316(d) based on the construction of the term "integrally attached."  Clarification regarding the claim construction standard that applies to the PTAB will be critical moving forward.

MVS Filewrapper® Blog: USPTO Issues Report on Virtual Patent Marking Under the AIA

Among the provisions of the America Invents Act that went into effect on September 16, 2011 was a change to the patent marking provisions contained in 35 U.S.C. § 287(a).  Marking an article as with a patent number provides constructive notice to the public that the article is patented, and failure to appropriately mark an article can preclude the recovery of damages for infringement until effective notice is given. The revised marking statute allows patent owners to identify their products with the web address containing the patent information, limits false marking lawsuits to those filed by the U.S. government or by a competitor who can prove competitive injury, and does away with provisions making it a violation to mark a product with a patent that covered the product, but has since expired.

 

The USPTO has issued a Report on Virtual Marking that provides analysis of the effectiveness of virtual marking under the AIA; whether virtual marking has limited or improved the ability of the general public to access information about patents; legal issues, if any, that arise from virtual marking; and any deficiencies arising from virtual marking.  The report is based on comments solicited by the USPTO, along with independent research. 

 

The conclusion the USPTO Report is that virtual marking has likely met its intended objectives of reducing manufacturing costs and facilitating public notice.  The Report identifies several benefits demonstrated by the analysis, in particular the ability of patent owners to dynamically update patent information, to provide a real-time, complete list of associated patents, and to include additional patent-related information, which all may help increase transparency by improving the public’s ability to access a wider scope of information about relevant patents.  The Report also notes that there is little applicable case law on the subject, due to the recency of the new marking provisions, and that virtual marking may have deficiencies that are not yet totally apparent, and as a result the issues may need to be revisited at a later date. 

 

The full report is available here.

MVS Filewrapper® Blog: Legitimate Advocacy and Genuine Misrepresentation of Material Facts

The Federal Circuit has issued a decision in Apotex Inc. v. UCB, Inc., upholding a district court's finding that Apotex's U.S. Patent No. 6,767,556 ("the '556 patent") is unenforceable due to inequitable conduct. 

 

Dr. Sherman, founder and chairman of Apotex, wrote the '556 patent application and is its sole inventor.  The '556 is based on Canadian application filed on April 5, 2000.  The ’556 patent is generally directed to a process for manufacturing tablets of moexipril tablets—an angiotensin-converting enzyme (“ACE”) inhibitor used to treat hypertension. The ’556 patent discloses a process of making moexipril tablets consisting mostly of moexipril magnesium obtained by reacting moexipril or its acid addition salts with an alkaline magnesium compound to improve stability and prevent degradation of the normally instable moexipril hydrochloride.

 

Two existing drugs— Univasc and Uniretic—were both cited as prior art in the prosecution of the '556 patent, and were also asserted to infringe the '556 patent after issuance.  During prosecution, Dr. Sherman, through his patent attorney, asserted that the prior drugs did not render the invention of the '556 patent obvious because the process for making them simply combined components, rather than reacting them.  However, evidence presented at trial indicated that Dr. Sherman suspected that the existing drugs were made by the process recited in his application at the time the application was filed, and later conducted experiments to confirm that the components in those existing drugs were reacted, rather than simply combined as he represented to the PTO.  The court also found that Dr. Sherman has misled or failed to inform a declarant, Dr. Lipp, regarding the true nature of the existing drugs in relation to the claimed invention, resulting in a declaration by Dr. Lipp that perpetuated Dr. Sherman's mischaracterizations of those existing drugs.  In addition, the court determined that Dr. Sherman withheld relevant prior art from the PTO.  The district court held the combined misrepresentations and withholdings were material to the prosecution of the '556 patent, and that Dr. Sherman intended to deceive the PTO based on his overall pattern of misconduct, and therefore the '556 patent was unenforceable due to inequitable misconduct. 

 

On appeal, Dr. Sherman argued that the conduct before the PTO was merely advocating a particular interpretation of the prior art.  However, the Federal Circuit determined that his statements were not mere advocacy for a preferred interpretation; his statements were factual in nature and contrary to the true information he had in his possession.  The court clarified that there is no duty to disclose suspicions or beliefs regarding the prior art, and that there is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art.  However, affirmatively and knowingly misrepresenting material facts regarding the prior art goes beyond failing to disclose a personal belief or alternative interpretations of the prior art, and enters the realm of inequitable conduct, which may result in an unenforceable patent.

 

The full opinion is available here.  

 

MVS Filewrapper® Blog: Critical Versus Optional, but Desireable Claim Elements

On August 6, 2014, the Federal Circuit Court of Appeals issued its opinion in ScriptPro, LLC v. Innovation Associates, Inc. In 2006, the Petitioner ScriptPro, LLC sued Innovation Associates, Inc. for infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601 ("the '601 patent").  The '601 patent describes a "collating unit" that uses sensors to automatically dispense and organize prescriptions according to individual patients.  Shortly after the lawsuit was filed, Innovation Associates filed an Inter Partes Reexamination with the USPTO, and the district court stayed the proceedings pending the result of the re-exam.  In January of 2011, the USPTO concluded its reexamination of the claims of the '601 patent, confirming claims 1, 2, 4, and 8. 

 

The district court resumed proceedings and Innovation Associates moved for summary judgment, arguing that the claims were invalid under section 112 on the grounds that the patent's specification did not describe the subject matter of the asserted claims.  The claims at issue did not require the use of sensors.  However, the district court agreed with Innovation Associates that the specification of the '601 patent implied that the use of "sensors" is critical to the functionality of the machine. Specifically, the court held, "no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors." Accordingly, the district court granted Innovation Associate's motion for summary judgment of invalidity for failure to satisfy the written description requirements of § 112. 

 

On appeal, the Federal Circuit reviewed de novo the language of the specification and—after pointing to several places in the specification suggesting the sensor may or may not be used—found that the wording of the specifications made the sensors an "optional, though desirable," feature of the invention.  The Court also pointed to the original claims as filed and noted "[w]hen a specification is ambiguous about which of several features are stand-alone inventions, the original claims can help resolve the ambiguity, though even original claims may be insufficient as descriptions or be insufficiently supported by the rest of the specification."  The Federal Circuit reversed the grant of summary judgment holding that, ScriptPro could establish that a person of skill in the art would be able to tell from description of the specification that "the inventor[s] actually invented the invention claimed."  The Court concluded that, although the machine would be more efficient with the sensors, it could be fully functional without them and, therefore, the written description was sufficient.

MVS Filewrapper® Blog: USPTO Issues Preliminary Guidance on Patentability Based on Alice Corp.

On June 25, 2014 the USPTO Deputy Commissioner for Patent Examination Policy released a Memorandum to the Patent Examining Corps that provides examiners with preliminary instructions related to subject matter eligibility of claims involving abstract ideas under 35 U.S.C. § 101 in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International.  The memo provides the following guidance with respect to the application of the Mayo framework to the examination of claims involving abstract ideas in light of the Alice decision:

 

(1)  Alice Corp. establishes that the same analysis should be used for all types of judicial exceptions, whereas prior USPTO guidance applied a different analysis to claims with abstract ideas (Bilski guidance in MPEP 2106(II)(B)) than to claims with laws of nature (Mayo guidance in MPEP 2106.01).

 

(2)  Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims), whereas prior guidance applied a different analysis to product claims involving abstract ideas (relying on tangibility in MPEP 2106(II)(A)) than to process claims (Bilski guidance).

 

The memo then explains that, despite these changes, the basic inquiries and examination procedures as to subject matter eligibility remain the same after the Alice decision. 

 

The instructions also set out a "Two-Part Analysis for Abstract Ideas."  First, the examiner is to determine whether the claim is directed to an abstract idea such as "fundamental economic practices," "certain methods of organizing human activities," "an idea of itself," or "mathematical relationships/formulas."   If the examiner concludes that the claim is directed to an abstract idea, the examiner must then determine "whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself."  The instructions provide examples of what would qualify and what would not qualify as "significantly more" as referenced in the Alice decision: 

 

Would qualify: Improvement to technology or technical field, improvements to functioning of computer itself, and "meaningful limitations."

 

Would not qualify:  Adding the words "apply it," and requiring no more than a generic computer to perform generic computer functions.

 

The instructions direct examiners to reject claims under 35 U.S.C. § 101 as being directed to non-statutory subject matter if they do not amount to "significantly more" than the abstract idea. 

 

These examination instructions are only initial guidelines, and will be updated and modified as needed after additional consideration of the decision and public feedback.  Accordingly, the USPTO has issued a Request for Comments and Extension of Comment Period on Examination Instruction and Guidance Pertaining to Patent-Eligible Subject Matter that is open through July 31, 2014. 

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