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Ex parte Kubin: Obviousness at the USPTO in biotechnology

As mentioned previously, the BPAI designated an opinion as precedential today addressing the issues of obviousness, enablement, and the written description requirement in the context of biotechnology inventions. These issues were addressed in the context of patenting a gene involved in regulating the immune system. Addressing the obviousness issue, the board determined that the previous […]

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Ex parte Smith: Obviousness at the USPTO in mechanical engineering

In another post-KSR opinion designated precedential today, the Board of Patent Appeals and Interferences affirmed an Examiner's final rejection of an application under 35 U.S.C. §§ 102 and 103. The claims "were combinations which only unite old elements with no change in their respective functions and which yield predictable results," and were thus found to […]

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Office of Management and Budget approves USPTO’s new continuation rules

The Office of Management and Budget has approved the two new rules promulgated by the USPTO relating to continuation applications and examination of claims. Apparently the meetings with various groups did not convince the OMB that the rules were inconsistent with the USPTO's regulatory authority. The rules are rumored to be different than those originally […]

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Federal Circuit approves MPEP guidelines for written description rejections

The Federal Circuit addressed the standard applied by the USPTO for establishing a prima facie case of failure to meet the written description requirement in Hyatt v. Dudas today. The court found that compliance with MPEP § 2163.04(I)(B), by pointing out the nonexistence of support in the specification and identifying the claim limitation(s) at issue, […]

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Attorney’s exclusion from USPTO practice based on ties to invention promotion firm affirmed

Unsuspecting inventors aren't the only ones hurt by fraudulent invention promotion firms. As a case decided today by the Federal Circuit shows, the attorneys they employ can also be harmed. Of course, in this case, the attorney isn't a very sympathetic figure. He was on the payroll of an invention promotion firm in the 1990s, […]

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200 companies express further concerns over Patent Reform Act of 2007

The hits just keep on coming for the Patent Reform Act of 2007 (H.R. 1908 and S. 1145). Over the past two weeks, Chief Judge Paul Michel of the Federal Circuit sent two letters criticizing portions of the Act. Before that, a group of Senators noted their concerns with the Act. Just after the Act […]

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Three groups meet with OMB to stop continuation rules from being implemented

In an effort to prevent the much–discussed impending rules changing continuation practice and the number of claims from being finalized, there were three meetings held regarding the proposed rules during May and June at the Office of Management and Budget (OMB), the office that must review and approve all regulations promulgated by federal agencies. It […]

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Peer to Patent “community” patent review officially launches

The Peer to Patent project (previously blogged about June 7, March 5, and February 28) is now up and running for its one year trial period. As noted previously, only computer-related applications are eligible for this pilot program. Thus far, there are five applications in the system: User selectable management alert format (assigned to Hewlett […]

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Senators express concern over Patent Reform Act of 2007

In a letter to the Chairman and Ranking Member of the Senate Judiciary Committee (which held hearings on the Patent Reform Act of 2007 last week), several Republican members of the committee expressed reservations about the current version of the bill. The contingent, made up of Senators Sam Brownback (R-KS), Tom Coburn (R-OK), Chuck Grassley […]

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Senate hearings on the Patent Reform Act of 2007

As noted previously, the Senate yesterday held hearings on the Patent Reform Act of 2007 (S. 1145). The witnesses were: Jon W. Dudas, Undersecretary of Commerce for Intellectual Property and Director of the USPTO Bruce G. Bernstein, chief intellectual property and licensing officer, InterDigital Communications Corp. Mary Doyle, Senior Vice President, General Counsel, and Secretary, […]

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