Category Archives: Patentability

Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part III

Author: Adriana L. Burgy
Editor: Leslie A. McDonell

In Part III of “Myriad, Mayo, Chakrabarty, Oh My:  Strategies for Life Sciences Diagnostics” (links to Part I can be found here and Part II here), we consider the use of examiner interviews and how they can assist into obtaining allowable diagnostic claims. An examiner interview is not a new tool for the prosecutor; it gives an applicant an opportunity to discuss the prior art, the invention, and potential claim amendments in one instance with an examiner. While the gold standard is an in-person interview, telephone interviews are the norm due to today’s prosecution budgets and the USPTO hoteling options for examiners. Continue reading

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Thales : Federal Circuit Forces Acceleration on § 101 for Physics-Based Claims

Author: Christopher C. Johns
Editor: Adriana L. Burgy

CAFC DecisionThales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017)

Decision:  In Thales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit reversed a decision of the Court of Federal Claims, 122 Fed. Cl. 245 (2015), that found claims drawn to an inertial tracking system ineligible. In reversing, the Federal Circuit found that the claims were not directed to an abstract concept. Continue reading

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In re Ethicon: Connecting Seemingly Unrelated Dots May Support An Obviousness Conclusion

In re Ethicon: Connecting Seemingly Unrelated Dots May Support An Obviousness Conclusion

Author: Clara N. Jimenez
Editor: J. Derek McCorquindale

Composition claims are often rejected as obvious over the combinations of prior art referenced, that separately claim the ingredients of the claimed combination. Moreover, often the disclosure of the claimed ingredients is in the context of different chemical applications. In such cases, the obviousness determination frequently turns on whether one of ordinary skill in the art would have been motivated to combine the references to arrive at the claimed invention with a reasonable expectation of success. The inquiry is highly factual and can lead to different results, depending on the perspective of the fact finder. The Federal Circuit opinion in In re Ethicon —and Judge Newman’s dissent—illustrate the difficulty of this inquiry. 844 F.3d 1344, 1354 (Fed. Cir. 2017). Continue reading

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Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part II

Author: Adriana L. Burgy
Editor: Leslie A. McDonell

As former Chief Judge Giles Rich proclaimed, “The name of the game is the claim.” In Part II of “Myriad, Mayo, Chakrabarty, Oh My:  Strategies for Life Sciences Diagnostics” (link to Part I can be found here), we will look at claiming strategies.

Often times, the number of claims that protect an invention is overlooked and not necessarily a discussion point when drafting a patent application. And, gone are the days of 100 plus claims due to excess claim fees, but that does not mean applicants should be limited to three independent claims and a total of twenty claims, i.e., the number of claims allotted with the basic filing fee; definitely not.  In an earlier post, we discussed examining the number of claims that protect an invention; the post can be found here. The number of claims should also be a strategic tool when addressing Section 101 rejections.  Continue reading

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Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part I

Author: Adriana L. Burgy
Editor: Leslie A. McDonell and Amanda K. Murphy, Ph.D.

Patent eligibility is a balancing act; the Supreme Court explained in Mayo that “too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ides.” In an era of subject matter eligibility uncertainty, the on-going question is: How do you deal with 101 rejections and, in particular, for diagnostic inventions in the life sciences space? In a series of posts, we will explore different strategies to answer that question. Continue reading

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