Category Archives: 112

Ex Parte Catlin : Functional Claim Elements to a General Purpose Computer Must Be Supported by an Algorithm

Author: Michelle Pacholec Ph.D.
Editor: Adriana L. Burgy

PTAB Decision

Ex parte Catlin, Appeal 2007-3072 (February 3, 2009)


The Supervising Patent Examiner filed a request for rehearing of a Board decision affirming-in-part and reversing-in-part an Examiner’s decision based on obviousness grounds. In reviewing the rehearing request, the Board vacated its prior decision, dismissed the request for rehearing, and instituted a new ground of rejection of all the claims for indefiniteness under 35 U.S.C. § 112, second paragraph.

The technology related to a method for implementing an on-line incentive system, reciting “providing, at a merchant’s website, means for a consumer to participate in an earning activity.” Noting that the specification describes generally that such earning activity can be accessing through the web site, and that incentive activities may generally include frequent flyer and “points”-based programs, the Board stated that such description “merely provides examples of the results of the operation of an unspecified algorithm . . . by which the consumer is able to participate in an earning activity.” The Board determined that the “specification fails to disclose the algorithms that transform the general purpose processor to a special purpose computer programmed to perform the” claimed functions. See Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).

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Applying the Written Description Requirement to Design Applications: USPTO Tries Again

Author: Elizabeth D. Ferrill
Editor: Stephanie M. Sanders

On Friday April 15, the USPTO published a Federal Register notice (81 Fed. Reg. 22233 (Apr. 15, 2016)) seeking comments on new guidelines for the application of the written description requirement to design patent applications.

In February 2014, the USPTO released an earlier set of draft guidelines for applying the written description requirement to design patent applications that focused on a set of “factors” used to determine if an amended claim, or a claim in a continuation design application that includes only a subset of originally disclosed elements, met the written description requirements under 35 U.S.C. § 112. After conducting a public Roundtable discussion with the design patent bar and receiving public comments, the USPTO decided to rethink this approach.

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Blocking the Road: Antibodies and Epitope Claims

Author: Jeffrey M. Jacobstein
Editor: Amanda K. Murphy, Ph.D.

District Court Decision: Amgen Inc. et al v. Sanofi et al., DED-1-14-cv-01317 (Mar. 16, 2016)

BackgroundAmgen is the owner of two patents directed to anti-PCSK9 antibodies, US 8,829,165 and US 8,859,741. PCSK9 (proprotein convertase subtilisin/kexin type 9) is an enzyme found in the liver, among other tissues, and binds to receptors for low-density lipoprotein (“LDLR”). The patents include claims to monoclonal antibodies that bind to particular residues on PCSK9 and block uptake by LDLR. The specification provides testing data on, inter alia, epitope contact residues for two antibodies that prevent LDLR uptake, as well as competitive binding (“binning”) experiments for a series of additional antibodies.

IssueAt trial, the defendants alleged the claims lacked enablement and written description because they covered a large genus of antibodies without providing sufficient examples or structural details of antibodies targeting the correct epitope. The defendants also argued the claims were obvious over prior art antibodies directed to PCSK9.

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