Tag Archives: 101

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

Author: Jeffrey M. Jacobstein
Editor: Eric P. Raciti

Ever since the Federal Circuit held that a later-issuing but earlier-expiring patent could serve as an obviousness-type double patenting (OTDP) reference in Gilead Sciences, Inc. v Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2011), Applicants and Patentees have found themselves facing many more double patenting rejections.  Even continuing applications filed in a single portfolio run the risk of receiving OTDP rejections if the claims of the subject and reference patents are not patentably distinct.  See AbbVie Inc. v. Kennedy Inst. of Rheumatology, 764 F.3d 1366 (Fed. Cir. 2014).  The court in Kennedy explained (in dicta) that patents sharing a common priority chain “still can have different patent terms due to examination delays at the PTO.”  AbbVie, 764 F.3d at 1373.  So, patent term adjustment accumulated during examination could be in jeopardy when the subject claims overlap those in a continuation. Continue reading

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RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

Author: Elliot C. Cook
Editor: J. Derek McCorquindale

In the nearly three years since Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Federal Circuit has analyzed the issue of patent-eligibility in the context of numerous distinct technologies. The court’s precedent applying Alice addresses patents directed to financial services, Internet content filtering, database maintenance, payment-based content access, animated facial gesturing, physical object tracking, distributed data processing, and more. One takeaway is that no technological discipline is, per se, eligible or ineligible. Instead, the outcomes of these cases are better explained by the specific inventions at issue and how they are claimed. RecogniCorp, LLC v. Nintendo Co., Ltd., No. 2016-1499 (Fed. Cir. Apr. 28, 2017), confirms this lesson. Continue reading

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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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Ex Parte Gutta: Computer means-plus-function claims may be indefinite for failure to adequately disclosed a supporting algorithm

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

PTAB Decision

Ex parte Gutta, Appeal 2008-4366 (August 10, 2009)


On appeal of 35 U.S.C § 101 rejections for method, system and article of manufacture claims, the Board entered a new ground of rejection under 35 U.S.C. § 112, second paragraph as to sole means-plus-function claim.  The claim related to a system with a “means for computing a variance of the symbolic values,” and a “means for selecting an item that has a symbolic value that minimizes the variance.”  Noting that neither the Examiner nor the appellants had indicated whether the claim invoked § 112, ¶6, the Board determined that the claim clearly used functional language and as such, required adequate supporting structure, material, or acts for performing the claim function in the specification.  Continue reading

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Another Diagnostic Patent Falls Apart under Ariosa/Mayo

Author: Jessica Roberts and Carla Mouta
Editor: Adriana L. Burgy

CAFC DecisionGenetic Technologies Ltd. v. Merial LLC, No. 2015-1202 (Fed. Cir. Apr. 8, 2016)

BackgroundGenetic Technologies Ltd. (GTG) is the owner of U.S. Patent No. 5,612,179 (the ‘179 patent), directed to “junk DNA.” The patent’s basic idea stems from the inventors discovery that non-coding DNA sequences (also referred to as introns or “junk DNA”) tend to be inherited with DNA sequences in coding regions (exons) of certain genes, more than random probability would predict.  The patent provides methods for detecting an allele of a particular gene that are in linkage disequilibrium by amplifying and analyzing non-coding regions known to be linked to the coding region. These methods are helpful because they allow for detection of specific alleles for a variety of purposes, including diagnosis and treatment of genetic disorders and diseases correlated with those alleles. While the specification is not limited to detecting any particular alleles linked to any particular non-coding sequences, it does provide examples of linked alleles known to be diagnostic of inherited diseases. Continue reading

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