PTAB Distinguishes 101 Exceptions Under New Guidelines
Contributed by Ropes & Gray. Originally published on Patexia; republished here as part of the LexDana archive.
New Informative Decisions
The Patent Trial & Appeal Board (PTAB) issued new informative decisions this week applying its 101 Guidelines.
Ex Parte Olson, Appeal 2017-006489 (PTAB Mar. 25, 2019) (here)
The claims at issue recite a method of registering a catheter navigation system to a three-dimensional image. This decision reverses the rejection by the examiner under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mathematical concept, but that the claims recite additional elements that integrate the judicial exception into a practical application.
Ex Parte Kimizuka, Appeal 2018-001081 (PTAB May 15, 2019) (here)
The claims at issue recite a method for fitting a golf club. This decision affirms the rejection of the claims under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mental process, and determined that the claims do not integrate the exception into a practical application or provide an inventive concept.
Ex Parte Savescu, Appeal 2018-003174 (PTAB Apr. 1, 2019) (here)
The claims at issue recite a method for creating a life cycle workflow for a project. This decision affirms the rejection of the claims under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a method of organizing human activity, and determined that the claims do not integrate the exception into a practical application or provide an inventive concept.
Ex Parte Fautz, Appeal 2019-000106 (PTAB May 15, 2019) (here)
The claims at issue recite a magnetic resonance tomography apparatus. This decision reverses the rejection by the examiner under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mathematical concept, but that the claims recite additional elements that integrate the judicial exception into a practical application.
These decisions are designated “informative” or exemplary of the Board’s analysis as it is applied under the new 101 Guidelines. While helpful in the short term, let’s hope we can all stop with 101 metaphysics very soon.
Scott A. McKeown is an author of the Patents Post Grant
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