May 2016 Subject Matter Eligibility Guidance Update

May 4th, 2016

If you’re about to submit a response to a §101 rejection, please note that the May 2016 Subject Matter Eligibility Guidance Update was announced today.  Here is the link to the updated materials on the United States Patent and Trademark Office web site:  [link].

National Patent Prosecution Day . . . .

April 26th, 2016

I suppose that if there were ever to be a National Patent Prosecution Day, it would have to be celebrated on May 2nd.  After all, that is the anniversary of the Topliff v. Topliff decision in which the Supreme Court of the United States acknowledged:

The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.

Topliff v. Topliff, 145 U.S. 156, 171 (1892).

I suppose another candidate would be June 16th. That is the anniversary of Diamond v. Chakrabarty:

The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.” S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952).

Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144 (1980).

Odds and Ends

April 6th, 2016

Just a few odds and ends:

1)  Patently-O’s birthday is today. Can you guess how many years?  Happy Birthday, Patently-O!

2)  Those filing patent cases in Delaware in hopes of having noted patent jurist Judge Sue Robinson hear their case might want to take note that Judge Robinson is slated to take senior status next February. [source]  Congratulations, Judge Robinson.  Judge Robinson sat by designation with the Federal Circuit back in 2007.

3)  Temple Grandin received her own kids’ playing card from the USPTO over the weekend.   [Source].  Congratulations, Dr. Grandin.

Magic Microscope Anniversary

April 4th, 2016

The Department of Justice stepped in to argue the AMP v. Myriad case five years ago today. It was during that argument at the Federal Circuit that the patent world got to hear about the DOJ’s “Magic Microscope” test.  One year later, the case would make its way to the Supreme Court, where the PTO did not join in briefing the case.  That contrasts with Cuozzo v. Lee, currently pending at the Supreme Court, in which both the PTO and the SG’s Office are briefing the case together.

© Johnson and Vobach 2016

Judge Moore noted the Magic Microscope test in her concurring opinion in the case:

Although the Patent Office has consistently followed the same policy for a decade (and arguably a century or more), the United States, as an amicus represented at argument by the Solicitor General, now argues that the Patent Office’s published guidelines are incorrect and a misstatement of the law. In place of these guidelines, the Solicitor General suggested that we should use a “magic microscope” as part of our section 101 analysis. If we could observe the claimed substance in nature using this microscope, the Solicitor General argues, it is not patentable. The magic microscope test applies equally to portions of a larger, naturally occurring molecule. For example, the optical field of view could be zoomed to see just a sequence of fifteen nucleotides within the chromosome. As long as you could “see” the claimed molecule in nature using the magic microscope, it would fall into the “laws of nature” exception and be unpatentable subject matter.

Certainly the magic microscope has curb appeal—its child-like simplicity an apparent virtue. The magic microscope, however, would not see the claimed DNA molecules at issue in this case. An isolated DNA molecule has different chemical bonds as compared to the “unisolated” sequence in the chromosome (the ends are different). In short, the claimed molecules cannot be seen in nature through the magic microscope. While you may be able to see the order of DNA nucleotides in the chromosome, the isolated fragment of 1369*1369 DNA is a different molecule. It may be that the microscope can also break and form chemical bonds to yield the claimed isolated DNA. Even so, the microscope must make some decisions: should the isolated DNA begin and end in a phosphate? a hydrogen? a hydroxyl? a methyl group? an acyl group? These decisions might be obvious to a person of ordinary skill in the art, but they are not inherent to the unisolated sequence as part of the chromosome. Creating the claimed isolated DNA sequences therefore results in a distinctly unnatural molecule. Even the dissent agrees that the isolated DNA molecules at issue require cleaving chemical bonds, though it disputes the importance of the resulting distinct “`molecular species.’” Dissent at 1375 (quoting Linus Pauling, The Nature of the Chemical Bond 6 (3d ed.1960)). The magic microscope test simply does not work the way the government claims.

Ass’n for Molecular Pathology v. US Patent and Trademark Office, 653 F.3d 1329, 1368-69 (Fed. Cir. 2011)(Judge Moore concurring).

Justice Thomas announcing the Alice v. CLS decision

March 31st, 2016

I don’t believe that I ever posted Justice Thomas making the announcement of the Alice v. CLS decision.   You can listen to that announcement [here].

Nominate an inventor for the National Medal of Technology and Innovation

March 30th, 2016

The deadline is quickly approaching for nominating inventors for the National Medal of Technology and Innovation. If you are without a nominee and disillusioned by the Supreme Court’s patent eligibility test, I would have suggested that you consider nominating the inventors from the patent that was deemed patent ineligible in Ariosa v. Sequenom, 788 F.3d 1371 (Fed. Cir. 2015) — that’s Patent No. 6,258,540. However, I suspect that those inventors are British.

From the USPTO website:

Nominations Sought for National Medal of Technology and Innovation

The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking nominations for the 2016 National Medal of Technology and Innovation.
January 13, 2016
Press Release 16-01

CONTACT: (Media Only)
Paul Fucito or Sarah Maxwell
(571) 272-8400 or sends e-mail) or sends e-mail)

Washington - The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking nominations for the 2016 National Medal of Technology and Innovation. The medal is presented each year by the President of the United States and is this country’s highest award for technological achievement.

The medal is awarded annually to individuals, teams (up to four individuals), companies or divisions of companies for their outstanding contributions to America’s economic, environmental and social well-being. By highlighting the national importance of technological innovation, the medal also seeks to inspire future generations of Americans to prepare for and pursue technical careers to keep America at the forefront of global technology and economic leadership.

The USPTO administers the medal program on behalf of the Secretary of Commerce. Detailed information about the requirements for submission of a nomination as well as a nomination form can be downloaded at NMTI Nominations. All completed nominations must be submitted to the USPTO by midnight (ET), April 1, 2016.

For more information about the process, please contact: sends e-mail).

Updated Federal Circuit Rules of Practice

March 30th, 2016

From the Federal Circuit web site (last accessed 3/30/2016):

2016-03-29 21:39

The United States Court of Appeals for the Federal Circuit has amended the Federal Circuit Rules of Practice. The new rules are available here including a summary of changes. The amendments are extensive and include incorporating the terms of the Administrative Order Regarding Electronic Case Filing dated May 17, 2012; revising the requirements for confidential markings; as well as other updates, conforming changes and editorial corrections throughout. The revised rules are effective and shall apply to all appeals docketed on or after Friday, April 1, 2016. The notice version of the Rules of Practice 2016 will soon be replaced by a new web-structure version with enhanced electronic functionality.

Washington and Lee to serve as “continuity of operations” site for CAFC

March 24th, 2016

 The Federal Circuit visited Washington and Lee University yesterday to hear oral arguments.  Washington and Lee has been named as the “continuity of operations”* site for the Federal Circuit in the event of an emergency.

The Federal Circuit will now sit at Washington and Lee once each year.  [Source]

*Continuity of Operations, as defined in the National Security Presidential Directive-51/Homeland Security Presidential Directive-20 (NSPD-51/HSPD-20) and the National Continuity Policy Implementation Plan (NCPIP), is an effort within individual executive departments and agencies to ensure that Primary Mission Essential Functions (PMEFs) continue to be performed during a wide range of emergencies, including localized acts of nature, accidents and technological or attack-related emergencies.

“Redundant” is the new “Abstract”

March 23rd, 2016

There was a great quote in the dissent by Judge Reyna in the Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. decision published today.

Judge Reyna quotes the Burlington Truck Lines case from the Supreme Court:

“Expert discretion is the lifeblood of the administrative process, but unless we make the requirements for administrative action strict and demanding, expertise, the strength of modern government, can become a monster which rules with no practical limits on its discretion.” Burlington Truck Lines, Inc. v. United States, 371 U.S. 156, 167 (1962) (internal quotation marks omitted).

Your natural inclination might be to think that Judge Reyna was referring to the PTO’s unbridled enthusiasm for declaring claims “abstract” without the citation of any evidence to substantiate such an assertion.  In this case, however, the issue was the redundancy doctrine and how it is applied in inter partes reviews.  Apparently, “redundant” is the new “abstract.”

You can read the opinion here: [Link].

Overuse of “printed matter” doctrine

March 19th, 2016

The associate solicitor for the USPTO ran into a buzz saw in the form of Judges Taranto and Hughes in the oral argument of In re Distefano.  The USPTO was fortunate as Chief Judge Prost opted to write the opinion for the court in this case.  She was the least vocal during the oral argument in criticizing the PTO and the opinion was somewhat tame compared to the oral argument.

As one example of the criticism, Judge Hughes remarked during the oral argument:

I mean you’re really asking us to let you be lazy. I don’t mean to be mean about it, but this is the third printed matter case I’ve seen from you all and I’ve only been here two years. And, they’ve all involved instances like this where the Board is trying to fix a sloppy examiner’s rejection.

You can listen to that comment here: [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the opinion here [Read].