PTO Position on Evidence in a §101 Rejection

The PTO has been notably silent on the issue of what evidence is required from the PTO in a §101 analysis.  The PTO Solicitor’s Office did express some views on the issue in its briefing of the In re Villena appeal.  Perhaps they have changed their mind after McRO v. Bandai.  You can access the PTO’s brief [here].  This might be helpful material to anyone that is planning on attending the upcoming PTO roundtable on Monday on subject matter eligibility.

The Federal Circuit issued a Rule 36 Judgment on the appeal.  Because the PTAB rejected the claims for 102 and 103 reasons in addition to 101, one cannot say that the Federal Circuit was endorsing the Solicitor’s Office views on patent eligibility.  The Federal Circuit does not always address all issues on appeal to reach an affirmance of the Board.  For example, in In re Gleave the court stated:

Therefore, we affirm the Board’s rejection of claims 1, 4, 15, and 18-21 of the ‘493 application under § 102(b). We need not reach the § 103 obviousness rejection.

In re Gleave, 560 F. 3d 1331, 1338 (Fed. Cir. 2009)

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