{"id":7572,"date":"2015-11-02T01:10:31","date_gmt":"2015-11-02T07:10:31","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=7572"},"modified":"2015-11-02T01:10:31","modified_gmt":"2015-11-02T07:10:31","slug":"ex-parte-poisson","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=7572","title":{"rendered":"Ex Parte Poisson"},"content":{"rendered":"

The other day I posted the links to comments that have been submitted in regard to the USPTO’s July \u00a7101 Guidance. \u00a0I have enjoyed reading through those comments as time permits. \u00a0One submission that caught my eye was FICPI’s focus on the PTAB’s Ex Parte Poisson<\/span> case. \u00a0Those comments by FICPI are shown below:<\/p>\n

\n

FICPI <\/span><\/strong>is concerned that these broad generalizations encourage examiners to reject claims as being directed to an abstract idea without a thorough analysis of the claims or a proper characterization of what \u201cthose in the art would recognize, as elements that are well-understood, routine and conventional.\u201d The Update provides scant direction as to what, more than the mere opinion of the examiner, is required to present a <\/span>prima facie <\/span><\/em>case of ineligibility. As one example, the Update provides no direction to examiners regarding determining a level of skill for \u201cthose in the art\u201d who might be capable of performing a claimed method in one\u2019s own mind or by \u201cusing a pen and paper.\u201d <\/span><\/p>\n

The Patent Trial and Appeal Board (PTAB) has held that examiners must present a <\/span>prima facie <\/span><\/em>case of patent ineligibility, finding that an examiner\u2019s mere \u201copinion\u201d that claims are abstract is an \u201cinadequate finding of fact on which to base the <\/span>Alice <\/span><\/em>analysis.\u201d <\/span>See Ex parte Poisson<\/span><\/em>, No. 2012-011084 (PTAB Feb. 27, 2015). Rather, the \u201cexaminer bears the initial burden, on review of the prior art or on any other ground, of presenting a <\/span>prima facie <\/span><\/em>case of unpatentability.\u201d <\/span>See<\/span><\/em>, <\/span>e.g.<\/span><\/em>, <\/span>In re Oetiker<\/span><\/em>, 977 F.2d 1443, 1444 (Fed. Cir. 1992) (emphasis added); <\/span>see also <\/span><\/em>MPEP \u00a7 2106.III (citing <\/span>Oetiker<\/span><\/em>). <\/span><\/p>\n

<\/p>\n

While the Update notes that examiners have been instructed to make such a <\/span>prima facie <\/span><\/em>case, and admits that the Supreme Court and the Federal Circuit have used textual evidence (e.g., books) to support that the claims are directed to an abstract idea, the Update stops short of identifying what is required from Examiners to present a <\/span>prima facie <\/span><\/em>case of ineligibility. FICPI is concerned that this will led to inconsistent and unpredictable results, neither of which is favorable to practitioners or the industry at large.<\/span><\/p>\n<\/blockquote>\n

The\u00a0Ex Parte Poisson<\/span> decision is available here: [Link<\/a>]. \u00a0Here is one quote that might be of interest:<\/p>\n

<\/p>\n

<\/p>\n

Thus, in the first step of the <\/span>Alice <\/span>analysis, the question is whether claim 1, i.e., as a simulation of a football game using a table and cards, is directed to an abstract idea. That determination has not been made in this case based on evidence. Instead, the Examiner merely expresses an opinion that \u201ca set of rules qualifies as an abstract idea.\u201d Yet, absent supporting evidence in the record \u2014 of which there is none, the Examiner\u2019s opinion is an inadequate finding of fact on which to base the <\/span>Alice <\/span>analysis.<\/span><\/p><\/blockquote>\n

Ex Parte Poisson<\/span>, Appeal No.\u00a0Appeal 2012-011084 (PTAB Feb. 27, 2015)<\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

The other day I posted the links to comments that have been submitted in regard to the USPTO’s July \u00a7101 Guidance. \u00a0I have enjoyed reading through those comments as time permits. \u00a0One submission that caught my eye was FICPI’s focus on the PTAB’s Ex Parte Poisson case. \u00a0Those comments by FICPI are shown below: FICPI […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/7572"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=7572"}],"version-history":[{"count":10,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/7572\/revisions"}],"predecessor-version":[{"id":7583,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/7572\/revisions\/7583"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=7572"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=7572"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=7572"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}