Board applies Mayo Collaborative Servs. v. Prometheus Labs., Inc. and rejects a method of predicting a response to treatment as unpatentable subject matter under 35 U.S.C. § 101 *

USA - July 23 2012
In Ex parte Potts (Case No. 2011-004700, in Application Serial No. 11/690,745, decision issued July 17, 2012), the Board rejected as unpatentable subject matter a claimed method for predicting the outcome of a clinical treatment based on measured correlations between treatments and responses, because the claims at issue sought only to patent a “law of nature.”

Product-by-process not obvious over a reference ‘capable of’ undergoing the process *

USA - May 16 2012
In Ex parte Babcock (Case No. 2011-011726, in Application Serial No. 10/636,834, decision issued May 9, 2012), the Board reversed the Office’s rejections under 35 U.S.C. § 103(a) because the process steps recited in the Applicant’s claims were relevant to patentability and not adequately described in the cited references.

Board affirms-in-part and reverses-in-part based on claim construction and design choice *

USA - March 8 2012
In Ex parte Goettsch (Case No. 2011-006303, in Application Serial No. 12/134,270, decision issued March 3, 2012), the Board affirmed-in-part and reversed-in-part the Examiner’s rejections under 35 U.S.C. §§ 102(b) & 103(a), and in doing so highlighted important aspects of claim construction, and obviousness rejections based on design choice.