Christopher D. Bayne

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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.

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 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.”

Board Affirms the use of Official Notice when Applicant fails to establish “Reasonable Doubt”

USA - July 7 2017 In some rare circumstances, it is permissible for a patent examiner to take “Official Notice” without providing documentary evidence in support of a…

Under the microscope: an in-depth look at the ‘on-sale bar’ under the Federal Circuit’s opinion in helsinn healthcare

USA - May 17 2017 In Helssin Healthcare the Federal Circuit reversed the trial court’s finding that four patents-in-suit (3 patents governed under pre-AIA, and 1…