Summary: BPAI’s rejection affirmed where appellant conceded during oral argument that claims cover ineligible subject matter.

Case: In re Bentwich, No. 2013-1460 (Fed. Cir. June 6, 2014) (non-precedential). On appeal from the Patent Trial and Appeal Board in Serial No. 10/536,560. Before Lourie, Clevenger and Reyna.

Procedural Posture: Applicant appealed PTO’s rejection of claims as anticipated. During oral argument, applicant conceded patent ineligibility. CAFC affirmed PTO’s rejection and remanded with respect to unrejected claims.

  • Patent Eligibility: Applicant conceded claimed subject matter was naturally occurring and therefore patent ineligible under § 101 on appeal following the Supreme Court’s Myriad decision. Because patentability over prior art does not matter if the subject matter is ineligible for patent protection under § 101, the CAFC affirmed the rejection.

Aryn Conrad