By Kevin E. Noonan --
Pursuant to the Notice published in the Federal Register today, the U.S. Patent and Trademark Office provided additional materials related to the Office's interpretation of what does (and what does not) satisfy the subject matter eligibility requirement of 35 U.S.C. § 101 (as interpreted by the Supreme Court). What was not made available were materials related to interpreting the metes and bounds of the statute with regard to natural products or diagnostic methods. Instead the Office provided the three Appendices referenced in the Notice directed to the effects of the Supreme Court's Alice v. CLS Bank decision.
Appendix 1 sets forth seven additional examples (in excess of the twenty previously set forth by the Office) related to Alice-type claims. These include examples taken from Parker v. Flook and Diamond v. Diehr as well as hypothetical examples and cases decided in the inferior courts.
Appendix 2 is a comprehensive index of all 27 of the Examples from the Office, set forth in tabular form for ease of appreciation of how the Office is making its decisions.
Appendix 3 has some relevance to the biotech and diagnostic methods audience, which lists nine Supreme Court decisions and thirty-six Federal Circuit and CCPA decisions related to subject matter eligibility.
PTO sources indicate that the expected biotech and diagnostic methods materials are still in process and are expected to be put up on the PTO website in future. The extent to which there may be internal dissension regarding such materials, or the effect of Drew Hirschfield's ascension to be Commissioner of Patents on this delay are unknown.
Patent Docs plans to provide additional information regarding the examples of Appendices 1 and 2 in subsequent posts.