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« Patent Reform Legislation Off The Table -- For Now | Main | Webinar on Drafting Patent Claims after In re Packard »

May 22, 2014


I think Mr. Marks is in clear error with:

"He also noted that the Mayo Court did not change the machine or transformation test, but rather the Court pointed out that the Federal Circuit's analysis and application of the test was wrong. In particular, Mr. Marks explained that neither the administering step nor the determining step requires a transformation."

When I review the record (and do not limit the analysis to certain parsed steps), it appears that transformation was indeed recognized in the claims. The sticky question left unanswered by the Court was not whether transformation was or was not present (transformation in fact was present), but was the transformation "enough?"

The attempt here by Mr. Marks (as well as the ABA slide number 4) to somehow resurrect the "Machine or Transformation" as a viable go-no go mechanism is flawed.

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