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« Conference & CLE Calendar | Main | Dr. Falk Pharma GmbH v. Generico, LLC (Fed. Cir. 2019) »

July 28, 2019


How (if at all) can the Fautz decision be reconciled with Ex parte Itagaki and Nishihara (PTAB 216)?

Fautz was decided under the new guidance while the other case was not.

In Itagaki and Nishihara, the PTAB gave a fairly detailed 101 analysis in their rehearing decision and seems to have concluded that the specification does not adequately establish that the invention is a technical advance over the prior art.

Nonetheless, these outcomes are just another example of why 101 needs to change.

Two questions, if I may:

1. At the EPO, eligibility is a cakewalk. In contrast to that, the obviousness enquiry is anything but. The technical solution to technical problem routine is part of the obviousness enquiry under the extremely prescriptive Problem and Solution Approach, namely, the determination of what is dubbed the "Objective Technical Problem" which is NOT determined relative to the prior art universe in toto but, rather, exclusively relative to D1. Because of that, both eligibility and the obviousness enquiry at the EPO are manageable. Do you think the USPTO "Approach" to eligibility is inherently fair to inventors?

2. Looking at the golf club design method claim, would it still have been abstract if it had included a final step of building the club in accordance with the method. How about a final step of making a blueprint of the thus-designed club?


1) No. The US does not have a procedure as refined as that of the EPO for carrying out this analysis. Currently, it is ad hoc and unpredictable.

2) Maybe. Up to the USPTO rep. I've seen similar claims go either way depending on who is looking at them.

The elephant in the room is class 705, business methods. It's the third largest class at the USPTO and yet unless there is a technical innovation OUTSIDE of business methods, claims will not be held eligible. See 12/468,616 above.

The best answer I have found is to focus on the other technical improvements in the application so that it will be classified in the appropriate technological art unit. If a case comes back classified as 705 despite your best efforts, consider redrafting and refiling.

"so that it will be classified in the appropriate technological art unit."

But is this NOT the very "thing" that the Supreme Court has chastised practitioners for? Is this not mere "scrivining?"

How is such a "best answer?"

The fact of the matter is that practitioners SHOULD NOT HAVE TO be so concerned with the "label" of "business method."

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