|
Kalman posted:Going to be a fun notice and comment period on that one. I've been mostly responding to Berkhekmer on the basis that nothing significantly more than the abstract idea is recited necessitating a factual inquiry into whether such subject matter is routine and conventional, or giving a 112 enablement rejection along with it and saying that based on the level of disclosure either it's not enabled or it's routine and conventional Speaking to junior examiners, I'm surprised we're not seeing APA challenges to current 101 practice
|
#
¿
Jul 26, 2018 02:36
|
|
|
|
| # ¿ May 16, 2024 23:30 |
|
|
Meatbag Esq. posted:Did berkhekmer change anything on your end besides a new stupid argument you have to put up with on occasion? As in, were there any cases that would have/would not have received a 101 rejection before or after the memo? I always felt like the routine etc side of things was rarely if ever close enough to be worth arguing. I've used the explanation at 881 F.3d at 1369 as to why the Applicant didn't disclose anything more than the idea itself if they can't point to a benefit, as opposed to the invention as a whole merely being a particular implementation of the idea on the theory that there's many ways to implement the idea and merely choosing a specific one isn't patentable absent more.
|
|
#
¿
Jul 26, 2018 06:23
|
|
|
After the Supreme Court decision in Alice 4 years ago, there's been a bunch of developing case law at the federal circuit over what can and can't be patented. As the case law has developed, a test has arisen that inventions directed to an abstract idea are not patentable unless they are directed to significantly more than the abstract idea, and are not routine and conventional. Of course, what all those words mean is not clear, and case law has been further explaining what "abstract", "significantly more", and "routine and conventional" mean. Earlier this year, Berkheimer came out, which says that whether something is routine and conventional is a factual determination, and everyone was hand-wringing over weather this meant that examiners would have to start providing evidence instead of just hand waving away the claims. At least in my experience, it hasn't really changed much, because most of the applications I examine don't recite anything significantly more than the abstract idea in the first place such that I would need to determine whether or not it's routine and conventional. of course, the federal circuit also hasn't actually explained what "significantly more" means, so we have to work by way of example in cases where they have found packable subject matter.
|
|
#
¿
Jul 26, 2018 13:58
|
|
|
I've suggested that they take 101 away from the examining core, and have a pre-examination specialist read the disclosure to see if anything significantly more than an abstract idea is disclosed before sending it to an examiner, and moving payment of the search fee to when the case is forwarded to the examiner, who determines both 102 and 103, and, if subject matter significantly more than an abstract idea is disclosed, whether it is routine and conventional
|
|
#
¿
Jul 26, 2018 14:02
|
|
|
rip warszawa choked on a dick
|
|
#
¿
Jul 29, 2018 00:16
|
|