PTAB Adopts WHIPgroup’s Arguments and Reverses Rejections for Software Case

May, 1st, 2017

Categories: Articles, Blog, News Tags: patent, PTAB, software, USPTO, whipgroup

WHIPgroup successfully persuaded the PTAB to reverse rejections for a computer-implemented invention. The invention is directed to a control system for a materials separation process that can be used for pulp and paper production. The claims were rejected for lack of enablement, indefiniteness, and anticipation. On Appeal, WHIPgroup argued the disclosure should be presumed to be enabled and a patent need not teach, and preferably omits, what is well known in the art. In addition, WHIPgroup argued the inventors are skilled in the art and the Office failed to provide any evidence rebutting their teachings in the specification. Finally, WHIPgroup argued that programming creates a new machine once it is programmed and the Office failed to give patentable weight to these limitations. The PTAB Board agreed and reversed all rejections. This case demonstrates that examiners continue to struggle with computer-implemented inventions. Oral argument was held on April 25 from WHIPgroup’s video hearing room, which provides a cost-effective alternative to in-person arguments in Washington, D.C.