September, 27th, 2017

WHIPgroup triumphs before Patent Trial and Appeal Board (PTAB) in obtaining a pivotal decision that reverses rejections under 35 U.S.C. §§ 101 & 112. The claimed invention is directed to a device and method for controlling and/or monitoring at least one apparatus during a medical intervention. Representative claim 16 has method steps including providing various control and interface units. Although no prior art rejections were maintained, the Examiner asserted that the claims do not amount to significantly more than an abstract idea. WHIPgroup argued that such conclusion did not satisfy the initial burden of presenting a prima facie case of unpatentability, but more importantly, the claims require a particular computer system.

The PTAB agreed with WHIPgroup, analyzing step 1 of Alice to conclude that it was unclear how the claims are directed to an abstract idea. In analyzing step 2, the PTAB found that the instant claims are similar to those in Bascom in that as in Bascom, an intermediary is inserted between two otherwise conventional nodes to move the location where a process is otherwise ordinarily executed.[1] In this case, it is checking critical parameters in medical intervention. The PTAB was also persuaded by WHIPgroup’s arguments that the claims have supporting written description in the original disclosure and further distinctly claim the invention. Oral argument was made from WHIPgroup’s video argument room, saving the expense of traveling to Washington, D.C. With all outstanding rejections being reversed, a Notice of Allowance is expected shortly.

[1] Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)

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