Not a flash in the pan: abstract idea reversal rate continues upward trend for July

July saw a continued trend of reversing Examiners’ abstract idea rejections. Last month, we reported that the PTAB overturned abstract idea rejections in June above 15%. Before this, it had been a year since such a high reversal rate. Now it appears that June was not a one-off month anomaly, but rather a continuation of a trend.

Similar to June, in July the PTAB decided a lot of abstract idea rejections. Of 195 total, 32 were reversed, yielding a pure reversal rate of 16.5%. One decision was partially affirmed, yielding a partial reverse rate of 17%.

Of note, in July the Board decided 20 more abstract idea decisions than in June. And June was no small month for abstract idea decisions. Such a greater sample size (from an already impressive total in June) with similar reversal rate suggests the board has changed its deference of examiner abstract idea rejections in light of recent case law.

Check out additional information at anticipat.com. You can look up, for example, all the decisions where the board reversed specific examiner rejections. Try out a trial for Anticipat Research today.

Another Section 101 lack of utility rejection bites the dust

As reported in today’s recap email, in Ex Parte GELFAND et al (Aug. 2, 2018), the Board reversed a lack of utility rejection. This continues a longstanding trend of the Board frequently reversing such rejections.

In rejecting the claims as lacking utility under Section 101, the Examiner had asserted that the claims were not supported by a specific, substantial, and credible asserted utility, or a well-established utility. For support, the Examiner relied on MPEP § 2107.01 B(C), which states that “[a] method of assaying for or identifying a material that itself has no specific and/or substantial utility” is not considered to have a substantial utility.”

On appeal, the appellant argued “The present invention relates to the field of nucleic acid detection” and that nucleic acid detection has numerous uses including diagnostic uses and research uses–a specific utility.

While acknowledging the Examiner’s cited MPEP section, the Board rejected the Examiner’s reasoning. That identifying the presence of target nucleic acid sequences is a method for assaying “a material that itself has no specific and/or substantial utility.”

According to Anticipat Research, this type of rejection (Section 101 – Lack of Utility) has a very high reversal rate. Over the past two years, the PTAB has reversed 14 of 19 of these rejections, a relatively incredible 74% reversal rate. This may stem from the rejection being applied less frequently with other rejections and Examiners hence not having much experience with properly applying it.

With a reversal rate so low for lack of utility rejections, when struggling with an Examiner with such a type of rejection, it may be helpful to go straight to the Board on appeal to overcome such a rejection.