Ex parte Smith (PTAB 2019)

Software Claims Survive Section 101 Challenge and Are Found to Be Directed to Patent-Eligible Subject Matter By Joseph Herndon — In the U.S. Patent and Trademark Office, the Patent Trial and Appeal Board (PTAB) recently designated its decision in Ex Parte Smith as an informative decision for its application of the revised guidance on the application of 35 U.S.C. § 101. (Ex parte Eileen C. Smith, Anthony Montesano, Edward T. Tilly, Mark A. Esposito, Stuart J. Kipnes, and Anthony J. Carone, Appeal 2018-000064, Technology Center 3600). Below, we analyze the decision, which is favorable for applicants, to illustrate that even…

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