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Rothwell Figg Achieves Rare Reversal of Section 101 Rejection

August 1, 2019

Rothwell Figg attorney Richard Wydeven successfully convinced the USPTO’s Patent Trial and Appeal Board to reverse an examiner’s rejection that its client’s patent application was directed to non-patent eligible subject matter. Application Serial No. 14/222,180, by Gen-Probe, Incorporated (a subsidiary of Hologic, Inc.), is directed to a method for accurately and efficiently determining the concentration of an analyte in a patient sample by numerically filtering out extraneous noise contributions to a detected signal. The application was rejected by the examiner on the grounds that it implemented an abstract idea using conventional laboratory and signal processing techniques. Applying the 2019 Revised Patent Subject Matter Eligibility Guidance issued by the USPTO, the Board agreed that while the claims recite an abstract concept, the claims integrate the concept into a practical application and thus are directed to eligible subject matter. Although the USPTO issued Revised Patent Subject Matter Eligibility Guidance after the appeal was fully briefed, Wydeven filed a supplemental brief arguing the applicability of the Guidance shortly before oral argument. The Board apparently found the supplemental brief to be persuasive, as it cited that brief extensively in its August 1, 2019 decision reversing the rejection.