From: Raczkowski, David [mailto:e-mail address redacted] 
Sent: Tuesday, July 08, 2014 1:57 PM
To: myriad-mayo_2014
Subject: Mayo and Alice feedback

Hello,
 
                I know this is for feedback about the Myriad-Mayo guidelines,
 but the reaction to Alice is urgent.  I was told by an Examiner that he will 
reject all software claims, since he has no guidance about what an abstract 
idea is.  I don’t believe that is what Deputy Commissioner Andrew Hirshfeld 
wanted to result from the memo of June 25.  But, please let him know that at 
least some art units are rejecting all software inventions now.  
 
                Effectively, the Examiner believes that the abstract idea could 
be the exact claim scope of the claims, as there is not clear cutoff between an 
invention and an abstract idea.  As to proper guidance on what an abstract idea 
is, we should look to the Supreme Court cases: (1) a well-known economic principle
 – Bilski and Alice, and (2) a formula – Benson and Flook.  These are the two areas 
that have been held to  constitute an abstract idea.
 
Thanks
Dave
 
 

David Raczkowski       
Kilpatrick Townsend & Stockton LLP  
Eighth Floor | Two Embarcadero Center | San Francisco, CA 94111 
office 415 273 7555 | fax 415 723 7192
draczkowski@kilpatricktownsend.com | My Profile | vCard

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