In Ex parte Michalek, Appeal No. 2023-004204 (PTAB Dec. 27, 2024), the Patent Trial and Appeal Board (PTAB) evaluated an invention involving medical health technology and artificial intelligence. The PTAB specifically acknowledged that the patent claims at issue recited new information about the nexus between certain biomarkers and development of lung cancer as facilitated by machine learning. In fact, prior to appeal, the applicant had successfully overcome all rejections under section 103. Notwithstanding, based on Patent Office guidance, the PTAB still determined the claims were flawed from the perspective of subject matter eligibility. Although the facts in this decision concern medical health innovation, the decision is helpful to inform patent strategy for AI enabled inventions across various disciplines and industries.
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