Fletcher YoderEvidence not submitted by an applicant during prosecution or appeal is not admissible as a matter of right, and may not be admissible at all in a subsequent court appeal. The Federal Circuit will likely apply an equity-like standard when considering the admissibility of such evidence.
The Board found a “computer-implemented method” claim patentable because the claim recited a process that employs one of the other statutory categories, e.g., a particular apparatus and not a generic computing device. The Board found a “computer-implemented system” claim not patentable because the claim did not recite a particular machine or particular apparatus, but was instead directed to every substantial practical application of an abstract idea.
The Board does not enter into agreements for claim amendments/cancellations that would restrict future actions the Board could take.