Chapter §9.11 Biotechnological Processes: §103(b) (2006) [Pre-America Invents Act of 2011]

• Jurisdiction: United States

§9.11 Biotechnological Processes: §103(b) (2006) [Pre-America Invents Act of 2011]

The rarely invoked §103(b) of the pre-AIA Patent Act created a statutory shield that prevented the USPTO from rejecting certain biotechnology process claims for obviousness. If a patent applicant presented a claim to a biotechnological process as defined in §103(b)(3)(2006), and the process used or resulted in a composition of matter that was both novel and nonobvious, the applicant could elect to proceed under §103(b). If the applicant timely made such election, the USPTO would consider the biotechnological process nonobvious.⁸⁶⁴

Congress enacted subsection (b) of §103 in 1995,⁸⁶⁵ seeking to legislatively resolve a perceived conflict between the Federal Circuit decisions In re Durden⁸⁶⁶ and In re Pleuddemann.⁸⁶⁷ The Federal Circuit decided In re Ochiai a few weeks thereafter, resolving the conflict through judicial decision.⁸⁶⁸ Thus §103(b) was quickly rendered largely unnecessary and moot. The USPTO's official guidance to its examiners stated that "[i]n...