In a final written decision, the Patent Trial and Appeal Board (PTAB) granted Finnegan client Neste Oil Oyj a motion to amend a biodiesel patent after Neste successfully proved that its proposed substitute claims are patent-eligible. The Board sets a high bar when it comes to amending claims and this is one of very few instances in which they have done so.
The PTAB concluded that claims one through 24 of Neste's '492 patent were unpatentable over the prior art. However, Neste requested a motion to amend and proposed substituting four of the claims with claims 25-28. The Board granted the motion, requiring Neste to explain why the claims are patentable over the prior art of record.