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PTAB.US: Decisions of PTAB Patent Trial and Appeal Board Updated Daily.

Tuesday, September 15, 2009

REVERSED
1700 Chemical & Materials Engineering
Ex Parte Tuttle et al ROBERTSON 103(a) MAC-GRAY CORPORATION

2100 Computer Architecture and Software
Ex Parte Hansen BLANKENSHIP 103(a) HEWLETT-PACKARD COMPANY

All words in a claim must be considered in judging the patentability of that claim against the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Ex Parte Hamilton MACDONALD 103(a) 37 C.F.R. § 41.50(b) AGILENT TECHNOLOGIES INC.

During patent examination, claims are given their broadest reasonable interpretation in light of the specification as it would be interpreted by skilled artisans. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citations omitted). Also, “although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. … [C]laims may embrace different subject matter than is illustrated in the specific embodiments in the specification.” Id. at 1323 (citations and internal quotation marks omitted).
2400 Networking, Mulitplexing, Cable, and Security
Ex Parte Decime LUCAS 112(2)/103(a) HEWLETT-PACKARD COMPANY

For post-prosecution analysis, our guiding courts use the following analysis: A patent claim is not invalid for indefiniteness unless it is insolubly ambiguous; therefore, if the meaning of the claim is discernible, the claim is sufficiently clear to avoid invalidity on indefiniteness grounds, even if interpreting the claim is difficult, and construction is one over which reasonable persons could disagree. Bancorp Services LLC v. Hartford Life Insurance Co., 359 F3d 1367 (Fed. Cir. 2004). However, during prosecution before this Office, while Appellant still has the opportunity to amend the claims, a higher standard of clarity is required: In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. Ex parte Kenichi Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential opinion).

2800 Semiconductors, Electrical and Optical Systems and ComponentsEx Parte Ascheman PAK 103(a) SHERRILL LAW OFFICES
Ex Parte Choo et al RUGGIERO 103(a) MORGAN LEWIS & BOCKIUS LLP
3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & ReviewEx Parte Guler et al MOHANTY 102(b) HEWLETT-PACKARD COMPANY
Ex Parte Ballurkar et al MOHANTY 103(a) PITNEY BOWES INC.
BILSKI /NUIJTEN - AFFIRMED
2600 CommunicationsEx Parte Azuma HOFF 101/103(a) IBM CORPORATION

Our reviewing court has found that transitory, propagating signals such as carrier waves are not within any of the four statutory categories (process, machine, manufacture or composition of matter.) Therefore, a claim directed to computer instructions embodied in a signal is not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007.)
Specifically, signals are unpatentable as failing a tangibility requirement to be "manufactures" because they are not tangible media. In re Nuijten 500 F.3d at 1366 (emphasis added).AFFIRMED-IN-PART

2600 CommunicationsEx Parte Newville WHITEHEAD, JR. 103(a) OCCHIUTI ROHLICEK & TSAO, LLP
Ex Parte Hsu et al SAADAT 102(e)/103(a) ALSTON & BIRD LLP

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte George HASTINGS 102(b)/103(a) HOVEY WILLIAMS LLP

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