Friday, February 01, 2013

Ex parte Holliday on 35 USC 112 P2

Ex parte Holliday on definiteness:

The definiteness requirement seeks to “ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee‟s right to exclude.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). Here, claim 2 specifies that the generated correlation of claim 1 is a quadratic relationship. Claim 2 differs from claim 1, which recites a correlation encompassing a quadratic, linear, or exponential relationship. Thus, we conclude that claim 2 is definite.

The examiner's viewpoint: The Examiner rejects claim 2 as being indefinite, stating that “[i]t is unclear why the characterization of the relationship between energy and voltage is of any importance, and how this characterization will impact a step of the method” (Ans. 4). According to the Examiner, “[f]or instance, if the relationship were exponential, then the plotted points should be fitted with an exponential curve,” and “[o]n the other hand, if all of the relationships between voltage and energy are quadratic, then this limitation is an inherent component of independent claim 1” (id.).


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