Bad result for IBM in Ex parte Stading
IBM got reversal on an indefiniteness rejection under 112 P2, but lost on 102/103 in Ex parte Stading.
Of the indefiniteness:
35 U.S.C. § 112, SECOND PARAGRAPH
The Examiner maintains that:
[E]xaminer interpreted that the term "anticipated" equal with "predictable", wherein a set of key text terms are occurred predictable, and "randomly" equal with "unpredictable", wherein a set of key text terms are occurred unpredictable, which are no connection between these terms. Clarification is strongly advised.
(Ans. 3). Appellants explain and clarify the interpretation of the claim language and assert the terms are not contradictory. (App. Br. 16; Reply Br. 3).
"The legal standard for definiteness is whether a claim reasonably apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co., 927 F.2d 1200, 1217 (Fed. Cir.1991)). "[T]he definiteness of the language employed must be analyzed — not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Here, we conclude that the claim language does not fail to particularly point out and distinctly claim the invention. That is, although the language of the claim is broad with respect to the content of the nonfunctional descriptive material, it is not indefinite. Therefore, we do not sustain the rejection claims 1, 10, 15, 24, 43, and 49.
Of the indefiniteness:
35 U.S.C. § 112, SECOND PARAGRAPH
The Examiner maintains that:
[E]xaminer interpreted that the term "anticipated" equal with "predictable", wherein a set of key text terms are occurred predictable, and "randomly" equal with "unpredictable", wherein a set of key text terms are occurred unpredictable, which are no connection between these terms. Clarification is strongly advised.
(Ans. 3). Appellants explain and clarify the interpretation of the claim language and assert the terms are not contradictory. (App. Br. 16; Reply Br. 3).
"The legal standard for definiteness is whether a claim reasonably apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co., 927 F.2d 1200, 1217 (Fed. Cir.1991)). "[T]he definiteness of the language employed must be analyzed — not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Here, we conclude that the claim language does not fail to particularly point out and distinctly claim the invention. That is, although the language of the claim is broad with respect to the content of the nonfunctional descriptive material, it is not indefinite. Therefore, we do not sustain the rejection claims 1, 10, 15, 24, 43, and 49.
posted by Lawrence B. Ebert at 4:43 PM
0 Comments:
Post a Comment
<< Home