Tuesday, April 23, 2013

Bad day for examiner in Ex parte BOOMERSHINE

From within Ex parte BOOMERSHINE

As to 101:

The Examiner approach in determining whether the claimed subject
matter is patentable subject matter is piecemeal. Cf. Parker v. Flook, 437
U.S. 584, 594 (1978) (“Our approach to respondent's application is,
however, not at all inconsistent with the view that a patent claim must be
considered as a whole.”) When viewed as whole, it is plainly evident the
claimed subject matter is tied to a computer.

As to 112 P2

The difficulty with the Examiner’s position is that no claim
construction analysis has been done. “That determination [for definiteness]
requires a construction of the claims according to the familiar canons of
claim construction. Only after a thorough attempt to understand the
meaning of a claim has failed to resolve material ambiguities can one
conclude that the claim is invalid for indefiniteness.” All Dental Prodx. LLC
v. Advantage Dental Prods. Inc., 309 F.3d 774 (Fed. Cir. 2002). Part of that
determination is to read the claims in light of the Specification.

requirement that the claims “particularly point[] out and distinctly claim[]”
the invention is met when a person experienced in the field of the invention
would understand the scope of the subject matter that is patented when the
claim is read in conjunction with the rest of the specification.” Inc. v.
nVIDIA Corp., 259 F.3d 1364 (Fed. Cir. 2001). Only then can a
determination be made that the claimed subject matter is so unclear as to rise
to the level of indefiniteness as proscribed by the 2nd paragraph of §112. Cf.
Bancorp Serv. LLC v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir.
2004). (“We have held that a claim is not indefinite merely because it poses
a difficult issue of claim construction; if the claim is subject to construction,
i.e., it is not insolubly ambiguous, it is not invalid for indefiniteness. [ ]
is, if the meaning of the claim is discernible, “even though the task may be
formidable and the conclusion may be one over which reasonable persons
will disagree, we have held the claim sufficiently clear to avoid invalidity on
indefiniteness grounds.” Exxon Research & Eng'g Co. v. United States, 265
F.3d 1371, 1375 (Fed. Cir. 2001).”)

As to a "hybrid claim"

The Examiner also argues the claim 30 is a hybrid claim. Final Rej. 6.
However, claim 30 is very clearly drawn to a computer system comprising a
CPU, a computer readable storage media, and program instructions. It does
not include a step of using the system that would make it a “hybrid” claim.
Cf. IPXL Holdings LLC v. Amazon.com Inc., 430 F.3d 1377 (Fed. Cir. 2005)
(“Because claim 25 recites both a system and the method for using that
system, it does not apprise a person of ordinary skill in the art of its scope,
and it is invalid under section 112, paragraph 2.”)

Of 102(b):

We disagree. Lenard does not describe unlicensed software as
claimed. Lenard is directed to a “multi-site software license balancing
system [which] authorizes concurrent usage of an application files at
multiple sites.”

Accordingly, Lenard does not describe,
expressly or inherently, the claimed subject matter.
The Examiner has not made out a prima facie case of anticipation.

It was a bad day for the examiner:

The rejections of claims 21-33 under 35 U.S.C. §101 as being directed
to non-statutory subject matter; claims 21-33 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention;
claims 21, 22, and 24 under 35 U.S.C. §102(b) as being anticipated by
Lenard; claim 23 under 35 U.S.C. §103(a) as being unpatentable over
Lenard; and, claims 25-33 under 35 U.S.C. §103(a) as being unpatentable
over Lenard and Yellai, are reversed


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