Ex parte Ganesh
from Ex parte Ganesh
In response to Appellants’ arguments, the
Examiner points out that the values
required by claim 2 are taught by the
not the 10%
change condition in the user alert.
Ans. 15. As such, Appellants’ arguments attempting to distinguish the
setting of a 10% value in Langseth from the claimed “value” is unpersuasive
because the arguments do not address the prima face case of obviousness
established by the Examiner’s rejection.
from footnote 5:
We note that the instant appeal was filed
to the Supreme Court’s
Bilski v Kappos
, 130 S.Ct. 3218 (June 28, 2010). In the event of
further prosecution, we leave it to the
Examiner to evaluate claims 14-26 for
compliance with 35 U.S.C. § 101. Fo
r example, these claims could be
broadly construed to c
over forms of non-transitory tangible media and
transitory propagating signals
in view of the ordinary and customary
meaning of computer readable medi
a, particularly where Appellants’
Specification defines the term “com
puter-readable medium” to include
transmission media. Spec. ¶ . As
such, we leave it to the Examiner to
evaluate and reject claims 14-26
under 35 U.S.C. § 101
as covering non-
statutory subject matter.
See In re Nuijten
, 500 F.3d 1346, 1355 (Fed. Cir.
2007); and U.S. Patent and Trademark Office,
Instructions for Evaluating Subject
Under 35U.S.C. § 101
at 2 (Aug. 2009),
instructions.pdf (emphases omitted);
Subject Matter Eligibility of Computer Readable Media
, 1351 Off.
Gaz. Pat. Office 212 (Feb.
23, 2010) (citation omitted).