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
stock prices
in Langseth,
not the 10%
change condition in the user alert.
See
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
prior
to the Supreme Court’s
opinion in
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
per se
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. ¶ [0104]. 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,
Interim Examination
Instructions for Evaluating Subject
Matter Eligibility
Under 35U.S.C. § 101
,
at 2 (Aug. 2009),
available at
http://www.uspto.gov/patents/law/
comments/2009-08-5_interim_101_
instructions.pdf (emphases omitted);
see also
David J.
Kappos,
Subject Matter Eligibility of Computer Readable Media
, 1351 Off.
Gaz. Pat. Office 212 (Feb.
23, 2010) (citation omitted).