Friday, August 09, 2013

Appellant wins reversal in Ex parte Harris but faces new rejections

In re Jung is cited against the examiner in Ex parte Harris:

The Examiner rejected claim 23 under 35 U.S.C. § 112, 1st paragraph,
stating that the inserted limitation “said total value represented by a predetermined number of primary credits” “lacks antecedent basis in the original specification.” Ans. 4. This is all we know of the Examiner’s position. The reasons for the Examiner’s rejection are not clear. As Appellants point out, compliance with the written description requirement is not merely a matter of using the same language in the claims as that used the remainder of the Specification. Reply Br. 2. As we are unable to ascertain the thrust of the Examiner’s rejection, we are constrained to reverse it. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citations omitted).


However, the ambiguity renders the metes and bounds of the claim unclear and therefore must be resolved. As such, we are “justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).

PTAB did reverse the examiner on the rejections under 102(b) and 103.

But, even though the examiner was completely reversed, the new rejections were present:

We enter new grounds of rejection for claim 23 under 35 U.S.C. §
112, second paragraph, as being indefinite. The Examiner’s rejections are reversed.


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