Tuesday, October 22, 2013

Appellants win on indefiniteness, but lose on 101

Ex parte Weber

As to 112 P 2

In essence, the limitation with
respect to the graphical representation
is extremely broad
in scope. Merely
that a claim is broad does not
mean that it is indefinite.
See In re Johnson
558 F.2d 1008, 1016 n.17 (CCPA 1977).
We therefore do not sustain the Exam
iner’s rejection of claims 1-25
under 35 U.S.C. § 112,
second paragraph.


we affirm the
Examiner’s rejection of claims 1
and 26, and of their dependent claims
2-25 and 27, for which Appellants do
not assert any separate arguments,
under 35 U.S.C. § 101 as not being drawn
to patent-eligible subject matter.


While the Appeal
Brief cites examples of potential
manifestations of the tool of their
invention, Appellants’ Specification does
not describe any such manifestations.
An ordinary and customary meaning
of the term “tool” is “anything used as a means of performing an operation
or achieving an end:
he used his boss’s absence as a tool for gaining

This definition is consistent
with Appellants’ acknowledgement
of the essentially limitless manifestations
of the tool.


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