Saturday, December 01, 2012

New grounds of rejection under 37 C.F.R. § 41.50(b)

The Board entered new grounds of rejection under 37 C.F.R. § 41.50(b) in

The language of a claim satisfies 35 U.S.C. § 112, second paragraph,
only if “one skilled in the art would understand the bounds of the claim when read in light of the specification.” Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). “It is the applicants’ burden to precisely define the invention, not the PTO’s. See 35 U.S.C.

§ 112, ¶ 2 . . . [T]his section puts the burden of precise claim drafting squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).

On the 112 issue the Board cited to Faber

according to Faber on Mechanics of Patent Claim Drafting (hereinafter “Faber”) is:
Generally, the verbs in a method claim need not be phrased in any particular voice or tense as long as there is no ambiguity and the requirements of section 112 are met. Nevertheless, it must be remembered that the elements of a method claim are method steps, which should usually be verbal (gerundial) phrases, introduced by a gerund or verbal noun (the “-ing” form of a verb).”

Faber, Sixth Edition, Practicing Law Institute, Copyright 2012, p. 4-4 (citing to Ex parte Lewin, 154 USPQ 487 (BPAI 1966)).


A claim must be definite so as not to confuse potential infringers in knowing whether it is the end product (or article of manufacture) or method/process for making that end product (or article of manufacture) that they must avoid. See IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (reasoning that lack of clarity as to when a mixed subject matter claim would be infringed renders the claim invalid for indefiniteness).


See Ex Parte Erlich, 3 USPQ.2d 1011, 1107 (BPAI 1986) (“While . . . the claims need not recite all of the operating details, we do find that a method claim should at least recite a positive, active step(s) so that the claim will ‘set out and circumscribe a particular area with a reasonable degree of precision and particularity,’ and make it clear what subject matter [the] claims encompass, as well as making clear the subject matter from which others would be precluded.”) (citations omitted); see also Clinical Products Limited v. Brenner, 255 F. Supp. 131, 133 (D.C. D.C. 1966) (“[A] proper process or method claim should recite at least one process step.”).


See also Clinical Products at 133 (“[A] proper process or method claim should recite at least one process step.”).


The most pertinent authority that this Board could find in relation to the current propriety of the exact form of claim employed by Appellants is the following statement from the Court of Customs and Patent Appeals majority Opinion for In re Fong, 288 F.2d 932, 933 (1961):
The title of the application is striking in that it truly and succinctly states what the invention is, the use of PVP as a soil-suspending agent. * * * Their discovery was simply a new soil-suspending agent, a new use for a known compound. But because the law does not permit the claiming of such an invention in terms of use, the claims are directed to a process, a washing solution, or a composition for making the latter, conventional and recognized ways of claiming inventions predicated on the discovery of a new use.”

**Although the stated rejections were reversed, new rejections were made:

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter NEW GROUNDS OF REJECTION against: (1) claims 32, 43,and 44 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention; and (2) claim 44 under 35 U.S.C. § 101 because the claimed invention is not directed to statutory subject matter, or alternatively, under 35 U.S.C. § 112, second paragraph, for indefiniteness.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides that Appellants must, WITHIN TWO MONTHS, exercise one of the following options:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . .


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