Wednesday, July 17, 2013

AT&T/Bedminster loses in Ex parte Wright: the hazards of claiming too broadly

From within Ex parte Wright

We must conclude that the broadest reasonable interpretation of the term “coordinating” encompasses more than just monitoring or controlling content. Transferring the content or otherwise maintaining the communication link between peers are also activities that would have been reasonably considered “coordinating” in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Danieli is completely silent on, neither encouraging nor discouraging, such activity.

Also, observe footnote 1:

We note regarding claim 6, recent precedent reminds us that a means-plus- function claim element for which the only disclosed structure is a general purpose computer may not comply with the requirements of the second and sixth paragraphs of 35 U.S.C. § 112 if the specification fails to disclose an algorithm or other structure sufficient for performing the recited function. See e.g., Noah Systems, Inc. v. Intuit Inc., 675 F. 3d 1302, 1312-1313 (Fed. Cir. 2012) (discussing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F. 3d 1359, 1367 (Fed. Cir. 2008)); MPEP § 2181(II)(B). We note regarding claim 11, that claims which may be construed as encompassing a transitory signal (see, e.g., Spec. p. 4, para. [18]) have, in certain circumstances, been held to encompass non-statutory subject matter. See, e.g., In re Nuijten, 500 F. 3d 1346 (Fed. Cir. 2007); MPEP §§2106(I) & (II)(A). Finally, we note that we leave any such determinations based on the statements above for the Examiner’s consideration in any further prosecution. While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02.


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