Monday, October 07, 2013

Appellants win on indefiniteness in Ex parte Byers

Ex parte Byers

The issues of indefiniteness turn primarily on whether the Appellant clarified what the Examiner had difficulty understanding. The issues of obviousness turn primarily on whether the term “application” is to be given patentable weight in the context of the claims. App. Br. 18-22, Claims Appendix. If so, the issues then turn primarily on whether Pou encompasses applications within its scope of its digital files, and if not, whether applications would have been predictable extensions.

The appellants prevailed on the indefiniteness rejection:

Claims 1-21 rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention.

We are persuaded by the Appellants’ argument that the Examiner is indicating lack of clarity and that the Appellant has provided the requested clarity at Appeal Br. 5-7.


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