The USPTO just released a new precedential decision of the Board of Patent Appeals and Interferences, which is only the 19th precedential decision of the Board.
The decision is Ex parte Catlin, Appeal 2007-3072 (BPAI 2/3/2009)(Expanded panel including Chief Administrative Patent Judge (CAPJ) Fleming, Vice CAPJ Moore, and APJs Horner, Walker, and Mohanty).
In this case, the SPE for art unit 3688 requested rehearing of a 3 member panel decision reversing obviousness rejections of the appealed claims. As a result of the SPE’s request for rehearing, the expanded panel: vacated the previous panel’s decision; dismissed the request for rehearing as moot; vacated the examiner’s obviousness rejections of the claims; and imposed new rejections of the claims as indefinite under 35 USC 112, second paragraph.
In the decision, the expanded panel focused on „whether the Appellants’ Specification discloses adequate structure, material, or acts that perform the function recited in the first element of claim[] 1…“ That first element of claim 1 reads „providing, at a merchant’s web site, means for a consumer to participate in an earning activity to earn value from a merchant;“.
The expanded panel cited the requirement for means plus function recitations to have a corresponding embodiment disclosed in the specification, and found that the specification lacked disclosure of an algorithm for performing the claimed means.
The expanded panel’s reasoning why it vacated the 103 rejection states that their „decision to vacate this [obviousness] rejection is based on the indefiniteness of the claimed subject matter and does not reflect on the merits of the underlying rejection“ because „We find it imprudent to speculate as to the scope of the ‘means’ elements….“
A copy of the decision is available from the USPTO’s web site at:
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073072.pdf
author: Richard Neifeld [moc.dlefiennull@dlefienr]
