tag:blogger.com,1999:blog-6733236595417664807.post618761629918245437..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Another post-Bilski 101 decision at the BPAI (Ex parte Bigler)Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger2125tag:blogger.com,1999:blog-6733236595417664807.post-61356479231284893672010-08-02T15:01:45.948-04:002010-08-02T15:01:45.948-04:00>Board is going to frown on things if you
>...>Board is going to frown on things if you <br />>define them too broadly in the spec. That is, <br />>devices of all kinds" is seen as non-limiting, <br />>even with examples of devices given later.<br /><br />David, thanks for the analysis. You've convinced me that the Board was thinking too broad = non-limiting. <br /><br />I don't, however, see what legal support they have for that position.<br /><br />"Device" may be a "nonce word" that triggers 112P6 because it doesn't provide enough structure. It maybe be a *broad* term that encompasses lots of prior art. But the term nonetheless refers to something physical. The Board's statement that "A 'device' in this application is not necessarily a physical device" just isn't supported by the evidence.<br /><br />>try to avoid the worst impact of it by stating <br />>a concrete example as a fallback position. <br /><br />Good point. Thinking broad without a fallback can be fatal. <br /><br />>really scary BPAI Section 101 rejections are <br />>being raised sua sponte. <br /><br />They've been doing that for months. I think Applicants may start to see more favorable 101 treatment during examination because of the guidelines. But I'm not as hopeful about the results at the Board. <br /><br />>without the applicant having a chance to <br />>address the rejection.<br /><br />Oh, that's not even the worst case scenario. Worst case is that the BPAI raises a 101 and refuses to rule on the prior art rejections :-)Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-54983355075134300582010-08-02T13:39:27.762-04:002010-08-02T13:39:27.762-04:00This whole "a device is not a device" po...This whole "a device is not a device" position had really been bothering me, so I tried to figure out how they could possibly support this position. <br /><br />The Board refers to Page 11, line 10 of the spec, which says that the system includes "devices of all kinds." It then says that "[d]evices may include, for example, objects and equipment that are involved in the operation of a business such as appliances, electronic equipment . . . " and so on.<br /><br />What I take from this is that the Board is going to frown on things if you define them too broadly in the spec. That is, "devices of all kinds" is seen as non-limiting, even with examples of devices given later.<br /><br />I think that if this decision is to be taken seriously (which I'm not sure it needs to... I still don't think that "a device is not a device" fits into the broadest reasonable interpretation of the claim language), you could try to avoid the worst impact of it by stating a concrete example as a fallback position. That is, if this applicant had stated something like, "One example of a device is a physical computer having a processor and a memory," perhaps there would have been a stronger argument that there was patent eligible subject matter here.<br /><br />Another point: it seems like a lot of these really scary BPAI Section 101 rejections are being raised sua sponte. In other words, we're seeing the BPAI's position without having to consider an argument from the applicant/appellant and without the applicant having a chance to address the rejection.<br /><br />DavidAnonymousnoreply@blogger.com