tag:blogger.com,1999:blog-6733236595417664807.post7982221563512126233..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: PTAB decisions involving computer vs. user distinctionsKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-6733236595417664807.post-70693402977515236032016-03-02T10:30:22.164-05:002016-03-02T10:30:22.164-05:00>Board completely read "automatically"...>Board completely read "automatically" <br />>out of the claim. <br /><br />I think the Board would disagree. Remember, according to Board the claim read on nothing more than "automatically record an association after user matched expense with activity." <br /><br />My case summary didn't give all the details, but in Furlong the Board went further to find that the reference taught "autofilling expense details from receipts in the report’s activity<br />sections," which met the claim "automatically associating." Finally, the Board cited to Leapfrog to say automating manual processes is generally predictable and thus likely obvious. So the outcome wasn't predicated on the broad interpretation.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-61081704158091570812016-03-01T13:06:56.630-05:002016-03-01T13:06:56.630-05:00Michael,
Thanks for your input. Let me review Fu...Michael, <br /><br />Thanks for your input. Let me review Furlong and come back with my thoughts. Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-82958409387510781402016-02-29T08:08:15.778-05:002016-02-29T08:08:15.778-05:00Karen,
Thank you for sharing these decisions for ...Karen,<br /><br />Thank you for sharing these decisions for your readers. It seems that most of these applicants have fallen into the trap you've described before: appealing an issue based on a colorable claim construction instead of amending the claims to make that claim construction explicit. <br /><br />In fact, the only clear exception in my mind is Furlong. Sure, the applicant could have amended the claim to state that the processor determined whether the item was "expensable" and then performed the association in response. However, I'm not convinced the Board's interpretation was reasonable, as it completely read "automatically" out of the claim. <br /><br />My guess is that the Board used a strained BRI as a stand-in for their gut dislike of the claim. I think if they had wanted to use actual law, they could have expressed their dislike as a written description issue if the spec did not disclose how a processor could determine whether an item is expensable. If there were disclosure in the spec, then there might instead be a scope-of-enablement issue, since the claim encompassed any approach to automatically determining the expensability of the claim, and not the disclosed approach.<br /><br />What are your thoughts?Michaelhttps://www.blogger.com/profile/13062217895982587607noreply@blogger.com