10528731 (B.P.A.I. Feb. 26, 2009)

Ex Parte Appel et al

Board of Patent Appeals and InterferencesFeb 26, 2009

10528731 (B.P.A.I. Feb. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MIRKO APPEL, WOLFANG FICK, & UWE GERK ____________ Appeal 2009-0845 Application 10/528,731 Technology Center 2600 ____________ Mailed: February 26, 2009 ____________ Before DALE M. SHAW, Chief Appeals Administrator ORDER REMANDING APPEAL TO EXAMINER This application was electronically received at the Board of Patent Appeals and Interferences on August 28, 2008. A Docketing Notice was mailed and Appeal No 2009-0845 was assigned on October 27, 2008. A review of the application has revealed that the application was not ready for an appeal. Accordingly, the application is herewith being remanded to the Examiner. The matter requiring attention is identified below. Appeal 2009-0845 Application 10/528,731 Claims 12-22 of the instant application are set forth as method claims that may not fall with one of the four statutory categories of invention recited in 35 U.S.C. § 101. On May 15, 2008, the Deputy Commissioner for Patent Examining Policy, John J. Love, issued a memorandum entitled “Clarification of “Processes” under 35 U.S.C. § 101.” This memorandum is further used in conjunction with the Interim Guidelines and the Manual of Patent Examining Procedure § 2106.IV.B, when determining whether a claimed invention falls within a statutory category of invention. See In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)(en banc). Thus, there is a question as to whether claims 12-22 meet the requirements of being a patent eligible process under 35 U.S.C. § 101. Accordingly, it is ORDERED that the application is remanded to the Examiner to determine if claims 12-22 meet the requirements of being a patent eligible process under 35 U.S.C. § 101. If there are any questions pertaining to this order, please contact the Board of Patent Appeals and Interferences at 571-272-9797. DMS Siemens Corporation Intellectual Property Department 170 Wood Avenue South Iselin, NJ 08830 2 Appeal 2009-0845 Application 10/528,731 3