Ex Parte Nevin et al

Board of Patent Appeals and Interferences

Apr 17, 2009

10106166 (B.P.A.I. Apr. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT NEVIN & STEPHEN PETERSON
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Appeal 2009-1436
Application 10/106,166
Technology Center 2600
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Mailed: April 17, 2009
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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 12, 2008. A Docketing Notice was
mailed and Appeal No. 2009-1436 was assigned on November 12, 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 2009-1436
Application 10/106,166

Claims 10-24 and 28-38 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 10-24 and 28-38 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 10-24 and 28-38 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

AGILENT TECHNOLOGIES, INC.
LEGAL DEPARTMENT DL429
INTELLECTUAL PROPERTY ADMINISTRATION
P.O. BOX 7599
LOVELAND, CO 80537-0599

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