Ex Parte Nevin et alDownload PDFBoard of Patent Appeals and InterferencesApr 17, 200910106166 (B.P.A.I. Apr. 17, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SCOTT NEVIN & STEPHEN PETERSON ____________ Appeal 2009-1436 Application 10/106,166 Technology Center 2600 ____________ Mailed: April 17, 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 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 2 Copy with citationCopy as parenthetical citation