09881873 (B.P.A.I. Jan. 30, 2009)

Ex Parte Bhogal et al

Board of Patent Appeals and InterferencesJan 30, 2009

09881873 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KULVIR BHOGAL, NIZAM ISHMAEL, & JAVID JAMEOSSANAIE ____________ Appeal 2009-0632 Application 09/881,873 Technology Center 2600 ____________ Mailed: January 30, 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 September 25, 2008. A Docketing Notice was mailed and Appeal No. 2009-0632 was assigned on October 21, 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 2009-0632 Application 09/881,873 Claims 1-15 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 1-15 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 1-15 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. tdl IBM CORPORATION INTELLECTUAL PROPERTY LAW 11501 BURNET ROAD AUSTIN TX 78758 2