Ex Parte Millin et al

Board of Patent Appeals and Interferences

Apr 17, 2009

10125565 (B.P.A.I. Apr. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW MILLIN & PHILIP HARMAN
____________

Appeal 2009-0698
Application 10/125,565
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 September 9, 2008. A Docketing Notice was
mailed and Appeal No. 2009-0698 was assigned on October 22, 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 2009-0698
Application 10/125,565

Claims 1-16 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 1-16 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 1-16 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

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