Ex Parte Wahlbin et al

Board of Patent Appeals and Interferences

May 19, 2010

09969534 (B.P.A.I. May. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN WAHLBIN and TIM JOHNSTON
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Appeal 2009-011956
Application 09/969,534
Technology Center 3600
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Before KIMBERLY R. JORDAN, Division 1 Support Administrator.

ORDER REMANDING APPEAL TO EXAMINER
This application was electronically received by the Board of Patent
Appeals and Interferences on September 30, 2008. A Docketing Notice was
mailed on June 21, 2009. Upon review of the application, it has been
determined that a remand to the Examiner is necessary to consider the
following issues and to take necessary corrective action.

Appeal 2009-011956
Application 09/969,534

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AMENDMENT AFTER FINAL NOT CONSIDERED
An After Final Amendment was filed in this application on
June 25, 2009. There is no indication in the record that the After Final
Amendment was considered by the Examiner. The Examiner needs to
determine if the After Final Amendment will or will not be entered,
and notify Appellants of said entry or non-entry of same.

QUESTIONABLE CLAIM IN RE: 35 U.S.C. § 101
Claim 726 of the instant application is set forth as a method claim that
may not fall within 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 claim 726 meets 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:
1) to consider the Amendment After Final filed June 25, 2009;
2) to notify appellant of the entry or non-entry of the Amendment After
Final filed on June 25, 2009;
Appeal 2009-011956
Application 09/969,534

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3) to determine if claim 726 meets the requirements of being a patent
eligible process under 35 U.S.C. § 101; and
4) for further action as may be appropriate.
If there are any questions pertaining to this Order, please contact the
Board of Patent Appeals and Interferences at 571-272-9797.

KRJ/vsh

ERIC B. MEYERTONS
CONLEY, ROSE & TAYON, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398