Thursday, March 15, 2012

Ex Parte Adelman - Board Reverses Patent Eligibility Rejections Because Claims Indefinite

In the post on Myspace v. Graphon Corp. I noted the Federal Circuit invalidated claims as not novel (35 USC 102) and obvious (35 USC 103) and sidestepped what some consider a threshold concern: Are the claims directed to subject matter that is eligible for patent protection (35 USC 101)? The Federal Circuit seemed to justify the avoidance of addressing the section 101 defense by noting the law is currently a "murky morass"

The Board of Patent Appeals also recently decided patent eligibility is not a threshold concern. In Ex Parte Adelman the Board reversed the examiner's rejections under 35 USC 101, because the examiner failed to address the critical lack of a concrete definition of the invention. Go Daddy Group appealed claims relating to a system for designating membership in an online business community. Claim 1 recites, among other things, "means for designating a plurality of members" and "means for providing a ... membership designator." The Board stated it wastes resources to consider whether claims are eligible for patent protection or overcome the prior art, when the claims cannot be reasonably understood without resort to speculation. The Board stated the claims were indefinite under 35 USC 112, because the specification failed to disclose algorithm(s) supporting the recited functions in claim 1.

Thus, the "new" threshold concern may be that applicants particularly point out and distinctly claim the invention as required by section 112. See Aristocrat Techs. Australia Party Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 2008); Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008).

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