Prosecution Pointer 40

Prosecution First Blog Pointer

Video conferencing is available for examiner interviews.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

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Ex Parte Catlin : Functional Claim Elements to a General Purpose Computer Must Be Supported By an Algorithm

Author: Michelle Pacholec Ph.D.
Editor: Adriana L. Burgy

PTAB Decision

Ex parte Catlin, Appeal 2007-3072 (February 3, 2009)

Background

The Supervising Patent Examiner filed a request for rehearing of a Board decision affirming-in-part and reversing-in-part an Examiner’s decision based on obviousness grounds. In reviewing the rehearing request, the Board vacated its prior decision, dismissed the request for rehearing, and instituted a new ground of rejection of all the claims for indefiniteness under 35 U.S.C. § 112, second paragraph.

The technology related to a method for implementing an on-line incentive system, reciting “providing, at a merchant’s website, means for a consumer to participate in an earning activity.” Noting that the specification describes generally that such earning activity can be accessing through the web site, and that incentive activities may generally include frequent flyer and “points”-based programs, the Board stated that such description “merely provides examples of the results of the operation of an unspecified algorithm . . . by which the consumer is able to participate in an earning activity.” The Board determined that the “specification fails to disclose the algorithms that transform the general purpose processor to a special purpose computer programmed to perform the” claimed functions. See Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).

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Prosecution Pointer 39

Prosecution First Blog Pointer

If an application is filed with an Abstract over 150 words, the USPTO will send applicant a notice to correct the abstract (with a period for reply of two months); the mere presence of an abstract which fails to comply with amended 37 C.F.R. § 1.72 will not prevent an application from being accorded a filing date. It will, however, delay the initiation of the examination.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

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Is This the Beginning of the End for Accelerated Examination?

Author: Amanda K. Murphy, Ph.D.
Editor: Stephanie M. Sanders

In its August 16th Notice identifying a number of updates to the accelerated examination (AE) program, the USPTO announced that it also plans to seek public input on whether it should continue to offer the AE program at all. Under the AE program, which was implemented in 2006, an application will be advanced out of turn for examination if the applicant files a petition to make special with an appropriate showing. This showing requires the applicant to meet several conditions, including: (1) conducing a pre-examination search; (2) providing an accelerated examination support document (AESD); and (3) ensuring the application is complete under 37 C.F.R. § 1.51 at the time of filing. Citing the relatively low usage of the AE program since the implementation of Track I (the Notice reports that the USPTO has received fewer than 200 AE requests annually since 2011), the USPTO indicated that it plans to publish a request for comments on whether there is any value in retaining the AE program in view of the more popular Track I program.

The Notice also announced a number of updates to the AE program to reflect the changes in the law and examination practice that accompanied the America Invents Act (AIA), the Patent Law Treaties Implementation Act implementing the provisions of the Patent Law Treaty, and the USPTO’s adoption of the Cooperative Patent Classification System (CPC). These amendments:

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FAI: Getting a Head Start in the Prosecution Foot Race

Author: Nicholas D. Petrella
Editor: Naoki Yoshida

The First Action Interview (“FAI”) Pilot Program provides applicants with a head start on patent prosecution by receiving examiner feedback and an examiner interview before the issuance of an office action. In order to be eligible for the FAI pilot program, an application must:

  1. Be a non-reissue, non-provisional utility application under 35 U.S.C. § 111(a) or national stage application under 35 U.S.C. § 371;
  2. Contain three or fewer independent claims and twenty or fewer total claims;
  3. Not contain multiple dependent claims;
  4. Claim only a single invention; and
  5. Not have a first Office Action on the merits as of the date Applicant requests participation in program.

After applying for the FAI program, a pre-interview communication that broadly outlines art and rejections initiates the prosecution process. The program includes an initial examiner interview (the FAI) to discuss the application before the issuance of a first office action. The pre-interview communication and interview provide valuable insight into an examiner’s initial positions and, in some cases, the interview can result in an agreed upon amendment that places the application in a condition for allowance before an office action is ever issued. If no agreement is reached during the initial interview, a non-final office action is issued and prosecution proceeds following the typical prosecution process. In some cases, an FAI application can cross the patent prosecution finish line before traditional applications have even started the race.

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