Patently-O BPAI: First Decide Indefiniteness, then
Subject Matter Eligibility, Appeal 2010-011767(PDF 50 KB):
In reading the
specification, the Board concluded that the claimed functions lacked any
corresponding structures in the specificication. “The Specification therefore
fails to disclose an algorithm corresponding to the recited function at issue in
independent claim 1, such that one of ordinary skill in the art could determine
the scope of independent claim 1.”
In several cases, courts have designated
subject matter eligibility as a “threshold” concern. Here, however, the Board
held that they were compelled to first consider indefiniteness — citing In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained
if the hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language.) and In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can
be ascribed to certain terms in the claim, the subject matter does not become
obvious-the claim becomes indefinite.”).
I think it means the
patent is of very poor quality and likely shouldn't have been issued.[ Reply to This | Parent | # ]
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