Wednesday, November 26, 2008

Dependent claims different art rejections.

For multiple claims

The Action asserts a rejection of claims 21-23 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Hegedus, and further in view of Hamynen. Applicants respectfully assert that Claims 21-23 and 26 recite novel and nonobvious features allowable over the proposed Hegedus - Hamynen combination. Further since claims 21-23 and 26 are dependent claims of allowable independent claim 1, they should also, therefore, be allowable for at least the reasons stated for claim 1. Claims 21-23 and 26 also present independently patentable combinations. Claims 21-23 and 26 should be allowable. Such action is respectfully requested.

For a single claim
The Office asserts a rejection of claim 19 as obvious over Herz, Yoshinobu, and Alexander, in view of Lazarus, and further in view of Daniels, U.S. Patent Publication No. 2002/0032907 (“Daniels”). Applicants respectfully assert that claim 19 recites novel and nonobvious features allowable over the proposed Herz-Yoshinobu-Alexander-Lazarus-Daniels combination. Further, since it depends from allowable claim 14, it should be allowed for at least the reasons stated for claim 14. Claim 19 should be allowable. Such action is respectfully requested.

Pointing out added language to differentiate asserted art

Language when you wish to point out added language

Claim 1 includes further distinguishing language. Finally, even if Taubin serendipitously organized by region, the claim includes further features, such as “sub-dividing the input mesh into plural sub-regions,” that are not found in Taubin. If the Examiner is relying on Taubin’s clusters as regions, Applicant points out that there is no plurality of refinement operations per cluster in Taubin. Instead, a cluster is simplified to a single vertex (See, FIG. 6 of Taubin).
Applicants have added the language “plurality of” to clarify that grouping involves more than one refinement operation. Similar language has been added to claims 31 and 40. Applicants find significant other differences between Taubin’s clusters and the recited arrangement, and amend the claims to clarify that the recited arrangement is fundamentally different from Taubin’s clusters.
The claimed arrangement is thus not inherent in Taubin, and the claims overcome the rejection.

Monday, November 17, 2008

Bilski-Bouregard claims

Ex Parte Bo Li (precedental) explicitly allows Bouregard claims under Bilski

Add to end of patent: “The following claims do not cover a process performed entirely by acts of a human being without use of any machine or physical transformation.”

from Ex Parte Bo Li
"It has been the practice for a number of years that a "Beauregard Claim" of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). In view of the totality of these precedents, we decline to support the rejection under 35 U.S.C. § 101."

Allowed claim

42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:

providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;
parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;
extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;
receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and
organizing, by the data display organization module in respone to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.

101 case law for OA

Claim found to be not patent eligible (Ex parte Halligan (BPAI 2008) (recitation of a programmed computer is insufficient to tie process claim to a specific machine).

Opinion is here

8. Use Abele: Per Bilski approval of result in In re Abele, 684 F.2d 902 (CCPA 1982), require that transformed data represent physical, tangible objects and require visual display of that transformed data.
9. Use Lowry: In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) (allowing “a memory for storing data for access by an application program being executed on a data processing system, comprising: a data structure stored in said memory, ….”).
10. Use Alappat: In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (a general purpose computer “in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”)
11. Use WMS Gaming: WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) (in a means-plus-function claim “in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”)
12. Maybe Even Comiskey: In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007) (dependent claims survived Sec. 101 scrutiny by reciting “wherein access to the mandatory arbitration is established through the Internet, intranet, World Wide Web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communications, or other communication means.”)
13. Target Most Particular Points of Infringing Technology’s Life Cycle: Consider how infringing technology will move from conception to stored information to physical testing to commercial processing to products of that processing, etc., and target the most “particular” domestic points along the path. E.g., consider these types of claims—and add supporting disclosure to the specification:
a. Computer-Readable Media Storing Instructions for Performing Particular, Limiting Hardware/Transformative Process: If process could not be performed in one’s head (hence “hardware/transformative process”) and requires particular and limiting hardware or transformation, it may survive § 101 scrutiny.
b. Processing Device/System in State of Execution: Claim a processor, computer, or combination of multiple processors or computers in state of execution of recited information. Even if counterpart method-of-execution claim could be rejected as mental process, Lowry + Alappat + WMS Gaming may protect this claim from being sacked by Bilski, at least.
c. Thread or Process of Execution: Claim to thread of execution including a data structure in memory or other processing device/system state of execution with currently useful dynamic information.
d. “Product” by Process: Similarly, claim the processor, computer, or combination of multiple processors or computers (or perhaps, memory or other media) in state created by executing recited information. But do not draft IPXL-invalid hybrid machine-method claim.
e. Signals in a Particular Physical Medium or Form: Claim signals having specified physical form or medium. (Signal claims in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) did not do this.)

Thursday, November 13, 2008

Remarks block

Remarks block.

Reconsideration of the application is respectfully requested in view of the foregoing amendments and following remarks. Claims 1-12 and 14-25 are pending in the application. No claims have been allowed. Claims 13 and 31 have been canceled without disclaimer and without prejudice to pursuing in a continuing application. Claims 26 and 27 are new.

Wednesday, November 12, 2008

103 Header

Claim Rejections under 35 USC § 103
To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. [MPEP § 2142.]

Monday, November 10, 2008

Limitation Missed by Examiner

Neither Bischof nor Schumacher, either separately or in combination, teach or suggest, e.g., the claim 11 language: a module for verifying the set of tokens as internally consistent, the verifying comprising considering marking information added to the tokens. Applicant’s representative has carefully read the Office action and cannot locate a rejection of the above portion of the claim. Applicant respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicant. For at least this reason, claim 18 is in condition for allowance.

Initially, it is noted that the Office has not identified where in either Smith or Jones an alleged anticipatory teaching is to be found. Thus, the Office has failed meet its evidentiary burden and provide a prima facie case against claim 1. For at least this reason, claim 1 is in condition for allowance.


Additionally, Applicant has carefully reviewed the remainder of patent to Smith, and the patent to Jones and finds no teaching of “a widget” in either reference either individually or in combination. Thus, for at least this reason, neither Smith nor Jones teach or suggest independent claim 1.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §103 are respectfully requested.
In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.