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help with 101/112 rejection... yea, I know.
Posted by Anonymous . updated on 2/26/2009
Software application...
(1) A method comprising the steps of:
designing...
defining..., and
customizing.
(2) The method of claim 1, further comprising the step of defining a second thing.
101 rejection...
Examiner says: Claim 1 is directed to an abstract idea rather than a practical application of the idea. No physical transformation occurs, and while the result may be concrete, no tangible result is produced which [sic] enables any usefulness of having performed the defining and customizing steps to be realized.
112 rejection...
In claim 2, "the step of defining a second thing" should be changed to "a step for defining a second thing." There is insufficient antecedent basis for this limitation in the claim.
The 101 rejection is nuts, because when taken as a whole, the claim clearly is not directed to an abstract idea. And the 112 just doesn't make sense, as that format is found everywhere in issued patents. I could delete the reference to "steps" in (1) and (2), but I shouldn't have to.
Any thoughts/suggestions?
Thanks!
Jim.
Answers (6)
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Wiscagent
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This looks like a good opportunity to amend the claims and make the examiner happy. If the examiner has a problem with ?defining? being abstract. Then how about identifying, or specifying, or measuring, ... ? Talk to the examiner and work it out.
Keep your focus on getting a worthwhile patent granted. Winning a fight with the examiner, without getting a good patent does not help you or your client.
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Jonathan
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When previously faced with similar rejections, amending the preamble to --computer-implemented method-- satisfied the Examiner making the rejections - assuming of course your method is implemented on a computer.
A phone call to the Examiner to verify that such a step would address the 101 rejection would be a good idea as well if you decide to go this route.
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Isaac
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Quote When previously faced with similar rejections, amending the preamble to --computer-implemented method-- satisfied the Examiner making the rejections - assuming of course your method is implemented on a computer.
Even if the method is not limited to being implemented on a computer it is possible that stating a concrete and tangible result in the preamble might work.
Concerning the Examiner's recommended fix, I would not change "step to" to "step for" unless I wanted to invoke 35 USC 112, 6th paragraph. My guess is that you don't want do that.
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harlan
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Quote
Concerning the Examiner's recommended fix, I would not change "step to" to "step for" unless I wanted to invoke 35 USC 112, 6th paragraph. My guess is that you don't want do that.
Sorry... I missed typed. It should be changing "the step of" to "a step of". After some thought, I am pretty sure I can argue that the antecedent basis is in the preamble of Claim 1.
Thanks, Jim.
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Isaac
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Quote
Sorry... I missed typed. ?It should be changing "the step of" to "a step of". ?After some thought, I am pretty sure I can argue that the antecedent basis is in the preamble of Claim 1.
Thanks, Jim.
Perhaps, but I would suggest caving in to the Examiner on this point. There doesn't seem to be much other than your ego at stake on this point. For what it's worth, I generally don't see much point in using "step of"
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harlan
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Thanks for all of your suggestions.
I spoke with the examiner not too long ago, and he agree to my inserting "computer-implemented" and removing references to "steps of."
Best,
Jim.
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