Recent BPAI Decisions

• Precedential:
• Ex parte Ghuman, Appeal No. 2008-1175 (BPAI May 1, 2008)(rejected claims that are not appealed are considered withdrawn and subject to cancellation by examiner).
• Ex parte Fu, Appeal No. 2008-0601, 2008 WL 867826 (BPAI March 31, 2008) (applying KSR to find it obvious to substitute one species for its genus where the genus contains a limited number of species).
• Ex Parte Nehls, Appeal No. 2007-1823, 2008 WL 258370 (BPAI January 28, 2008) (“substantial” and “specific” utility).
• Ex parte Letts, Appeal No. 2007-1392, 2008 WL 275515 (BPAI January 31, 2008) (applicant may not conditionally withdraw a claim on appeal).
• Informative:
• Ex parte Wasynczuk (BPAI June 2, 2008) (Computer method claims were patentable subject matter because they “recite a process that employs one of the other statutory categories.” On the other hand, the “computer implemented system” claims were not patentable subject matter because they did not recite a “particular machine implementation”.)
• Ex parte Langemyr (BPAI May 28. 2008) (mathematical manipulations of data do not become eligible subject matter even when performed on a computer and outputted to a display).
• Ex parte Kim (BPAI May 29, 2008) (indefiniteness rejection affirmed; PTO will not assume a particular meaning of claim terms without some factual or rational basis).