Appeal 2007-0728
Application 09/954,796
1 skilled in the art attempting to determine the scope of the claimed invention.
2 Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed.
3 Cir. 2005).
4 The remaining claims under this rejection depend from claims 1, 10, and 17,
5 and therefore incorporate the same indefiniteness.
6 OBSERVATIONS AND REMARKS
7 If prosecution continues, the examiner should consider whether the subject
8 matter of claims 29 and 30 do no more than have a user respond to a query, and do
9 not provide software, or anything else that appears to be concrete and tangible, and
10 thus whether these claims are directed toward statutory subject matter.
11
12 DECISION
13 To summarize, our decision is as follows:
14 • The rejection of claims 1, 4, 5, 7-12, 14-18, 20, 25-36, 38, 40, and 42 under
15 35 U.S.C. § 102(e) as anticipated by Parthesarathy is sustained.
16 • The rejection of claim 19 under 35 U.S.C. § 102(e) as anticipated by
17 Parthesarathy is not sustained.
18 • The rejection of claims 2, 37, 39, and 41 under 35 U.S.C. § 103(a) as
19 obvious over Parthesarathy and Bradford is sustained.
20 • The rejection of claims 6, 13, and 19 under 35 U.S.C. § 103(a) as obvious
21 over Parthesarathy and Kroening is sustained.
22 • The rejection of claims 3, 21-24, and 44 under 35 U.S.C. § 103(a) as obvious
23 over Parthesarathy and Himmel is sustained.
17
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