Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner's obviousness rejection under 35 U.S.C. § 103, but issued a new grounds of rejection under 35 U.S.C. § 101. This Quick Post highlights the need to continue "prosecuting" your patent application, even after you've gone to Appeal.
Recall that 37 C.F.R. § 41.50(b) states:
"Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement constitutes a new ground of rejection of the claim. A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review."
Thus, even if you've never received a particular rejection by a Patent Examiner during prosecution, the Board of Patent Appeals can, sua sponte, issue that rejection on appeal.
In today's Ex parte Nickell (Appeal No. 2010-008158) decision, the claims involved a computer password protection related invention. At issue was an Examiner's 35 U.S.C. §103 obviousness rejection, which the Board actually reversed. But, the Board went beyond that rejection, without any urging request by any party, and evaluated the claims at issue for compliance with 35 U.S.C. §101.
On that issue, the Board decided:
"Claim 1 does not recite any computer or other machine. For example, the claim does not recite that the steps of randomly selecting and providing the requirements must be performed by a computer, that the steps of receiving characters for the password must be performed by a computer, or that the step of determining whether the characters satisfy any requirements must be performed by a computer. As such, claim 1 is broad enough to read on two human beings communicating verbally, with the first person performing all of the recited steps. ... We, therefore, conclude that claim 1 is not tied to a particular machine or apparatus, and claim 1 does not transform a particular article to a different state or thing. That is, claim 1 fails the so-called 'machine-or transformation test.' The claim, instead, wholly embraces the judicially recognized exception of abstract ideas. Specifically, the claim is directed to a set of mental processes and communications that can be performed solely by a human being."
And thus, the BPAI issued a 35 U.S.C. §101 that was first seen by the Applicant on Appeal. See my earlier post about 35 U.S.C. §101 rejections.
What does this mean for practitioners? This decision means that before going to appeal, you should make sure your claims constitute patentable subject matter under 35 U.S.C. §101. It doesn't matter that a Patent Examiner has not issued this type of rejection or that no one ever brought it up during prosecution. The Board can bring up these issues on Appeal, which would then require you to re-open prosecution to clear the rejection - a major prosecution setback. Thus, it's best to take care of these 35 U.S.C. §101 issues earlier than later.