Patent Law

Bilski loses

By Lawrence B. Ebert, Esq.

Because the applicable test to determine whether a claim is drawn to a patent-
eligible process under § 101 is the machine-or-transformation test set forth by the
Supreme Court and clarified herein, and Applicants' claim here plainly fails that test, the
decision of the Board is AFFIRMED.

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In Amazin' Raisins, the CAFC said -->

ARI next argues that importing a numerical range into the claim would be
improper because the claim does not expressly contain any such limitation. Although it
is generally true that we will not limit a claim written in general, descriptive words by a
numerical range appearing only in the written description, see Renishaw PLC v.
Marposs Societa? per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998), ?when a patentee
uses a claim term throughout the entire patent specification, in a manner consistent with
only a single meaning, he has defined that term ?by implication.?? Bell Atl. Network
Servs., Inc. v. Covad Commc?ns Group, Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001).
Again, the passage at issue announces the scope of the detailed description of the
invention and precedes all other discussion of any embodiments or examples.

Full post as published by IPBiz on October 31, 2008 (boomark / email).