Patent Law

First "beyond reasonable" case

By DC Patent Associate

The BPAI decided Appeal No. 2007-2336 on January 4, 2008 for application No. 10/365,855 to Shaw.

The decision focused on three pivotal issues

1. Whether Applicant has shown that Scholl's disclosure does not teach "diagnostic failure of a hardware component of an information handling system" of claim 1.
2. Whether Applicant has shown that Scholl's disclosure does not teach "automatically initiating shipment of a replacement hardware component for the failed hardware component" of claim 10.
3. Whether Applicant has shown that Scholl's disclosure does not teach "verifying the authenticity of each hardware diagnostic code before authorizing shipment of the associated hardware component to the information system" of claim 17.

The Board upheld the Examiner on the first and third issues, but reversed the Examiner on the second issue, stating that the construing Scholl as disclosing automatically initiating shipping would "require us to resort to speculation and strain the reference's teachings beyond reasonable limits."

Full post as published by Benefit of Hindsight on January 16, 2008 (boomark / email).