[LMB] Ground Transformation, sort of

Nicholas D. Rosen ndrosen at erols.com
Mon Apr 16 00:35:08 BST 2012

You may remember from a couple of years ago how someone 
was appealing my rejection of a patent application.  I thought 
that it was all obvious in view of the prior art.  Another issue 
was whether the claims were statutory.  A test (not necessarily
determinative, but a guideline) is that method claims are
statutory and potentially patentable if they either (1) are tied
to a particular machine or apparatus or else (2) recite
physically transforming an article to a different state.  I
caught myself thinking of a step in the claims, "Does that
qualify as a ground transformation?  Dag would know."

Well, the Board of Appeals has decided the case, and affirmed 
my finding that the claims are obvious.  As to the rejections for
being non-statutory, they affirmed my rejection of one set of
claims, but not of the others.  Apparently, doing what the
applicant recited doing is enough to qualify as physical
transformation, and make claims patentable (provided that
they're novel and non-obvious).  I wonder whether Dag would
confirm that it's a ground transformation?

Sorry to be so vague, but I'm not a spokesman for the United
States Patent and Trademark Office, and I'm not allowed to give 
people advice on whether their inventions are patentable, unless
their applications are assigned to me to examine.  Besides, if
you should apply for a patent, with a key element of your claims
reciting something like what I dealt with here, the Board of
Appeals just might find a subtle distinction making your claims

Nicholas D. Rosen
ndrosen at erols.com

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