In re Jasinski, et al.

Docket No. 2012-1482
PROST, CLEVENGER, MOORE
February 15, 2013

Non-precedential

Brief summary: The preamble (“A method for verifying the accuracy of logical-to-physical mapping software…”) was found to be limiting and not merely a statement of intended use.

Summary: Jasinki et al. appealed BPAI decision affirming Examiner’s rejection of all claims related to the diagnosis of memory device failures for anticipation. The BPAI concluded that the preamble of certain claims (“A method for verifying the accuracy of logical-to-physical mapping software…”) and “comparing” limitations of others were statements of intended use and not limiting, and disclosed by the prior art. The FC panel disagreed with that conclusion, finding that the “verifying” language both “refer[s] to the ‘essence of the invention,’ [and] provides the criteria by which the previously-recited comparing limitation is analyzed” (citing Vizio, et al. (FC 2010) (“[T]he ‘for decoding’ language . . . is properly construed as a limitation, and not merely a statement of purpose or intended use for the invention, because ‘decoding’ is the essence or a fundamental characteristic of the claimed invention.”)) The panel also concluded that the prior art did not disclose verifying the accuracy of logical-to-physical mapping software. Accordingly, the BPAI decision was reversed and remanded.