Posts Tagged: "In re Bernhart"

When addressing the issue of generality vs. particularity, we come across a situation where the inventors described the most crucial aspect of the invention, the classification unit, in general terms in the claim. Consequently, in the PTAB’s assessment, the representative claim did not rise above the threshold test of patentability under section 101. But much of what the PTAB seems concerned about relates to disclosure and there is nothing in the PTAB panel decision in Itagaki to suggest that the PTAB reviewed the specification to determine whether the somewhat generally described terms were given particularized meaning by the applicant. It also raises questions about how the PTAB could have properly conducted an obviousness review if the classification unit was so abstract as to be infirm from a patent eligibility point of view.