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February 17, 2013

Ignoring the Preamble

Eric Jasinski tried to get a patent for testing computer memory via "verifying the accuracy of logical-to-physical mapping software designed for testing memory devices." In finding anticipation, the USPTO Board ignored the preamble limitation, which was also called out in the body of the claim. In a rare reversal by the CAFC (2012-1482) of patent office rejection, a panel rightly observed: "it also provides the criteria by which the previously-recited comparing limitation is analyzed. We thus conclude that the 'to verify/verifying' language is limiting." If there's a practical lesson here (aside from the capricious irrascibility of the PTO), it's to not rely on the preamble as limiting.

Posted by Patent Hawk at February 17, 2013 12:56 AM | Prosecution