United States Federal Circuit

In a patent case involving a method and system for mandatory arbitration involving legal documents, such as wills or contracts, a decision of the Board of Patent Appeals and Interferences affirming an examiner's rejection of claims 1-59 of applicant's patent application as obvious in view of the prior art and therefore unpatentable under 35 U.S.C. section 103 is affirmed in part and vacated in part where: 1) applicant's independent claims 1 and 32 and most of their dependent claims are unpatentable subject matter under 35 U.S.C. section 101; and 2) with respect to two other independent claims and various other dependent claims a remand to the PTO was necessary for it to consider the section 101 question in the first instance.

Appellate Information

• Decided 01/13/2009
• Published 01/13/2009

Judges

• DYK, Circuit Judge., Before MICHEL, Chief Judge, DYK and PROST, Circuit Judges.

Court

• United States Federal Circuit

Counsel

• For Appellant:
  
• Thomas J. Scott, Jr., Hunton & Williams LLP, of Washington, DC, argued for appellant.   With him on the brief was Robert L. Kinder.   Of counsel was Yisum Song., Raymond T. Chen, Associate Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the United States Patent and Trademark Office.   With him on the brief was Thomas W. Krause, Associate Solicitor.