[Pct] What can I accomplish with an Article 19 Amendment? And question about "computer programmed to" claim?

[David Boundy]

*Question 1.*  I still don't get the theoretical underpinning of Article 19
amendments.  On what I understand today, they're kind of notes in a bottle
-- you throw them in the ocean and sooner or later they wash up on some
foreign shore, and then maybe somebody reads them.   But I don't see that
an ISA has to do anything with them during Chapter I?   If you want an
ISA/IPEA to actually read the "informal remarks" and do anything with them,
you have to file a Chapter II Demand?  Is that right?

*Question 2.*   I've got a device-with-embedded-software invention, and
it's being examined in ISA/Israel.   The invention is claimed as "a
computer processor and memory, the processor programmed to..."  The IL
examiner ignores the functional description of what the programs do, and
reads the claim on a totally unrelated reference that uses a few similar
keywords to explain that it does the prior art, before my invention comes
along and improves it.  The ISA/IL examiner says

The scope of the protection sought is defined as an apparatus by the
claims, yet the tangible aspects of such
an alleged apparatus are not sufficiently clear and not adequately
exemplified by the description, contrary to
article 5 and 6. Particularly, it is not clear which is the specific unit
which should be responsible for the recited
operations and what its interdependencies with other systems which is
involved in the execution of the invention.

My reaction as a U.S. attorney is that the examiner is cheating.   But
that's probably not helpful.  Is the examiner right, is there any such
provision in Articles 5 and 6?   If so, is the solution to rewrite the
claim as "a processor, and a memory having programs stored therein, that
when executed, cause the processor to..."  and then point out that the
examiner's reference has nothing to do with the claim?
-- 


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*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

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