In Re: Mouttet, 17-2077

Blaise Laurent Mouttet filed U.S. Patent Application No. 12/007,174 (the ’174 application) claiming a crossbar-array processor that performs arithmetic/summation and outputs a numerical value.
Claim 25 (an apparatus claim) and claims 35–40 (method claims relying on claim 1’s processor) were rejected by the examiner: claim 25 for obviousness and claims 35–40 for indefiniteness under § 112.
The Patent Trial and Appeal Board (PTAB) affirmed the obviousness rejection of claim 25 but also affirmed the indefiniteness rejection of claims 35–40, concluding those claims improperly mixed statutory classes.
The PTO Director conceded on appeal that the Board erred about claims 35–40; the Director agreed those are method claims that require practicing the claimed method in a processor having the recited structure.
Claim 25 of the ’174 application is identical to claim 1 of an earlier ’232 application. This court previously affirmed the obviousness rejection of that earlier claim over Falk, Das, and Terepin in In re Mouttet.
The court held that because the claimed invention in claim 25 is identical to the previously adjudicated claim and no new evidence or materially different claim construction was presented, the earlier obviousness determination has preclusive effect.

Issue	Mouttet's Argument	Director/PTO's Argument	Held
Are claims 35–40 indefinite for mixing statutory classes?	Claims 35–40 are proper method claims that operate using the processor; not indefinite.	Claims improperly merge apparatus and method, rendering them indefinite.	Reversed — claims 35–40 are method claims tied to a processor and not indefinite.
Is claim 25 obvious given prior art (Falk, Das, Terepin)?	The ’174 filing should get a fresh obviousness assessment; argues distinctions/arguments on teachability and combinability.	The same claim was adjudicated as obvious in the earlier ’232 case; no new evidence or material specification differences; issue preclusion applies.	Affirmed — claim 25 rejected for obviousness based on preclusive effect of the earlier decision.

In re Mouttet, 686 F.3d 1322 (Fed. Cir.) (court affirmed earlier obviousness rejection of the ’232 application claim)
In re Freeman, 30 F.3d 1459 (Fed. Cir.) (issue preclusion ordinarily bars relitigation of questions decided by an appellate court)
In re Katz, 467 F.2d 939 (C.C.P.A.) (preclusion principles applied in patent prosecution contexts)
In re Lundberg, 280 F.2d 865 (C.C.P.A.) (preclusive effect of prior patentability determinations)