10627591 (B.P.A.I. Jun. 3, 2010)

Ex Parte Clark et al

Board of Patent Appeals and InterferencesJun 3, 2010

10627591 (B.P.A.I. Jun. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANDREW CLARK, and GEORGE H. FOULDS ____________ Appeal 2010-002451 Application 10/627,591 Technology Center 3700 ____________ Before DALE M. SHAW, Division 2 Support Administrator ORDER REMANDING APPEAL TO EXAMINER This is a Director ordered remand under 37 C.F.R. § 41.35(c) for the matter identified below. Accordingly, the application is herewith being remanded to the Examiner. This application was electronically received at the Board of Patent Appeals and Interferences on December 17, 2009. A Docketing Notice was mailed and Appeal 2010-002451 was assigned on January 21, 2010. Claim 33 of the instant application contains functional language that may be indefinite under 35 U.S.C. § 112, 2nd paragraph. See Ex Parte Rodriquez, 2009 WL 3756279 (BPAI 2009) and Aristocrat Techs. Austl. Pty. Appeal 2010-002451 Application 10/627,591 2 Ltd. v. It’l. Game Tech., 521 F.3d 1328 (Fed Cir. 2008). On September 2, 2008, the Deputy Commissioner for Patent Examination Policy, John J. Love, issued a memorandum entitled “Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph”, located at: http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/section_112_6 th_09_02_2008.pdf. Thus, there is a question as to whether claim 33 and the claims which depend upon this claim, meet the requirements of being definite under 35 U.S.C. § 112, 2nd paragraph. Accordingly, it is ORDERED that the application is remanded to the Examiner to determine if claim 33, meet the requirements of 35 U.S.C. § 112, 2nd paragraph. If there are any questions pertaining to this Order, please contact the Board of Patent Appeals and Interferences at 571-272-9797. mev NOVARTIS CORPORATE INTELLECTUAL PROPERTY ONE HEALTH PLAZA 104/3 EAST HANOVER NJ 07936-1080