Ex Parte DiMarco

Board of Patent Appeals and Interferences

May 25, 2010

10379188 (B.P.A.I. May. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTHONY M. DIMARCO
____________

Appeal 2010-004180
Application 10/379,188
Technology Center 3600
____________

Before DALE M. SHAW, Division 2 Support Administrator.

ORDER REMANDING APPEAL TO EXAMINER
This is a Director ordered remand under 37 CFR § 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 February 17, 2010. A Docketing Notice was
mailed on March 4, 2010.

Appeal 2010-004180
Application 10/379,188

2
Claims 49-68 of the instant application contain 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.
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 claims 49-68
and the claims which depend upon these claims, 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 claims 49-68 and the claims which depend upon
these claims, 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.

kmm
JOSEPH L. SPIEGEL
HESLIN ROTHENBERG FARLEY & MESITI P.C.
5 COLUMBIA CIRCLE
ALBANY, NY 12203