Ex Parte Duong

Board of Patent Appeals and Interferences

Sep 3, 2010

10359111 (B.P.A.I. Sep. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/359,111 02/05/2003 Henri Duong 9557
7590 09/03/2010
Henri Duong
316 1/2 E Glendon Way
Alhambra, CA 91801
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
09/03/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HENRI DUONG
____________

Appeal 2009-014317
Application 10/359,111
Technology Center 3600
____________

Before: ALLEN R. MACDONALD, Vice Chief Administrative Patent
Judge, MURRIEL E. CRAWFORD, and BIBHU R. MOHANTY,
Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-014317
Application 10/359,111

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 7-9. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to allowing enterprises,
manufacturers, companies, organizations, and agencies to manage health
insurance for their employees. (Spec.; Abstr.).
The references of record relied upon by the Examiner are:
Halley US 4,750,121 Jun. 7, 1988
Schotz US 4,837,693 Jun. 6, 1989

Claims 7-9 stand rejected under 35 U.S.C. § 112, second paragraph,
for indefiniteness; claim 7 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Halley; and claim 8 stands rejected under 35 U.S.C. § 102(b)
as anticipated by Schotz.
We AFFIRM.

ANALYSIS
On page 14 of the Appeal Brief, Appellant asserts that they are not
appealing the rejection of claims 7-9 under 35 U.S.C. § 112, second
paragraph, for indefiniteness. However, since all the claims are rejected
under 35 U.S.C. § 112, second paragraph, by not appealing this rejection,
Appellant has no grounds for appeal. This is because under the holdings of
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) and In re Steele, 305 F.2d
859, 863 (CCPA 1962), if neither we nor the Examiner can understand what
is claimed, then prior art cannot be applied to what neither we nor the
Examiner can understand.
Appeal 2009-0142317
Application 10/359,111

3
As Appellant is pro se, we will assume this oversight was in error.
Nevertheless, we agree with the Examiner that the rejection of claims 7-9 for
indefiniteness is proper. Indefiniteness means that one of ordinary skill in
the art, the hypothetical artisan, cannot understand what is claimed, even
when the claim is read in light of the specification. See Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1575 (Fed. Cir. 1986) (citations
omitted). The Examiner is asserting, and we agree, that one of ordinary skill
in the art would not understand the claims, because the claims have not been
presented in a format that comports with recognized conventions of patent
practice. For example, claim 7 recites “basis of ‘inventing and establishing
second line’ wherein second line of in characteristic insurance business
being established in….” However, neither we nor the Examiner understand
what the “[‘]second line’” is, how it is being “established” in a given entity,
and what the “basis of” “establishing” such a “[‘]second line’” pertains to.
Accordingly, we commend the Examiner for working with Appellant and
attempting to ascribe some meaning to the claim in order to apply prior art,
and we agree with the Examiner that claims 7-9 are indefinite. We sustain
the rejection of claims 7-9 solely on those grounds, and do not reach the
prior art rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED
Appeal 2009-0142317
Application 10/359,111

4
hh

Henri Duong
316 1/2 E Glendon Way
Alhambra, CA 91801