Ex Parte Karavansky

Board of Patent Appeals and Interferences

Dec 30, 2010

10640992 (B.P.A.I. Dec. 30, 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.
10/640,992 08/14/2003 Sviatoslav Karavansky 9186
7590 01/03/2011
Sviatoslav Karavansky
300 Fountain Ave.
P. O. B. 131
Denton, MD 21629
EXAMINER
SMITS, TALIVALDIS IVARS
ART UNIT PAPER NUMBER
2626
MAIL DATE DELIVERY MODE
01/03/2011 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 SVIATOSLAV KARAVANSKY
_____________

Appeal 2009-011332
Application 10/640,992
Technology Center 2600
____________

Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2009-011332
Application 10/640,992

2
Appellant has requested a rehearing of our decision dated October 29,
2010, wherein we pro forma reversed the Examiner’s rejection of claims 25-
48 on appeal under 35 U.S.C. § 102(b), 35 U.S.C. § 103(a), and 35 U.S.C. §
101; and we sustained the Examiner’s rejections of claims 25-48 under the
second paragraph of 35 U.S.C. § 112. We also instituted separate grounds of
rejection under the same statutory basis as to claims 25-48.
As we stated in our opinion, with respect to claims 25-48, all claims
before us, the rejections under 35 U.S.C. § 102(b), 35 U.S.C. § 103(a), and
35 U.S.C. § 101 were reversed, pro forma, because they necessarily were
based upon speculative assumptions as to the meaning of the claims. See In
re Steele, 305 F.2d 859, 862-63 (CCPA 1962). As we previously
emphasized, our decision in this regard was based solely on the
indefiniteness of the claimed subject matter and did not reflect the adequacy
or inadequacy of the prior art evidence supplied in support of the rejections
of record or of the Examiner’s reasoning regarding the 35 U.S.C. § 101
rejection. In other words, we are unable to evaluate the appropriateness of
the rejections of record because of the indefiniteness of the claimed subject
matter.
Appellant requests an explicit statement of how claims may be
amended to overcome the new ground of rejection under 37 C.F.R. §
41.50(b).
As we stated on page six of our opinion, if Appellant’s choice is to
amend the claims, then, Appellant had to “[s]ubmit an appropriate
amendment of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner.”
Appeal 2009-011332
Application 10/640,992

3
Thus, it appears that Appellant’s choice is to remand the case to the
Examiner. As such, the case is outside our jurisdiction, and it is up to
Appellant to amend the claims and the Examiner to review any amendment
to determine whether the claims are definite.
Appellant’s request for rehearing has been granted to the extent that
our decision has been reconsidered, but such request is denied with respect
to making any modifications to the decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED

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Sviatoslav Karavansky
300 Fountain Ave.
P. O. B. 131
Denton, MD 21629