Ex Parte KaravanskyDownload PDFBoard of Patent Appeals and InterferencesDec 30, 201010640992 (B.P.A.I. Dec. 30, 2010) Copy Citation 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 babc Sviatoslav Karavansky 300 Fountain Ave. P. O. B. 131 Denton, MD 21629 Copy with citationCopy as parenthetical citation