Ex Parte MacPhail et al

Board of Patent Appeals and Interferences

Apr 12, 2010

10112530 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARGARET G. MACPHAIL, DAVID B. KUMHYR,
and SEBASTIAN D. HASSINGER
____________

Appeal 2010-000362
Application 10/112,530
Technology Center 2400
____________

Mailed: April 14, 2010
____________

Before DALE M. SHAW, Division 2 Support Administrator

ORDER REMANDING APPEAL TO EXAMINER
This application was electronically received at the Board of Patent
Appeals and Interferences on October 13, 2009. A Docketing Notice was
mailed and Appeal Number 2010-000362 was assigned on October 19,
2009. A review of the application has revealed that the application was not
ready for an appeal. Accordingly, the application is herewith being
Appeal 2010-000362
Application 10/112,530

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remanded to the Examiner. The matter requiring attention is identified
below.
Claim 23 of the instant application contains functional language that
may be indefinite under 35 U.S.C. § 112, second paragraph. See Aristocrat
Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed Cir. 2008);
Ex parte Rodriquez, 92 USPQ2d 1395 (BPAI 2009). 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 23, and
the claims which depend upon this claim, meets the requirements of being
definite under 35 U.S.C. § 112, second paragraph.
Accordingly, it is
ORDERED that the application is remanded to the Examiner to
determine if claim 23, and the claims which depend upon this claim, meets
the requirements of 35 U.S.C. § 112, second paragraph.
If there are any questions pertaining to this order, please contact the
Board of Patent Appeals and Interferences at 571-272-9797.

babc

Appeal 2010-000362
Application 10/112,530

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