Ex Parte Newton et al

Board of Patent Appeals and Interferences

Apr 12, 2010

10598988 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PHILIPS STEVEN NEWTON and DECLAN PATRICK KELLY
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Appeal 2009-014203
Application 10/598,988
Technology Center 2400
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Mailed: April 12, 2010
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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 August 17, 2009. A Docketing Notice was
mailed and Appeal No 2009-014203 was assigned on November 12, 2009.
A review of the application has revealed that the application was not ready
for an appeal. Accordingly, the application is herewith being remanded to
the Examiner. The matter requiring attention is identified below.
Appeal 2009-014203
Application 10/598,988

2
Claims 7 and 8 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 7 and 8
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 7 and 8 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.

DMS/kme

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