Ex Parte Smith et al

Board of Patent Appeals and Interferences

May 25, 2010

11025716 (B.P.A.I. May. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAURENCE T. SMITH, DAVID J. ADAMS,
and JULIAN P. WRIGHT
____________

Appeal 2010-005381
Application 11/025,716
Technology Center 3600
____________

Before DALE M. SHAW, Chief Appeals Administrator.

ORDER REMANDING APPEAL TO EXAMINER
This is a Director ordered remand under 37 C.F.R. §41.35(c) for the
matter identified below. Accordingly, the application is herewith being
remanded to the Examiner.

This application was electronically received at the Board of Patent
Appeals and Interferences on March 15, 2010. A Docketing Notice was
mailed on April 6, 2010.

Appeal 2010-005381
Application 11/025,716

2
Claims 11-16 of the instant application contain functional language
that may be indefinite under 35 U.S.C. § 112, 2nd paragraph. See Ex Parte
Rodriquez, 92 USPQ2d 1395 (BPAI 2009); see also Aristocrat Techs. Austl.
Pty. Ltd. v. Int’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 11-16
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 11-16 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.

babc

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528