Ex Parte Sprogis

Board of Patent Appeals and Interferences

May 24, 2010

10643120 (B.P.A.I. May. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID H. SPROGIS
____________

Appeal 2009-010033
Application 10/643,120
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 May 5, 2009. A Docketing Notice was mailed
on May 18, 2009.

Appeal 2009-010033
Application 10/643,120

2
Claims 5-8 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 5-8 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 5-8 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.

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