Ex Parte ToseyDownload PDFBoard of Patent Appeals and InterferencesApr 15, 201010638251 (B.P.A.I. Apr. 15, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOSEPH PETER ROBERT TOSEY ____________ Appeal 2009-007299 Application 10/638,251 Technology Center 2400 ____________ Mailed: April 15, 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 February 4, 2009. A Docketing Notice was mailed and Appeal Number 2009-007299 was assigned on April 9, 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 2009-007299 Application 10/638,251 2 Claims 32-52 of the instant application contain 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 claims 32-52, and the claims which depend upon these claims, meet 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 claims 32-52, and the claims which depend upon these claims, meet 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 Nixon Peabody LLP P.O. Box 60610 Palo Alto, CA 94306 Copy with citationCopy as parenthetical citation