Ex Parte Tosey

Board of Patent Appeals and Interferences

Apr 15, 2010

10638251 (B.P.A.I. Apr. 15, 2010)

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
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Mailed: April 15, 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 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.

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