Ex Parte Winter

Board of Patent Appeals and Interferences

Jul 7, 2010

10805888 (B.P.A.I. Jul. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/805,888 03/22/2004 Robert William Winter 51432/RRT/A784 2212
79456 7590 07/08/2010
Robert W. Winter
1091 Lakeview Terrace
Azusa, CA 91702
EXAMINER
MYINT, DENNIS Y
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
07/08/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT WILLIAM WINTER
____________

Appeal 2009-0008522
Application 10/805,888
Technology Center 2100
____________

Before DALE M. SHAW, Division 2 Support 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 August 10, 2009. A Docketing Notice was
mailed and Appeal Number 2009-008522 was assigned on April 22, 2009.
A second Docketing Notice was mailed and Appeal Number 2009-013890
Appeal 2009-008522
Application 10/805,888

2
was assigned on August 13, 2009. The Docketing Notice mailed August 13,
2009, and Appeal Number 2009-013890 are hereby vacated.

Claims 28 and 38 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 28 and
38 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 28 and 38 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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Appeal 2009-008522
Application 10/805,888

3
Robert W. Winter
1091 Lakeview Terrace
Azusa, CA 91702