Ex Parte Chefalas et al

Board of Patent Appeals and Interferences

Apr 16, 2010

09789867 (B.P.A.I. Apr. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS E. CHEFALAS, STEVEN J. MASTRIANNI,
and AJAY MOHINDRA
____________

Appeal 2009-012658
Application 09/789,867
Technology Center 2400
____________

Mailed: April 16, 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 July 7, 2009. A Docketing Notice was mailed
and Appeal Number 2009-012658 was assigned on July 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 2009-012658
Application 09/789,867

2
Claims 48-61 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 48-61,
and the claims which depend upon these claims, meet the requirements of
being definite under 35 U.S.C. § 112, second paragraph.

Claims 63 and 64 of the instant application are set forth as method
claims that may not fall with one of the four statutory categories of invention
recited in 35 U.S.C. § 101. On May 15, 2008, the Deputy Commissioner for
Patent Examining Policy, John J. Love, issued a memorandum entitled
“Clarification of “Processes” under 35 U.S.C. § 101.” This memorandum is
further used in conjunction with the Interim Guidelines and the Manual of
Patent Examining Procedure § 2106.IV.B, when determining whether a
claimed invention falls within a statutory category of invention. See In re
Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc). Thus, there is a question as
to whether claims 63 and 64 meet the requirements of being a patent eligible
process under 35 U.S.C. § 101.

Appeal 2009-012658
Application 09/789,867

3
Accordingly, it is
ORDERED that the application is remanded to the Examiner to
determine if claims 48-61, and the claims which depend upon these claims,
meet the requirements of 35 U.S.C. § 112, second paragraph, and to
determine if claims 63 and 64 meet the requirements of being a patent
eligible process under 35 U.S.C. § 101.
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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DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 802333
DALLAS, TX 75380