Ex Parte Choe et al

Board of Patent Appeals and Interferences

Apr 15, 2010

10778392 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BYUNG-GU CHOE, JAE-HOON LEE,
BYUNG-CHANG KANG, and EUN-YOUNG PARK
____________

Appeal 2009-010957
Application 10/778,392
Technology Center 2400
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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 May 5, 2009. A Docketing Notice was mailed
and Appeal Number 2009-010957 was assigned on June 1, 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 2009-010957
Application 10/778,392

2
Claims 1 and 17 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 1 and 17,
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 1 and 17, 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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