Ex Parte Gusler et al

Board of Patent Appeals and Interferences

Apr 12, 2010

09935396 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL P. GUSLER, RICK A. HAMILTON, II
and PETER S. WEATHERBY
____________

Appeal 2010-000556
Application 09/935,396
Technology Center 2400
____________

Mailed: April 12, 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 October 26, 2009. A Docketing Notice was
mailed and Appeal No. 2010-000556 was assigned on October 26, 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 2010-000556
Application 09/935,396

2
Claims 9-15 of the instant application contain functional language that
may be indefinite under 35 U.S.C. § 112, 2nd paragraph. See Ex Parte
Rodriquez, 2009 WL 3756279 (BPAI 2009) and Aristocrat Techs. Austl. Pty.
Ltd. v. It’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 9-15 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 9-15 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.

KIS

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