Ex Parte Kakinuma et al

Board of Patent Appeals and Interferences

Apr 15, 2010

10368979 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KAORU KAKINUMA and KAZUKI MATSUMOTO
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Appeal 2009-007905
Application 10/368,979
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 December 30, 2008. A Docketing Notice was
mailed and Appeal Number 2009-007905 was assigned on April 15, 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 2009-007905
Application 10/368,979

2
Claims 5, 8, and 11 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 5, 8, and
11, 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 5, 8, and 11, 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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