Ex Parte Luciani et al

Board of Patent Appeals and Interferences

Apr 12, 2010

10728465 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUIS E. LUCIANI, JR., DON DYKES, and
CURTIS R. JONES
____________

Appeal 2010-001052
Application 10/728,465
Technology Center 2400
____________

Mailed: April 12, 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 November 2, 2009. A Docketing Notice was
mailed and Appeal Number 2010-001052 was assigned on November 18,
2009. A review of the application has revealed that the application was not
ready for an appeal. Accordingly, the application is herewith being
Appeal 2010-001052
Application 10/728,465

2
remanded to the Examiner. The matter requiring attention is identified
below.
Claims 14-20 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 14-20,
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 14-20, 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.

babc

Appeal 2010-001052
Application 10/728,465

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