10127728 (B.P.A.I. Apr. 15, 2010)

Ex Parte McCabe

Board of Patent Appeals and InterferencesApr 15, 2010

10127728 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ALAN JASON MCCABE ____________ Appeal 2009-013024 Application 10/127,728 Technology Center 2400 ____________ 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 July 7, 2009. A Docketing Notice was mailed and Appeal No. 2009-013024 was assigned on July 21, 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 2009-013024 Application 10/127,728 2 Claim 23, which is dependent on claim 19 of the instant application contains 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 claim 23 and the claims which depend upon this claim, 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 claim 23, and the claims which depend upon this claim, 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. tkl VERIZON PATENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON VA 22201-2909