09973067 (B.P.A.I. Apr. 15, 2010)

Ex Parte Swart et al

Board of Patent Appeals and InterferencesApr 15, 2010

09973067 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WILLIAM D. SWART, JOHN S. MCCOSKEY, and MICHAEL L. ASMUSSEN ____________ Appeal 2009-011542 Application 09/973,067 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 May 27, 2009. A Docketing Notice was mailed and Appeal No 2009-011542 was assigned on June 11, 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 2009-011542 Application 09/973,067 Claims 10 and 12-22 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 10 and 12-22, 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 10 and 12-22, 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. DMS/eld BANNER & WITCOFF, LTD ATTORNEYS FOR CLIENT NUMBER 007412 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 2