10425304 (B.P.A.I. Apr. 12, 2010)

Ex Parte Tabbara

Board of Patent Appeals and InterferencesApr 12, 2010

10425304 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BASSAM TABBARA ____________ Appeal 2010-000600 Application 10/425,304 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 October 28, 2010. A Docketing Notice was mailed and Appeal No. 2010-000600 was assigned on October 30, 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 2010-000600 Application 10/425,304 2 Claim 9 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 9 and the claims which depend upon this 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 claim 9 and the claims which depend upon thisclaims, 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 LEE & HAYES, PLLC 601 W. RIVERSIDE AVENUE SUITE 1400 SPOKANE, WA 99201