Ex Parte Yamanaka et al

Board of Patent Appeals and Interferences

Apr 15, 2010

10774629 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NAOAKI YAMANAKA and EIJI OKI
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Appeal 2009-010948
Application 10/774,629
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 April 21, 2009. A Docketing Notice was
mailed and Appeal Number 2009-010948 was assigned on June 1, 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 2009-010948
Application 10/774,629

2
Claim 1 of the instant application contains 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 claim 1, and the
claims which depend upon this claim, meets 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 claim 1, and the claims which depend upon this claim, meets
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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