Mixed result in Ex parte RALEY
Separately, within the case, in footnotes 2 and 3:
2 Appellants argue that the Examiner erred in objecting to the Specification for failing to provide proper antecedent basis for the claimed subject matter recited in claims 15, 17, 18, 19, 23, and 32, specifically various occurrences of “means for” language (App. Br. 6-7). Because this is a petitionable, not appealable, matter under 37 C.F.R. § 1.181, we will not address this objection. See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”).
3 Appellants maintain that this rejection would have been overcome but for the Examiner’s refusal to enter the amendments submitted with Appellants’ Amendment After Final filed August 16, 2010 (App. Br. 8 and 12-13). However, the Examiner's decision not to enter the Appellants’ proffered Amendment after Final is not appealable to the Board. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002). Instead, the Examiner’s refusal to enter the amendment is reviewable, if at all, only by means of a timely petition.
Of 35 USC 112 P2:
The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). In the context of a means-plus-function limitation, if one skilled in the art would be able to identify the structure, material, or acts for performing the claimed function, then the requirements of 35 U.S.C. § 112, second paragraph, are satisfied. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999); see also In re Dossel, 115 F.3d 942, 946-47 (Fed. Cir. 1997). Otherwise, if there is insufficient disclosure of the structure, material, or acts for performing the claimed function, a rejection under 35 U.S.C. § 112, second paragraph, is appropriate. See Biomedino v. Waters Techs. Corp., 490 F.3d 946, 952 (Fed. Cir. 2007).