DUNLOP SPORTS CO. LTD.Download PDFPatent Trials and Appeals BoardJan 27, 20212020003734 (P.T.A.B. Jan. 27, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/171,897 06/02/2016 Masatoshi KATO 6400-0154PUS1 9527 2292 7590 01/27/2021 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER PIERCE, WILLIAM M ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 01/27/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MASATOSHI KATO Appeal 2020-003734 Application 15/171,897 Technology Center 3700 ____________ Before DANIEL S. SONG, MICHAEL L. HOELTER, and BRANDON J. WARNER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–18, which constitute all the claims pending in this application. See Non-Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART the Examiner’s rejection of these claims and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “SUMITOMO RUBBER INDUSTRIES, LTD.” Appeal Br. 1. Appeal 2020-003734 Application 15/171,897 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a golf club head.” Spec. ¶ 1. Apparatus claims 1 and 11 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A golf club head comprising a plate-shaped face portion for hitting a ball, wherein the face portion has a thick portion that includes a face center, and a peripheral portion that is thinner than the thick portion and surrounds the thick portion, the thick portion having an approximately uniform thickness, the peripheral portion has a transition portion that surrounds the thick portion and is in contact with the thick portion, and a thin portion that is in contact with the transition portion on the opposite side of the thick portion, the transition portion being thicker than the thin portion, but is thinner than the thick portion, and the transition portion gradually decreasing in thickness from the thick portion toward the thin portion, the transition portion being an approximately ring- shaped when viewed from a direction orthogonal to a back surface of the face portion, the back surface being a surface opposite to a front surface of the face portion, the front surface being a surface for hitting a ball, the thick portion extends along a central axis line that extends in a direction inclined from a toe side toward a heel side along a direction from a sole side toward a top side, the central axis line is a line segment having a maximum length among line segments that pass through a centroid of the thick portion and are overlapped with the thick portion, and the thick portion has a recessed portion on at least one side of the central axis line so that a central region of the thick portion along the central axis line is recessed more toward the central axis line than parts of the thick portion on two sides of the central region along the central axis line. Appeal 2020-003734 Application 15/171,897 3 EVIDENCE Name Reference Date Gibbs et al. (“Gibbs”) US 8,012,041 B2 Sept. 6, 2011 Curtis et al. (“Curtis”) US 8,197,356 B2 June 12, 2012 REJECTIONS2 Claims 1–103 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Claims 1–18 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Claims 1–18 are rejected under 35 U.S.C. § 103 as obvious over Gibbs, “as set forth in the previous office action and below in response to applicant’s remarks and further in view of Curtis.” Non-Final Act. 3. ANALYSIS The rejection of claims 1–10 as being indefinite The Examiner rejects independent claim 1 (and hence also dependent claims 2–10) as being indefinite because the phrase “approximately ring- shaped” “cannot be determined.” Non-Final Act. 2. Appellant disagrees, referencing “page 9, lines 24 and 25,” as well as “FIG. 4,” of Appellant’s 2 A rejection of claims 1–18 as anticipated by Gibbs has been withdrawn. See Ans. 3. 3 Claim 6 was also specifically identified as being indefinite (see Non-Final Act. 2) but, upon consideration of Appellant’s remarks, this rejection of claim 6 was “not sustained” such that claim 6 “remains rejected only as a dependent to rejected claim 1.” Ans. 3. Appeal 2020-003734 Application 15/171,897 4 Specification contending that “‘approximately ring-shape’ is clearly defined in the specification and that the term ‘approximately’ modifies ‘ring-shape’ to allow for slight variations in the ring shape.” Appeal Br. 6. Regarding the term “approximately,” both Appellant and the Examiner agree that this term does not require strict adherence to an exact “ring shape,” but they disagree as to the extent to which such variations are permitted. Compare Appeal Br. 7 (“‘approximately’ is equivalent to the term ‘substantially’”), with Ans. 7 (“The term does more than allow for slight variations.”). Despite this disagreement, we elect to focus on the claim term “ring- shaped” instead. As noted above, Appellant provides a specific citation to Appellant’s Specification, including a reference to Figure 4 thereof, as support for Appellant’s contention. See Appeal Br. 6 (referencing “page 9, lines 24 and 25” (which is understood to be a part of Spec. ¶ 29)).4 This cited portion states, “[t]he peripheral portion 60 has an approximately ring- shaped transition portion 61 that surrounds the thick portion 50.” Spec. ¶ 29. Claim 1 recites, at one location, a “transition portion that surrounds the thick portion.” At another location, claim 1 recites “the transition portion being [] approximately ring-shaped.” By Appellant’s use of different descriptors (“surrounds” and “ring-shaped”) for the transition portion, and because there is no indication that these two terms share the same definition (see Appellant’s Specification), they are understood, instead, to have different meanings. This is because a different shape, other than “ring-shaped,” such as triangular or rectangular or one that is irregular, may 4 Hereafter we employ citations to the numbered paragraphs in Appellant’s Specification, and not page/line numbering. Appeal 2020-003734 Application 15/171,897 5 also “surround” the thick portion as per paragraph 29 of Appellant’s Specification. It is the meaning of “ring” that the Examiner explores. See Ans. 3–8. As regarding the illustration provided by Appellant’s Figure 4, the Examiner characterizes this illustration as being “peanut shaped” perhaps because the depicted intermediate region of this elongated shape is smaller than the diameter of it opposite end regions. Ans. 4 (referencing Appellant’s Figure 4). From a review of Appellant’s Figure 4, the Examiner’s “peanut shaped” characterization is a reasonable one. The Examiner supplies two different dictionary definitions of the term “ring.” Ans. 6. One is “a small circular band” and the other is “surround.” Ans. 6. Appellant does not challenge either definition. The Examiner focuses on the former definition, which we do not fault, because claim 1 already recites that the transition portion “surrounds the thick portion.” See Ans. 5, 6. The Examiner then concludes that “there does not appear to be anything that is circular with respect to the disclosed transitional portion 61 that is disclosed in accordance with [its] ordinary meaning.” Ans. 6. Instead, as per the Examiner, “the claim is open to many different subjective interpretations” and “neither the specification nor [A]ppellant in his remarks explicitly states how such a limitation can clearly be interpreted.” Ans. 6 (referencing Ex parte Miyazaki, 89 USPQ2d 1207, 1217 (BPAI 2008)), 7. Appellant does not explain how the Examiner’s findings might be mistaken or how the shape of the transition portion surrounding the thick portion as illustrated in Figure 4 of Appellant’s Specification might be a “ring” as this term is presently defined. Accordingly, we sustain the Examiner’s rejection of claims 1–10 as being indefinite because the claim Appeal 2020-003734 Application 15/171,897 6 phrase “approximately ring-shaped” “cannot be determined [and] is most broadly subjective.” Non-Final Act. 2. Upon further investigation, however, it is noted that independent claim 11 also recites “a transition portion that surrounds the thick portion” and “the transition portion being approximately ring-shaped,” identical to claim 1 above. Regardless, the Examiner did not reject claim 11 on the basis that the recitation “approximately ring-shaped” is indefinite. No explanation is provided and it would not be proper to sustain a rejection based on this phrase being indefinite with respect to claim 1, but not do so when this same limitation is employed in claim 11 under similar circumstances. Accordingly, we consider claim 11 (and hence also dependent claims 12–18) indefinite for the same reasons expressed above. However, because claims 11–18 were not heretofore rejected as being indefinite based on this limitation, we designate this new rejection of claims 11–18 as a new ground of rejection. We do so in order to provide Appellant an opportunity to respond to this new rejection of these claims. In addition to the above rejection of claim 1 being indefinite because of the claim phrase “approximately ring-shaped,” the Examiner also rejects claim 1 (and hence dependent claims 2–10 as well) as being indefinite because of the claim term “thinner.” See Non-Final Act. 2. The Examiner reasons that “the claim does not define with respect to what structure or feature this dimension[] is being measured.” Non-Final Act. 2. We disagree with the Examiner on this point. Claim 1 recites “a peripheral portion that is thinner than the thick portion.” Hence, the term “thinner” is not without a reference or a basis by which to make a comparison of this physical trait. Instead, the term is used to contrast a thickness of a peripheral portion with a Appeal 2020-003734 Application 15/171,897 7 thickness of the thick portion. The Examiner is not persuasive that a skilled person would fail to be aware of the meaning of this claim limitation, or how it is to be interpreted or understood within the context of the claim. See Ans. 8–9. We thus disagree with the Examiner that “the claim does not define with respect to what structure or feature this dimension[] is being measured” because, as recited, it is being measured with respect to “the thick portion.” Non-Final Act. 2. Accordingly, we do not sustain this (additional) “thinner” basis by which claims 1–10 are deemed to be indefinite. The rejection of claims 1–18 as being indefinite Both independent claims 1 and 11 are deemed by the Examiner to be indefinite based on their usage of the claim phrase “plate-shaped” (and hence also claims 2–10 and 12–18 which depend therefrom). Non-Final Act. 3. The Examiner determines that “the term is subjective and fails to convey any clear structure.” Non-Final Act. 3. Appellant disagrees stating “[t]he term ‘plate’ is defined in Merriam-Webster dictionary as ‘a smooth flat thin piece of material.’” Appeal Br. 7. Appellant thus states that in view of the common dictionary definition of this term, “a plate shape is known to one of ordinary skill in the art to have a relatively flat surface.” Appeal Br. 7. The Examiner disagrees stating that “a ‘plate’ is also ‘typically circular.’” Ans. 9 (referencing a definition defining “plate” as “typically circular and made of china, from which food is eaten or served”); see also id. at 11. The Examiner is not persuasive that this proffered “circular” definition is that which would have been understood by one skilled in the art upon reading Appellant’s Specification. Accordingly, we do not sustain the Examiner’s rejection of claims 1–18 as being indefinite due to the limitation “plate- shaped.” Appeal 2020-003734 Application 15/171,897 8 The rejection of claims 1–18 as obvious over Gibbs and Curtis As noted above, the Examiner states: Claim(s) [] 1–18 are is/are rejected under 35 U.S.C. 102(a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gibbs 8,012,041 as set forth in the previous office action and below in response to applicant’s remarks and further in view of Curtis 8,197,356. Non-Final Act. 3. Note that, subsequently, “[t]he anticipation considerations have been withdrawn” (Ans. 3), leaving only the alternative rejection “under 35 U.S.C. 103” involving Gibbs and Curtis. Non-Final Act. 3. Regarding independent claim 1, the Examiner states: As to claim 1, Gibbs shows [a] club head wherein the face portion has a thick portion 200 that includes a face center 400, and a peripheral portion 205 that is thinner than the thick portion and surrounds the thick portion, the thick portion extends along a central axis line 505 that extends in a top-sole direction, the thick portion has a recessed portion at 210 on at least one side of the central axis line 505 so that a central region of the thick portion along the central axis line is recessed more toward the central axis line than parts of the thick portion such as 222 on two sides of the central region along the central axis line. Non-Final Act. 3. Regarding independent claim 11, the Examiner states, “Claim 11 is interpreted as claim 1 above.” Non-Final Act. 5. We note the complete lack of any reference to Curtis by the Examiner in explaining this rejection. In fact, the Examiner also does not reference Curtis with respect to any of the subsequent reasons to reject claims 2–10 and 12–18 either. See Non-Final Act. 3–5. As indicated above, the Examiner has withdrawn the anticipation rejection based on Gibbs (see Ans. 3), and there is no indication that claims 1–18 are rejected as being obvious Appeal 2020-003734 Application 15/171,897 9 based only upon the single reference to Gibbs.5 For example, the Examiner observes that Appellant’s discussion of “Curtis alone do[es] not consider the combination of art applied as a whole in the grounds for rejection.” Ans. 27. Further, the Examiner states, “the rejection is made under 103 where Gibbs does not directly discuss in detail the face without element 400.” Ans. 12. Hence, we understand the rejection of these claims rests upon more than just Gibbs alone. Considering the Examiner’s silence as to Curtis in the above rejection, Appellant states, “[a]t the outset, regarding the 35 U.S.C. § 103 rejection, the Office Action has not clearly established exactly how Curtis is combined with Gibbs.” Appeal Br. 9. Nor has the Examiner, as per Appellant, “indicated why” the recited invention would have been obvious. For example, Appellant states, “it is unclear how Gibbs would be modified with Curtis” and that “the Office Action is unclear.” Appeal Br. 9, 10. The Examiner disagrees stating that in an earlier office action, the Examiner provided the reason of “[t]o have uniform thickness in the face of a club like Gibbs would have been obvious in order to improve strength, alter the CT and/or shift the weight of the club head.” Ans. 15 (referencing “the 2/5/2019 office action”). This rationale might be applicable had the Examiner based the rejection as being obvious over Gibbs alone, but that is not how the Examiner has structured the present rejection under appeal. See Non-Final Act. 3. Thus, Appellant’s concern above that “the Office Action 5 We find troubling that after the Examiner withdrew the anticipation rejection based on Gibbs (see Ans. 3), the Examiner chastised Appellant stating “Appellant ignores that Gibbs has been applied as anticipating the claimed invention since the first non-final office action dated 7/13/2018.” Ans. 12. Appeal 2020-003734 Application 15/171,897 10 has not clearly established exactly how Curtis is combined with Gibbs” (Appeal Br. 9) remains unanswered.6 The Examiner, in further explaining the rejection, states that the center and transition portions “can be either ring-shaped or x-shaped as desired by the design of the face” (Non-Final Act. 7 (referencing a number of US patents)), thereby perhaps signaling a rejection based on an obvious to try rationale. However, there are infinitely more possible shapes than just ring or x-shapes, such as triangular (right, equilateral, or otherwise), square (or some other polygon with or without internal right angles), oval or elliptical, egg-shaped, heart-shaped, as well as an abundance of symmetrical or asymmetrical, irregular, or uneven shapes, that can be imagined. Here, the Examiner does not attempt to explain how the only choices available are “either ring-shaped or x-shaped,” and thus any reliance on an obvious to try rationale is misplaced.7 The Examiner also references “design choice” in the Answer (see Ans. 14, 15), but does not address this possible reason in the rejection, from which this appeal is taken. See Non-Final Act. 3. To be clear, the Examiner states, “Curtis ‘is applied in the alternative’ that appellant’s face thickness 6 We hardly think it fair for the Examiner to recite the rejection one way but, in the Answer, provide a rationale wholly unrelated to that rejection. 7 To perhaps underscore the point that there are, indeed, countless different shape options available, the Examiner states that Appellant’s recited face is one designed “for an intended golfer with an intended stroke for an intended purpose of play.” Non-Final Act. 7. This implies that the Examiner understands that no two golfers, or their stroke or their game, are the same, and that each situation is unique. This further undercuts an obvious to try rationale which requires, instead, there being “a finite number of identified, predictable solutions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appeal 2020-003734 Application 15/171,897 11 design is not novel and a matter of design choice.” Ans. 14. Because Curtis is now apparently “applied in the alternative,” but the single-paragraph rejection (see Non-Final Act. 3) does not identify Curtis as being the basis of an alternate rejection, one might wonder if this expressed alternate rejection is a new ground of rejection or whether the Examiner is now relying solely on Curtis to reject the claims. It is not clear from the record. What is further striking is that, in rendering the rejection, the Examiner states “as set forth in the previous office action and below in response to applicant’s remarks.”8 Non-Final Act. 3. We, thus, further investigate “the previous office action” and that which is “below” as directed by the Examiner. Beginning with “the previous office action,” in this situation, the previous office action is a final office action dated February 5, 2019 (hereinafter “Final Act.”). However, this earlier Final Act., and the present non-final office action, are substantially the same. In other words, it appears the latter was maintained from the former. Again, no reference to Curtis is provided in this earlier, final, office action, which also relies on a combination of Gibbs and Curtis. See Final Act. 3. To further complicate matters, in this earlier Final Act., the Examiner, in rejecting claims 1–18 as being obvious, also states that they are obvious “as set forth in the previous office action and below.” Final Act. 3. This additionally referenced “previous office action” is a non-final action dated July 13, 2018 (hereinafter “2018 Non-Final Act.”). The fact of the matter is, however, that the 2018 Non-Final Act. does not employ Curtis in rejecting 8 The Examiner also states, “the prosecution history is clear when necessary of how the two references combine.” Ans. 12. Appeal 2020-003734 Application 15/171,897 12 these claims under Section 103. See 2018 Non-Final Act. 3. Instead, these claims 1–18 were rejected as being obvious only in view of Gibbs. See 2018 Non-Final Act. 3. Thus, any investigation of any “previous office action,” as directed by the Examiner, would not be fruitful in attempting to ascertain the role of Curtis since all three rejections (i.e., the present Non-Final Action subject to this appeal, the Final Act., and the 2018 Non-Final Act.) fail to explain the role Curtis plays in the obviousness rejection of claims 1–18. We now investigate that which the Examiner deems is “below.” Starting with the earliest 2018 Non-Final Act., there is no “below” regarding Curtis since Curtis was not relied on with respect to that office action. Now addressing the “below” as regarding the next-in-time Final Act., the Examiner states in the “Conclusion” portion of this final action that “Curtis is applied in the alternative.” Final Act. 6. However, no further explanation is provided by the Examiner in this “Conclusion” portion (or elsewhere) as to how (or why) Curtis is to be applied. Thus, it is still unknown what or how Curtis is being employed by the Examiner (other than as an “alternative” but without more). Now addressing the “below” of the present non-final action, we (again) understand this reference to be to the “Conclusion” portion that follows the stated rejection. See Non-Final Act. 5. Without any specificity whatsoever, the Examiner casually asserts that “[t]he application of Curtis is clear from the rejection.” Non-Final Act. 5. We disagree because, as noted above, the Examiner has mainly remained silent as to the application of Curtis in the present rejections of claims 1–18. The Examiner further states, addressing Appellant, that: Appeal 2020-003734 Application 15/171,897 13 As a patent professional applicant is certainly capable of determining that the combination of applied art are directed to the same inventive concepts in the shape and design of golf club face plates. Non-Final Act. 6. As best we can ascertain, the Examiner is charging Appellant with interpreting the basis of the rejection in view of “the combination of applied art.” We disagree with this approach taken by the Examiner because, instead, it is the Examiner that bears the initial burden of establishing a prima facie case of obviousness. See In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005). Further, just as “Judges are not like pigs, hunting for truffles buried in briefs,” neither are Appellants hunting for reasons not otherwise expressed in office actions. United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991). What is considered a particular violation of this standard is the Examiner referencing one statement from one office action, and another statement from another office action, and concluding that, based on these disparate statements, somehow “the basis for the grounds for rejection has been clearly articulated to the appellant.” Ans. 15. Elsewhere, the Examiner addresses a certain limitation stating “this limitation is clearly shown in fig. 21 of Gibbs and also taught in fig. 8a of Curtis.” Non-Final Act. 6. However, one is left to wonder why the Examiner is relying on a combination with Curtis if Gibbs already discloses the limitation. The Examiner also asserts that “Curtis clearly teaches shaping the center portion of a club to have uniform thickness and transitions portions ‘ring-shaped.’” Non-Final Act. 6. The Examiner elaborates further stating “that Curtis was applied to further show that, even if one were to consider Gibbs too vague[,] . . . uniform thickened portions . . . are fairly taught in the Appeal 2020-003734 Application 15/171,897 14 art.” Ans. 14. Assuming arguendo that Curtis does disclose a uniform thickened portion, the Examiner, consistent with the above single-paragraph rejection (see Non-Final Act. 3), does not provide an explanation or reason why, just because a feature was known, a skilled person would have selected Curtis for combination with Gibbs. On this point, we have been instructed by the Supreme Court that, in instances of claims to combinations of known devices, it is still “important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. From our review of the record presented, we agree with Appellant that such a reason to combine is lacking. See Appeal Br. 9–10. We are also instructed by our reviewing court that the Examiner satisfies the initial procedural burden of establishing a prima facie rejection by adequately explaining the shortcomings perceived so that the applicant is properly notified and able to respond. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). On the other hand, when the rejection is so “uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection,” the Examiner has failed to carry the necessary procedural burden. Jung, 637 F.3d at 1362. In short, “[t]he examiner cannot sit mum, leaving the applicant to shoot arrows into the dark hoping to somehow hit a secret objection harbored by the examiner.” In re Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992). Presently, and based on the record before us, we are not persuaded that the requisite notification as to the basis of the rejection has been properly conveyed to Appellant. Nor are we persuaded that a prima facie case of obviousness has been rendered such that “the burden of coming Appeal 2020-003734 Application 15/171,897 15 forward with evidence or argument shifts to the applicant” to counter the Examiner’s rejection. Oetiker, 977 F.2d at 1445. Before concluding, we further note that independent claims 1 and 11 each recite a certain slope for the central axis L3. Neither Gibbs nor Curtis appears to illustrate such a slope and the Examiner discounts this specifically recited orientation stating “[s]uch arbitrary reference lines can inherently be drawn” (Non-Final Act. 5) and “[i]t is an arbitrary reference line” (Ans. 17; see also id. at 21). The Examiner proffers no explanation that changing the recited slope could readily be accomplished or that such change could be achieved without any adverse effect on the recited art. Thus, we do not agree with the Examiner that a specifically recited limitation can, in the present case, be said to be “arbitrary” or that the claims “do[] not clearly recite any particular direction of inclination.”9 Ans. 17, 19, 21; see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006) (explaining that to read limitations out of a claim would “be contrary to the principle that claim language should not be treated as meaningless”). Further, we wish to comment briefly on the Examiner’s statement that “Appellant continues to attempt to make the grounds for rejection appear confusing to the Board.” Ans. 17. We disagree. As explained above, expressing the grounds of rejection in a clear manner is a requirement of the 9 Further, the Examiner states, “the ‘toe side’ and ‘heel side’ are not explicitly defined elements in the claims. Instead to the examiner they are general and relative directions.” Ans. 21; see also id. at 25. We disagree. Claims are to be interpreted in view of Appellant’s Specification and several of Appellant’s figures clearly identify that which is designated the “toe side” and the “heel side.” See Spec. Figs. 2, 4, 5. In other words, these “sides” are explicitly identified, contrary to the Examiner’s statement above. Appeal 2020-003734 Application 15/171,897 16 Examiner. See, e.g., Jung, 637 F.3d at 1362. From our perspective, the present confusion regarding the grounds of rejection is the Examiner’s doing. We reverse the Examiner’s rejection of claims 1–18 as being obvious in view of Gibbs and Curtis. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–18 112(b) Indefiniteness 1–10 11–18 1–18 112(b) Indefiniteness 1–18 1–18 103 Gibbs, Curtis 1–18 Overall Outcome10 1–10 11–18 This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating 10 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.” Appeal 2020-003734 Application 15/171,897 17 to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, [A]ppellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed., Rev. 10.2019, June 2020). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation