Ex Parte Forbes et alDownload PDFPatent Trial and Appeal BoardOct 29, 201312397104 (P.T.A.B. Oct. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JAMES W. FORBES and JEMAL HEMATIAN ________________ Appeal 2011-013361 Application 12/397,104 Technology Center 3600 ________________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS and BART A. GERSTENBLITH, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013361 Application 12/397,104 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-14, 16-20 and 24-28. App. Br. 2. Claims 15 and 21-23 are allowed. Final Action mailed Oct. 18, 2010. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and we enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to the field of rail road cars, and, more particularly, to the field of three piece rail road car trucks for rail road cars.” Spec. para. [0002]. Independent claim 1, the only independent claim, is illustrative of the claims on appeal and is reproduced below: 1. A rail road car truck comprising: a truck bolster mounted transversely between a pair of first and second sideframes, said truck bolster having first and second ends, each of said first and second sideframes having a sideframe window into which a respective one of said first and second ends of said bolster is received; a first spring group, said first spring group being mounted in said window of said first sideframe, said first spring group including a first array of side-by-side coil springs upon which said first end of said truck bolster is carried; a second spring group, said second spring group being mounted in said window of said second sideframe, said second spring group including a second array of side-by side coil springs upon which said second end of said truck bolster is carried; said first sideframe having a first end and a first pedestal fitting defined thereat, said first pedestal fitting including a pair of first and second opposed pedestal jaw thrust lugs and a pedestal roof; said second sideframe having a first end and a first pedestal fitting defined thereat, said second pedestal fitting Appeal 2011-013361 Application 12/397,104 3 including a pair of first and second opposed pedestal jaw thrust lugs and a pedestal roof; said sideframes being mounted on wheelsets, said wheelsets including a first wheelset, said first wheelset having an axle; said axle having a first end and a second end; said wheelset having first and second bearings mounted on said first and second ends thereof, said bearings having substantially cylindrical bearing casings; said first bearing being mounted in said first sideframe pedestal fitting of said first sideframe and said second bearing being mounted in said first sideframe pedestal fitting of said second sideframe; a first bearing adapter and a second bearing adapter, said first bearing adapter being mounted upon the casings of said first and second bearings respectively; each of said bearing adapters having a pair of axially spaced arches, longitudinally spaced end walls and pairs of corner abutments, said pairs of corner abutments being axially spaced to bracket respective ones of said thrust lugs, and each of said end walls of each said bearing adapter extending axially between a respective one of said pairs of said corner abutments; said first sideframe being mounted to yaw appreciably relative to said truck bolster, and said second sideframe being mounted to yaw appreciably relative to said truck bolster; a first elastomeric pad member mounted to overlie at least a portion of said first bearing adapter between said first bearing adapter and said first sideframe pedestal roof of said first sideframe; an second elastomeric pad member mounted to overlie at least a portion of said second bearing adapter between said second bearing adapter and said first sideframe pedestal roof of said second sideframe; and a first set of friction dampers mounted to work between said first end of said truck bolster and said first sideframe; a second set of friction dampers mounted to work between said second end of said truck bolster and said second sideframe; said first set of dampers including a first damper and a second damper; Appeal 2011-013361 Application 12/397,104 4 said first damper and said second damper being driven independently of each other; and said first damper being mounted transversely inboard of said second damper. REFERENCES RELIED ON BY THE EXAMINER Barber RE 31,008 Aug. 10, 1982 Wiebe US 4,915,031 Apr. 10, 1990 Taillon US 5,544,591 Aug. 13, 1996 Rudibaugh US 5,562,045 Oct. 8, 1996 Duncan US 6,374,749 B1 Apr. 23, 2002 THE REJECTIONS ON APPEAL 1. Claim 4 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Ans. 4. 2. Claims 1-8, 10-14, 16-19 and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Barber and Rudibaugh. Ans. 4. 3. Claims 9 and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Barber, Rudibaugh and Duncan. Ans. 8. 4. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Barber, Rudibaugh and Wiebe. Ans. 8. 5. Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Rudibaugh and Barber. Ans. 9. 6. Claims 24-26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rudibaugh, Barber and Taillon. Ans. 9. Appeal 2011-013361 Application 12/397,104 5 ANALYSIS The rejection of claim 4 as being indefinite Claim 4 depends from claim 1 and includes the further limitation of “wherein said first elastomeric pad member is one of (a) a Lord Corporation elastomeric passive steering pad; and (b) a Pennsy Corporation elastomeric passive steering pad.” The Examiner rejects claim 4 “because the claimed structures of the Lord Corporation pad and the Pennsy Corporation pad are not clear.” Ans. 4. Appellants contend that “[t]he Lord Corporation pad is defined at page 38 in paragraph [0088]. The Pennsy Corporation pad is defined at pages 38-39 in paragraph [0090]” and further that “[a]n Applicant is entitled to be his or her own lexicographer.” App. Br. 5, Reply Br. 2. Appellants’ Specification states that “[a]n LC pad is an elastomeric bearing adapter pad available from Lord Corporation of Erie Pennsylvania” and provides an exemplary part number. Spec. para. [0088]. Appellants’ Specification also states that “[t]he term ‘Pennsy pad’, or ‘Pennsy Adapter Plus’, refers to a kind of elastomeric pad developed by Pennsy Corporation of Westchester Pa.” and provides one example as being illustrated in a US Patent. Spec. para. [0090]. In essence, Appellants define these claim terms by where such pads are “available from” or by whom they were “developed” rather than by any particular structural feature that further distinguishes them. The Examiner continues to find that the descriptions provided in Appellants’ Specification “are merely exemplary. It is still not clear as to what structures are covered by the instant claimed Lord Corporation pad and Pennsy Corporation pad.” Ans. 10. The Examiner further states that what is being claimed “does not necessar[ily] require the specific structural details Appeal 2011-013361 Application 12/397,104 6 given by the examples described in paragraphs [0088] and [0090] of the instant specification.” Ans. 10. When addressing issues of claim indefiniteness, our reviewing court stated that “what we have asked is that the claims be amenable to construction, however difficult that task may be.” Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). We have also been informed that a “decision on whether a claim is invalid under § 112, 2d ¶, requires a determination of 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, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In the matter before us, Appellants have clearly defined the claimed pad as one of a Lord Corporation pad and a Pennsy Corporation pad. Broadly construed, this claim is directed to the full and complete structure (as no variance in such structure is claimed) of one of a pad “available from Lord Corporation” and a pad “developed by Pennsy Corporation.” While it may be a difficult task to ascertain what pads were available from the Lord Corporation as of the time of the invention, it is not impossible for one skilled in the art to do so, such as by obtaining a properly dated catalog or the like. In such a manner, it would be possible to ascertain whether a pad of a certain configuration was “available from Lord Corporation” or not as claimed. However, we are not certain that one skilled in the art would be able to ascertain what pads were “developed by Pennsy Corporation” as of the time of invention because this “developed” language encompasses designs which were abandoned, altered or otherwise failed to mature into a final product as well as products that may be marketed by others while not indicating whether Pennsy Corporation was involved in the Appeal 2011-013361 Application 12/397,104 7 product development. Accordingly, while we agree with the Examiner that claim 4 is indefinite, the rationale employed is not identical to that relied on by the Examiner. Ans. 4, 10. We are instructed that “[m]ere reliance by the Board on the same type of rejection or the same prior art references relied upon by the examiner, alone, is insufficient to avoid a new ground of rejection where it propounds new facts and rationales to advance a rejection- none of which were previously raised by the Examiner.” In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011). Accordingly, we enter a New Ground of Rejection with respect to claim 4 as being indefinite under 35 U.S.C. § 112, second paragraph, in order to afford Appellants a fair opportunity to respond. The rejection of claims 1-8, 10-14, 16-19 and 28 as being unpatentable over Barber and Rudibaugh Appellants argue claims 1-8, 10-14 and 16-19 together (App. Br. 10- 23) and accordingly, we select claim 1 for review with claims 2-8, 10-14 and 16-19 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants acknowledge that claim 28 is also rejected over Barber and Rudibaugh (App. Br. 4) but inexplicably do not reference (or argue) the rejection of claim 28 (see App. Br. 10, 11). As this may have simply been an oversight on Appellants’ part, we group claim 28 with the other dependent claims above and elect not to otherwise affirm its rejection based on a lack of any contrary argument at the present time. The Examiner primarily relies on Barber for disclosing the limitations of claim 1 and that Barber’s corresponding sideframes 1 “are capable of” yawing relative to Barber’s corresponding truck bolster. However, the Examiner notes that “Barber does not show the ends of the sideframes Appeal 2011-013361 Application 12/397,104 8 associated with axle bearings, bearing adapters and pads.” Ans. 5. This is correct; Barber’s Figures 1-3 do not illustrate the ends of sideframe 1 because Barber’s sideframe is shown truncated. Barber explains that Since railway truck side frames and bolsters are well known to those skilled in the art, only those portions necessary for an understanding of the present invention are, for clarity and simplicity, illustrated herein. Barber 1:56-59. Accordingly, the Examiner relies on Rudibaugh which “discloses the details of a sideframe end having pedestal fitting 12 that is configured to be mounted on an axle bearing with bearing adapter 14 and pad 16, as recited in the instant claims.” Ans. 5, see also Rudibaugh fig. 1. The Examiner finds that it would have been obvious “to use the teaching of Rudibaugh for forming the features at the [missing] sideframe ends of Barber.” Ans. 5. In short, because Barber did not disclose the end of the sideframe, the Examiner relied on Rudibaugh for such teaching, with no change in either’s operation. Ans. 5. The Examiner also finds that the inclusion of Rudibaugh’s end components on Barber’s sideframe would “achieve the expected advantages of Rudibaugh’s construction, such as improved ride conditions by reducing forces … while reducing wear between parts” as discussed in Rudibaugh. Ans. 5. Appellants disagree with the Examiner’s assessment and particularly state that “[t]he issue disputed at this time in respect of the patentability of independent claim 1 is whether the combination of the admittedly old, known elements of Barber with the admittedly old, known elements of Rudibaugh is inventive.” App. Br. 11. Appellants reiterate this argument stating that “[a]s previously, the issue in dispute is whether the combination Appeal 2011-013361 Application 12/397,104 9 of the admittedly old, known elements of Barber with the admittedly old, known elements of Rudibaugh is inventive.” Reply Br. 3. Appellants’ assertion that combining old elements “is inventive” appears to be directly contrary to Supreme Court guidance that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court also provided instruction that “it can be 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” and further that “this analysis should be made explicit.” KSR, 550 U.S. at 418. Appellants acknowledge the Examiner’s stated reason to combine Barber and Rudibaugh by repeating it (App. Br. 11) but Appellants contend that KSR “requires a ‘clearly articulated reason’, not a vague general statement” (Reply Br. 4). However we are not persuaded that the stated reasons of improving ride and reducing wear are insufficiently articulated by the Examiner and as such, we do not find Appellants’ assertion that the combination of old, known elements is inventive, without more, to be persuasive. In support of the above assertion, Appellants reference art that was not entered into evidence. App. Br. 12. The Examiner did not enter this newly cited art (nor did the Examiner consider it) “because the appeal brief failed[ed] to provide a statement where in the record that evidence was entered by the examiner.” Ans. 4, citing MPEP 1205, item (ix) - Evidence appendix. This MPEP reference cites to 37 C.F.R. § 41.37 (c)(1)(ix) which states that a “[r]eference to unentered evidence is not permitted in the brief.” Appeal 2011-013361 Application 12/397,104 10 Appellants contend that such evidence should be entered because “[i]t cannot cause harm. The excerpts do not prejudice the Commissioner.” Reply Br. 3. This is not the criteria and as such, Appellants’ arguments based on such evidence are not persuasive. After discussing the load path and spectrum encountered by the claimed device (App. Br. 12-14), Appellants also assert that their invention permits “controlled, resilient, degree-of-freedom” yet “[t]here is no indication that the prior art addresses, or makes any suggestion in respect of, this multiple-degree-of-freedom issue.” App. Br. 14. However, Barber teaches that in response to side loads that “position the bolster out of perpendicular [in] relation to the side frames,” Barber’s device “yieldingly [urges] the assembly [back] toward a square relationship.” Barber 1:13-22, see also 2:49-51. Barber also discusses returning the structure “to the required even elevation for again holding the truck square.” Barber 1:28-36. Hence, contrary to Appellants’ assertion, Barber discusses structure having multiple-degrees of freedom which are urged back to a square relationship. Appellants’ assertion is not persuasive. Appellants further assert that Barber fails to “discuss[] the interface between the bearing adapters and the sideframe pedestals.” App. Br. 15. We do not dispute this as Barber intentionally did not illustrate this portion of the sideframe nor does the Examiner rely on Barber for teaching this structure. Barber 1:56-59, Ans. 5. Similarly, Appellants assert that Rudibaugh does not “discuss[] the interface between the bolster and the sideframes” (App. Br. 15), yet the Examiner did not rely on Rudibaugh for these teachings. Ans. 5. Accordingly, Appellants’ assertions are not persuasive. Appeal 2011-013361 Application 12/397,104 11 Appellants also contend that “Rudibaugh was looking at a single feature in isolation, and provided no discussion of the relationship of performance at this interface and for the variables in which he was interested with any other part of the suspension.” App. Br. 15. In essence, Appellants do not dispute Rudibaugh’s teachings relied on by the Examiner, but instead contend that Rudibaugh did not elaborate further on how these teachings relate to other suspension parts. Appellants’ contention does not persuade us that the Examiner erred in relying on the identified teachings of Rudibaugh. Appellants also assert that the Examiner failed to adequately establish that the cited pads perform the same function or that the combined teachings of Barber and Rudibaugh were predictable. App. Br. 16, see also Reply Br. 8. We are instructed that the PTO satisfies its initial procedural burden of establishing a prima facie rejection by adequately explaining the shortcomings it perceives so that the applicant is properly notified and able to respond. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Further, “the burden of coming forward with evidence or argument shifts to the applicant” to counter the Examiner’s rejection once the Examiner presents a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In the present case, the Examiner explained the perceived shortcomings such that the burden to come forward to counter the Examiner’s rejection has shifted to Appellants. Ans. 5. We are further guided by Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161-62 (Fed. Cir. 2007), which finds that the combination of familiar elements according to known methods was obvious when it did no more than yield predictable results and when the patentee presented no evidence that the combination was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an Appeal 2011-013361 Application 12/397,104 12 unobvious step over the prior art” (citing KSR, 550 U.S. at 418). In the present matter, there is no indication that the Examiner relied on the components of Barber or Rudibaugh to operate after being combined in any manner other than in accordance with their normal operation, i.e., to operate as described in their respective reference. Ans. 5. In view of the above, we are not persuaded by Appellants’ contentions that (a) the burden remains with the Examiner and that (b) the combination of Barber and Rudibaugh was particularly challenging or unpredictable. Appellants also discuss the skill level of one skilled in the art and the “reasonable assumption that the named inventors are quite often persons highly skilled in the art.” App. Br. 16. Likewise, Barber and Rudibaugh can equally be considered to be skilled in the art as they are also named inventors. Be that as it may, Appellants do not persuade us that a skilled person aware of Barber’s intentional decision to not disclose sideframe ends (Barber 1:56-59) would fail to look to Rudibaugh for such teaching. This is especially the case in view of the fact that Appellants acknowledge that Rudibaugh’s teaching in this regard is old and well-known. App. Br. 11, Reply Br. 3. Appellants also reference other patents not relied on by the Examiner to show that “the best thing to do is to eliminate yaw deflection between the bolster and the sideframes entirely.” App. Br. 17. While these other patents may teach the complete elimination of yaw, Barber and Rudibaugh disclose a solution by which yaw can be limited or controlled, but not necessarily wholly eliminated. Barber 1:10-12; Rudibaugh Abstract. Appellants do not show how a different approach makes the specific teachings of Barber and Rudibaugh inaccurate or inapplicable. The burden for Appellants is to Appeal 2011-013361 Application 12/397,104 13 counter the Examiner’s reliance on Barber and Rudibaugh by showing that the Examiner’s reliance on their teachings is in error, not that alternate teachings exist. See Oetiker, 977 F.2d at 1445. We further note that Appellants rely on Taillon (cited by the Examiner but not in this rejection) as “prevent[ing] yawing from occurring.” App. Br. 18, see also Reply Br. 6. Taillon discloses that it is important to restrain yaw movement, but that even while attempting to restrain such movement, Figures 3 and 5 of Taillon clearly disclose that “a roll angle of at least 3.5°” is still permitted. Taillon 3:41-43. Consequently, not only is Taillon not relied on by the Examiner in this rejection (acknowledged by Appellants at Reply Br. 10), but Taillon does not “prevent yawing from occurring” as asserted by Appellants. App. Br. 18. Appellants’ contention is not persuasive. Appellants also rely on “the large body of prior art taken as an (sic) whole” and that this art “does not suggest that the results of the combination are predictable.” App. Br. 18. In making this assertion, Appellants focus on art not relied on by the Examiner instead of addressing the cited art of Barber and Rudibaugh. Ans. 5. Appellants’ reliance on non-cited art does not persuade us that the Examiner’s rejection which combined Barber and Rudibaugh was in error. Appellants further assert that the Examiner improperly relied on a hindsight analysis (App. Br. 19, Reply Br. 6) but Appellants do not indicate what claimed structure was gleaned only from Appellants’ disclosure. In this regard, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as the Examiner’s analysis takes into account only knowledge which Appeal 2011-013361 Application 12/397,104 14 was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from Appellants’ disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Appellants’ contention is not persuasive. Appellants also assert that the prior art was dominated by tunnel vision in that they only focused “on a single degree of freedom, or a single mechanism, or a single aspect of the problem, while failing to view the suspension as an overall system having multiple degrees of freedom.” App. Br. 20. We have already addressed Barber’s disclosure of multiple degrees of freedom supra. Further, Appellants’ acknowledgement that others have already addressed this problem, albeit different sub-components thereof, does not persuade us that Appellants’ invention is non-obvious. Appellants also appear to be asserting a long felt need for the claimed invention in that no solution has been forthcoming for a long time. App. Br. 22-23, Reply Br. 6. Appellants reference a large body of art not relied on by the Examiner and assert that “the presently claimed invention, now said to be obvious, was apparently ignored or unperceived by persons of the highest level of skill in the art over a period of some 40 to 60 years.” App. Br. 23. This assertion is premised on the failure of the PTO to make findings “without any supporting evidence, that the features merely perform the same functions as they would do separately.” App. Br. 23. In other words, Appellants appear to contend that Rudibaugh’s structure at the end of the sideframe would operate differently when secured to the end of Barber’s sideframe. The Examiner is not asserting a difference in operation of Rudibaugh’s components when secured to Barber’s sideframe, instead, Appeal 2011-013361 Application 12/397,104 15 Rudibaugh’s components are to operate as described. Ans. 5. Appellants’ contentions are not persuasive. Further, Appellants present no evidence other than attorney argument that Rudibaugh’s structure would act differently. App. Br. 23. We are also instructed that “secondary considerations of nonobviousness . . . simply cannot overcome a strong prima facie case of obviousness” and that for obviousness under § 103, “all that is required is a reasonable expectation of success.” Wyers v. Master Lock Co., 616 F.3d 1231, 1242, 1246 (Fed. Cir. 2010). Appellants have not persuaded us that the combination of Barber and Rudibaugh would not be successful. Appellants also contend that the Examiner set forth multiple reasons why the combination of old elements (Barber and Rudibaugh) was obvious. Reply Br. 5, 7; Ans. 11. Appellants contend that they had to “guess” as to which rationale applied and that “the onus is on the Commissioner” to identify which is being advanced. Reply Br. 5, see also Reply Br. 7. We disagree; Appellants acknowledge that the issue was whether “the combination of the admittedly old, known elements of Barber with the admittedly old, known elements of Rudibaugh is inventive” (Reply Br. 3) and the Examiner was simply stating that the Court in KSR provided multiple rationales why the combination of old art was obvious. Ans. 11. Appellants do not persuade us of error because the Examiner expressed different avenues by which obviousness can be found. Appellants do not separately argue the rejection of claims 9 and 27 as being unpatentable over Barber, Rudibaugh and Duncan nor do Appellants separately argue the rejection of claim 20 as being unpatentable over Barber, Rudibaugh and Wiebe. Ans. 8; App. Br. 4. As such, and in view of the Appeal 2011-013361 Application 12/397,104 16 record presented, we sustain the Examiner’s rejections of claims 1-14, 16- 20, 27 and 28. The rejection of claim 1 as being unpatentable over Rudibaugh and Barber Appellants rely on the same arguments presented above with respect to this rejection wherein Rudibaugh is the primary reference. App. Br. 10. For reasons similar to those stated above, we sustain the Examiner’s rejection of claim 1 in view of Rudibaugh and Barber. The rejection of claims 24-26 as being unpatentable over Rudibaugh, Barber and Taillon Claims 24-26 each depend from claim 1 and Appellants contend that “[t]eaching away is a conclusive indicator of non-obviousness.” App. Br. 23, see also Reply Br. 12, 13. However, a teaching away requires a reference to actually criticize, discredit, or otherwise discourage investigation into the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In the matter before us, Appellants do not indicate where any one reference criticizes, discredits, or otherwise discourages investigation into the claimed solution, instead, Appellants contend that “[t]he documents [i.e., Taillon and Rudibaugh] are plainly contradictory.” App. Br. 25, see also Reply Br. 10. Appellants contend that Taillon attempts to eliminate yaw (App. Br. 24) but as indicated supra, Taillon intentionally permits a certain degree of yaw to occur. Taillon 3:41-43; see also figs. 3 and 5. Rudibaugh also acknowledges that lateral movement occurs and as a consequence seeks to “prevent significant relative lateral movement.” Rudibaugh, Abstract. We do not find their respective teachings to be contradictory as Appellants assert. See also Reply Br. 12. Accordingly, we sustain the Examiner’s rejection of claims 24-26. Appeal 2011-013361 Application 12/397,104 17 DECISION The Examiner’s rejections of claims 1-14, 16-20 and 24-28 are affirmed. We also enter a New Ground of Rejection with respect to claim 4 under 35 U.S.C. § 112, second paragraph. This New Ground of Rejection is entered because it relies on reasons different from and/or additional to those stated by the Examiner and also to provide Appellants a fair opportunity to respond. Further, 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides that Appellants must, WITHIN TWO MONTHS, exercise one of the following options: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation