Ex Parte Forbes et al

Patent Trial and Appeal Board

Oct 29, 2013

12397104 (P.T.A.B. Oct. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES W. FORBES and JEMAL HEMATIAN
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Appeal 2011-013361
Application 12/397,104
Technology Center 3600
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Before MICHAEL L. HOELTER, ANNETTE R. REIMERS and
BART A. GERSTENBLITH, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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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
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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;
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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.

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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
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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
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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
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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
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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.”
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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.
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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
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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
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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
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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,
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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
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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.
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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