Ex Parte Metzger et al

Patent Trial and Appeal Board

Dec 10, 2015

12938905 (P.T.A.B. Dec. 10, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/938,905 11/03/2010
94507 7590 12/14/2015
Schwegman Lundberg & Woessner I Biomet
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Robert Metzger
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5490-000581/US/CPQ 4351
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
12/14/2015 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):
uspto@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT METZGER, BRIAN A. UTHGENANNT,
DUKE A. FOX, and BRIAN M. MAY 1
Appeal2013-010493
Application 12/938,905
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Metzger et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner's final rejection of claims 18, 21, 29, 32-38, and
41--43. Claims 19, 28, 39, and 40 have been withdrawn and claims 1-7, 20,
22-27, 30, and 31 have been canceled. We have jurisdiction under 3 5
U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION.
1 According to Appellants, the Real Party in Interest is Biomet
Manufacturing Corporation. App. Br. 3.
Appeal2013-010493
Application 12/938,905
THE INVENTION
The claimed invention presented in this appeal generally relates to "a
patient-specific endoprosthetic device, such as a meniscal implant, and
various customized tibial implants." Spec. i-f 6. Independent claim 18 is
illustrative of the claimed subject matter:
18. An endoprosthetic device comprising:
a tibial bearing having a patient-specific three-
dimensional peripheral surface that matches a corresponding
three-dimensional peripheral surface of a specific patient's
anatomy based on a three-dimensional image of the knee joint
of the specific patient;
a tibial component including a tibial tray having a
patient-specific three-dimensional peripheral surface that
matches a corresponding three-dimensional peripheral surface
of a patient's tibial bone based on the three-dimensional image
of the knee joint of the specific patient; and
a tibial stem having a patient-specific orientation relative
to the tibial tray, the patient-specific orientation selected using
the three-dimensional image of the knee joint of the patient
during a preoperative plan of the specific patient.
EVIDENCE
The Examiner relies upon the following evidence:
Carson US 2012/0101586 Al Apr. 26, 2012
THE REJECTIONS
The Examiner rejected claims 18, 21, 29, 32-38, and 41--43 as
follows:
1. claims 18, 21, 29, 32, 33, 36-38, and 41--43 under 35 U.S.C.
§ 102( e) as anticipated by Carson; and
2
Appeal2013-010493
Application 12/938,905
2. claims 21, 29, 32-38, and 41--43 under 35 U.S.C. § 103(a) as being
unpatentable over Carson.
ANALYSIS
We begin by addressing the Examiner's interpretation of the claims.
Interpreting the claims, the Examiner determined the terms "patient
specific," "matches," and "based on" do not require a prosthetic part to be an
exact duplicate of the relevant body part of the patient. Ans. 5. In support
of this interpretation, the Examiner noted "matches" requires something to
"be compatible, similar or consistent" with the relevant body part. Id. at 4
(emphasis omitted). Paragraph 21 of the Specification, as amended, 2
describes "patient specific" as "closely" conforming to a corresponding
geometric feature of a patient's anatomy. Id. at 4--5. Finally, the use of
"based on" is "broad and has varying degrees and does not have to be an
exact duplicate." Id. at 5. We agree with the Examiner's determination that
the use of "patient specific," "matches," and "based on" in the claims at
issue does not require a prosthetic part to be an exact duplicate of the
patient's relevant body part.
But, the Examiner went on to state the following:
Given the broad scope of the claim language, it is the
examiner's position that any "non-customized" prior art
endoprosthetic comprising a tibial bearing, tibial tray, and tibial
stem is "based on" patient anatomy, "closely conforms" and
"matches" the surfaces they replace such that the patient's
previous structure and functionality is restored.
2 The Examiner's Answer indicates the objection to Appellants' July 19,
2012 amendment of paragraph 21 is withdrawn. Ans. 3.
3
Appeal2013-010493
Application 12/938,905
Id. This proclamation goes too far. Even under the broadest reasonable
interpretation, the claims on appeal do not extend to "non-customized"
endoprosthetic devices comprising a tibial bearing, tibial tray, and tibial
stem. Nevertheless, for the reasons set forth below, we find the Examiner's
rejections are otherwise appropriate.
Anticipation of Claims 18, 21, 29, 32, 33, 36-38, and 41-43 based on
Carson
Appellants assert first, referring to claim 18, that "Carson does not
disclose a tibial tray having a patient-specific three-dimensional peripheral
surface, a tibial bearing having a patient-specific three-dimensional
peripheral surface, or a tibial stem having a patient-specific orientation
relative to a tibial tray that is selected using a three-dimensional image of a
knee joint." App. Br. 11. For this point of alleged distinction, Appellants
argue claims 18, 21, 29, 32, 33, 36-38, and 41--43 as a group. Id. at 14.
Therefore, we treat claim 18 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner found Carson to disclose an endoprosthetic device
including a tibial bearing 400, a tibial component including a tibial tray 302,
and a tibial stem 316. Final Act. 6. Because Carson also states each of these
parts "may be custom-designed for a specific patient based on data provided
by a surgeon after physical and radiography examination of the specific
patient," the Examiner found the endoprosthetic device of Carson
necessarily has all of the claimed limitations of claim 18. Id. 6-7 (citing
Carson i-fi-1 42, 52).
4
Appeal2013-010493
Application 12/938,905
Appellants argue Carson does not disclose a tibial bearing having "a
patient-specific three-dimensional peripheral surface that matches a
corresponding three-dimensional peripheral surface of a specific patient's
anatomy based on a three-dimensional image of the knee joint," a tibial tray
having "a patient-specific three-dimensional peripheral surface that matches
a corresponding three-dimensional peripheral surface of a patient's tibial
bone," or a tibial stem "having a patient-specific orientation relative to the
tibial tray." App. Br. 10-11. Appellants fault the Examiner for finding
these limitations necessarily present simply because Carson teaches the
recited parts may be "custom-designed" for a specific patient "based on"
information provide by a surgeon after physical and radiography
examination of the specific patient. Id. According to Appellants, the
Examiner's conclusions are unwarranted because that "broad language
merely suggests that [the recited] components may be custom-designed for a
specific patient without teaching exactly how or what portions of these
components may be custom-designed (e.g., size, shape, weight, strength,
stiffness, hardness, material, orientation, etc.)." Id. at 12. As a result,
Appellants contend Carson "does not expressly, implicitly, or inherently
disclose the specific limitations of Claim 18." Id.
We do not find Appellants' arguments persuasive. In the context of
what Carson discloses as a whole, we do not agree with Appellants that a
person of skill would be unaware about how or what portions of the recited
components may be custom designed.
Turning first to the tibial tray, Carson teaches it is common for the
tibial tray to conform to the patient's proximal tibia. Carson i-f 9. We find in
the context of Carson's discussion of a total knee replacement, a person of
5
Appeal2013-010493
Application 12/938,905
skill in the art would understand Carson as describing the three-dimensional
peripheral surface of the tibial tray as conforming to the three-dimensional
peripheral surface of the patient's proximal tibia. Thus, a preponderance of
the evidence supports the Examiner's finding that a custom-designed tibial
tray, which is based on data provide by a surgeon after physical and
radiography examination of the specific patient, necessarily has "a patient-
specific three-dimensional peripheral surface that matches a corresponding
three-dimensional peripheral surface of a patient's tibial bone," as recited in
the claim.
Next, regarding the tibial bearing, Carson explains the tibial bearing is
designed to create an articulating relationship with the femoral condylar.
Carson i-f 44. The tibial bearing has a medial concave portion and a lateral
concave portion for engaging the outer surface of the medial and lateral
condylar portions of the femur. Id. We find Carson, therefore, shows a
person of skill in the art recognized a direct correlation between the shapes
(i.e., the radii of curvature) of the tibial bearing's engaging concavities and
the outer surfaces of a patient's femoral condylar portions. Carson also
teaches the radii of curvature defining the tibial bearing concavities "can
vary as desired." Id. (emphasis added). Again, context is important, and
Carson is directed to an apparatus intended to replace a patient's existing
knee. Id. i-f 14. With that context, and because Carson teaches the radii of
the engaging concavities is customizable, a preponderance of the evidence
supports the Examiner's finding that a custom-designed tibial bearing, which
is based on data provided by a surgeon after physical and radiography
examination of the specific patient, necessarily has "a patient-specific three-
dimensional peripheral surface that matches a corresponding three-
6
Appeal2013-010493
Application 12/938,905
dimensional peripheral surface of a specific patient's anatomy based on a
three-dimensional image of the knee joint," as recited in the claim.
Finally, regarding the tibial stem, Carson shows it is common
knowledge to the skilled artisan to position the stem at an angle relative to
the tibial tray "in order to extend into a surgically formed opening in the
patient's intramedullary canal." Carson i-f 9. The purpose of the tibia stem is
known to "provide[] for the stabilization of the tibial component 300 on the
tibia." Id. i-f 40. Because the known purpose for tibial stem orientation is to
create a cooperation between the tibial component and a patient's
intramedullary canal, a preponderance of the evidence supports the
Examiner's finding that the custom-designed tibial stem of Carson, based on
data provided by a surgeon after physical and radiography examination of
the specific patient, necessarily included a stem "having a patient-specific
orientation relative to the tibial tray," as recited in the claim.
Appellants' arguments rest on establishing a person of skill in the art
would not know from reading Carson how or what portions of the tibial
bearing, tibial tray, or tibial stem may be custom designed (e.g., size, shape,
weight, strength, stiffness, hardness, material, orientation, etc.). App. Br. 12.
Notably, rather than offering evidence - declarative, testimonial, or
otherwise - to substantiate their contention, Appellants chose to rely on
argument alone. Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052,
1068 (Fed. Cir. 2005) (unsubstantiated attorney argument is no substitute for
competent evidence). Attorney argument is not evidence. In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot
take the place of evidence."). Notably, Appellants do not offer any evidence
showing why a skilled artisan custom-designing a prosthetic device, based
7
Appeal2013-010493
Application 12/938,905
on radiographic information of the patient, would not necessarily make these
peripheral surfaces and orientations of the Carson device closely conform to
those specific geometric features of the patient's anatomy with which they
are intended to replace, engage, and/or extend into.
Considering how Carson describes the disclosed prosthetic devices, as
discussed above, the Examiner identified sufficient evidence to establish a
case of anticipation. We find a custom-designed embodiment of the
prosthetic disclosed by Carson, which is based on patient specific
radiographic information, would necessarily conform "closely" to the
relevant three-dimensional peripheral surfaces and/ or orientation of a
specific patient. We also find Carson identifies to a person of ordinary skill
in the art what portions of the tibial bearing, tibial tray, or tibial stem may be
custom designed and how they may be custom designed.
Therefore, we sustain the Examiner's rejection of claim 18 under
35 U.S.C. § 102(e) as anticipated by Carson. Because Appellants do not
allege any other patentable distinctions for claims 29, 32, 33, 41 and 43, we
likewise sustain the Examiner's rejection of these claims under 35 U.S.C. §
102( e) as anticipated by Carson.
Appellants also assert claim 21 is separately patentable because it
recites "the tibial bearing has patient-specific articulating surfaces that match
corresponding articulating surfaces of femoral condyles of the patient."
App. Br. 14. For this point of alleged distinction, Appellants argue claims
36-38, and 42 as a group. App. Br. 14. Although Appellants also discuss
claim 37 separately, because Appellants merely recite the claim element
with a naked assertion that the element was not found in the prior art,
Appellants have failed to properly set forth a grounds of separate
8
Appeal2013-010493
Application 12/938,905
patentability. In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011). Therefore,
we treat claim 21 as representative.
Appellants contend Carson discloses the tibial bearing "only
articulates with the femoral component 200 (i.e., a femoral implant)." App.
Br. 15. As support, Appellants point out the exemplary embodiment
discussed in Carson "discloses that the insert 400 includes a post 420 that
fits within an intercondylar recess 208 of the femoral component 200." Id.
at 14. As such, "the proximal surface 402 and the post 420 of the insert 400
are configured for articulating engagement with the femoral component 200
(i.e., a femoral implant)." Id. Appellants argue the post 420 of Carson's
insert 400 demonstrates "Carson does not disclose that the proximal surface
402 of the articular insert 400 closely conforms as a mirror image or
negative of a corresponding articulating surface of femoral condyles of a
patient." Id. at 15. In other words, according to Appellants, because the
preferred embodiment of Carson discloses the insert 400 with a post 420 that
fits within an intercondylar recess 208 of the femoral component 200,
Carson cannot have a tibial bearing with "patient specific articulating
surfaces that match corresponding articulating surfaces of femoral condyles
of the patient," as required by claim 21.
We are not persuaded by Appellants' argument. We discern no
language in Appellants' claim 21 that would exclude the claimed device
from also including a post 420 or from being used with a femoral
component. Because claim 21 depends from open-ended independent claim
18 reciting the transitional term "comprising," it can include additional
structural features. Mag Sil Corp. v. Hitachi Global Storage Techs., Inc.,
687 F.3d 1377, 1383 (Fed. Cir. 2012) ("Open claim language, such as the
9
Appeal2013-010493
Application 12/938,905
word 'comprising' as a transition from the preamble to the body of a claim,
'signals that the entire claim is presumptively open-ended."' (citing Gillette
Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005)).
Further, we do not find any limitation requiring the area between the
articulating surfaces of the claimed tibial bearing to match the corresponding
area of a patient's femoral bone. Consistent with our understanding, the area
between the articulating surfaces in Appellants' preferred embodiment of a
tibial bearing does not exactly match the shape between the femoral
condyles (i.e., the intercondylar recess) of the patient. See Figs. 1 and 4. An
interpretation of the claims that excludes the preferred embodiment "is
rarely, if ever, correct and would require highly persuasive evidentiary
support." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.
Cir. 1996). Therefore, we do not find the addition of post 420 or the use of a
femoral component in Carson to be particularly relevant points of asserted
distinction.
We also do not agree using a femoral component with a tibial bearing
evidences the tibial bearing does not have "patient-specific articulating
surfaces that match corresponding articulating surfaces of femoral condyles
of the patient." Carson teaches the femoral component includes medial and
lateral condylar portions, which may be custom-designed for a specific
patient based on information provided by a surgeon after physical and
radiography examination. Carson i-fi-138, 42. Because Carson is directed to a
knee replacement and because Carson specifically identifies replacing the
patient's medial and lateral condylar portions, we find a person of skill in
the art would recognize a custom-designed femoral component would
necessarily have medial and lateral condylar portions that "closely conform"
10
Appeal2013-010493
Application 12/938,905
to the shape and radii of curvature of the articular surface of a patient ;s
femoral condyles. As a result, to create an articulating relationship between
the custom-designed femoral component and the articulating surfaces of the
tibial bearing, the tibial bearing would likewise necessarily have "patient-
specific articulating surfaces that match corresponding articulating surfaces
of femoral condyles of the patient," as recited in the claim.
Furthermore, contrary to Appellants' assertion, we find a person of
skill would recognize the tibial bearing of Carson may articulate with the
medial and lateral condyles of the patient. Although the preferred
embodiment in Carson's disclosure includes a femoral component, we do
not find anything in the description of the tibial bearing that suggests a
femoral component is necessary. In fact, it is telling Carson repeatedly
describes the tibial bearing as having concave portions for engaging the
outer surface of the medial and lateral condylar portions. Id. i-fi-138, 44.
Consistent with our understanding of Carson's disclosure, we note Carson's
independent claims 1 and 17 expressly describe the concavities of the medial
and lateral contacting portions of the tibial bearing are configurable to
articulate against a patient's medial and lateral femoral condyle. 3 See
Carson Claims 1, 17.4 Therefore, we find a person of skill in the art would
3 The femoral component is not introduced until dependent claims 3 and 19,
respectively, and the addition of a post is not introduced until dependent
claims 5 and 21, respectively.
4 "The claims of a prior art patent are part of its disclosure." Therasense,
Inc. v. Becton, Dickinson & Co., 593 F.3d 1289, 1295 (Fed. Cir. 2010),
overruled on other grounds by, 649 F.3d 1276 (Fed. Cir. 2011) (en bane).
Sitting en bane, the Federal Circuit reinstated, and affirmed, the panel
decision regarding obviousness, noninfringement, and anticipation.
11
Appeal2013-010493
Application 12/938,905
not understand the disclosure of Carson as limiting the tibial bearing to only
articulating with a femoral component.
Therefore, we also sustain the Examiner's rejection of claim 21 under
35 U.S.C. § 102(e) as anticipated by Carson. Because Appellants do not
allege any other patentable distinctions for claims 36-38, and 42, we
likewise sustain the Examiner's rejection of these claims under 35 U.S.C.
§ 102( e) as anticipated by Carson.
Because we do not agree with the Examiner's unreasonably broad
statement of the claim scope, as discussed above, and to ensure Appellants
are provided a fair opportunity to respond, we designate our affirmance of
the anticipation rejection of claims 18, 21, 29, 32, 33, 36-38, and 41--43 as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
Obviousness of Claims 21, 29, 32-38, and 41-43 based on Carson
Appellants argue claims 21, 29, 32, 33, 36-38, and 41--43 as a group.
App. Br. 14. In addition, Appellants group claims 34 and 35 with claim 18.
Id. at 14, 16. Therefore, we treat claim 21 as representative and claims 29,
32, 33, 36-38, and 41--43 stand or fall with claim 21.
Appellants' challenge to the obviousness rejection is limited to
whether the Examiner provided a rationale sufficient to establish a prima
facie case of obviousness. App. Br. 16. Otherwise, Appellants simply rely
on the arguments made addressing the Examiner's anticipation rejection. Id.
We remain unpersuaded by Appellants' anticipation arguments.
Therasense, 649 F.3d at 1297.
12
Appeal2013-010493
Application 12/938,905
Regarding the sufficiency of the Examiner's prima facie case of
obviousness, Appellants allege "the Examiner merely cites a benefit of the
claimed structure as a reason for modifying the tibial implants of Carson to
include the missing structure." App. Br. 16. Appellants argue that "[t]he
Examiner does not, for example, cite a reference that teaches an implant
having a surface based on a three-dimensional image of a patient's anatomy,
and explain why it would have been obvious to modify the tibial implants of
Carson to read on the claims in view of the reference." Id. at 16-17.
We are not persuaded. As discussed above regarding anticipation, we
find Carson expressly teaches how the prosthetic tibial bearing and tibial
component are intended to interact with a patient's anatomy. The tibial stem
is positioned at an angle relative to the tibial tray "in order to extend into a
surgically formed opening in the patient's intramedullary canal." Carson
i-f 9. The purpose of the tibia stem is to "provide[] for the stabilization of the
tibial component 300 on the tibia." Id. i-f 40. Carson also points out that the
tibial component, including the tibial stem, may be custom-designed based
on, inter alia, information received from a radiological examination. Id.
i-f 42. Therefore, there is a rational underpinning supporting the Examiner's
reasoning to modify the tibial stem of Carson to have "a patient-specific
orientation relative to the tibial tray," as recited in the base claim 18.
Specifically, we agree with the Examiner that, if not inherently taught, it
would have been obvious to one having ordinary skill in the art to have
made a custom-designed tibial component with a tibial stem orientation that
closely conforms to the orientation required to best fit the patient and
provide a natural functionality based on information derived from a
radiological examination. Final Act. 8-9.
13
Appeal2013-010493
Application 12/938,905
Regarding the tibial tray, Carson establishes it was common
knowledge for the tibial tray to conform to the patient's proximal tibia.
Carson i-f 9. Of course, the tibial tray is comprised of three-dimensional
peripheral surfaces and so is a patient's proximal tibia. Carson also points
out that the tibial component, including the tibial tray, may be custom-
designed based on, inter alia, information received from a radiological
examination. Id. i-f 42. Therefore, a rational underpinning supports the
Examiner's reasoning to modify the tibial tray of Carson to have "a patient-
specific three-dimensional peripheral surface that matches a corresponding
three-dimensional peripheral surface of a patient's tibial bone based on the
three-dimensional image of the knee joint of the specific patient," as recited
in base claim 18. We agree with the Examiner that, if not inherently taught,
it would have been obvious to one having ordinary skill in the art to have
made a custom-designed tibial tray with peripheral surfaces that closely
conform to the shape and size of a patient's tibial bone, based on
information derived from a radiological examination, to provide the best fit
for the patient and to provide natural functionality. Final Act. 8-9.
Finally, regarding the tibial bearing, Carson explains there is an
articulating relationship between the tibial bearing and the femoral condylar.
Carson i-f 44. The tibial bearing has a medial concave portion and a lateral
concave portion for engaging the outer surface of the medial and lateral
condylar portions of the femur. Id. Carson also teaches the radii of
curvature defining the tibial bearing concavities "can vary as desired." Id.
(emphasis added). Because there was a known direct correlation between
the shapes (i.e., the radii of curvature) of the tibial bearing's engaging
concavities (i.e., articulating surfaces) and the outer surfaces of a patient's
14
Appeal2013-010493
Application 12/938,905
femoral condylar portions, there is a rational basis for the Examiner's
reasoning to modify the tibial bearing of Carson to have "a patient-specific
articulating surface that matches a corresponding articulating femoral
condyle surface of a specific patient based on a three-dimensional image of
the knee joint of the specific patient," as recited in claim 21. We agree with
the Examiner that, if not inherently taught, it would have been obvious to
one having ordinary skill in the art to have made a custom-designed tibial
bearing with an articulating surface that closely conforms to the shape and
size of a patient's femoral condyle, based on information derived from a
radiological examination, to provide the best fit for the patient and to
provide natural functionality. Final Act. 8-9.
Therefore, we sustain the rejection of claims 21, 29, 32, 33, 36-38,
and 41--43 under 35 U.S.C. § 103(a) as obvious over Carson, and designate
our affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41. 50(b) for the same reasons discussed above.
We note, for this rejection, the Examiner also states "[u]pon appeal,
claim 18 may be added to this rejection," but neither the Final Action nor the
Examiner's Answer actually makes an obviousness rejection of claim 18.
Final Act. 8; see Ans. 3. Because we have sustained the obviousness
rejection of claim 21, which depends from claim 18, we determine claim 18
is also properly rejected under 35 U.S.C. 103(a) as obvious over Carson.
Ormco Corp. v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a
dependent claim is "found to have been obvious, the broader claims ... must
also have been obvious."). Claims 34 and 35, which Appellants group with
claim 18 without additional substantive arguments, also fall therewith as
obvious over Carson. See App. Br. 14, 16. In addition, we designate this as
15
Appeal2013-010493
Application 12/938,905
a NEW GROU-ND OF REJECTION pursuant to 37 C.F.R. § 41.50(b) for the
same reasons discussed above.
DECISION
We AFFIRM the decision of the Examiner to reject claims 18, 21, 29,
32, 33, 36-38, and 41--43 under 35 U.S.C. § 102(e) as anticipated by Carson,
and we designate our affirmance as a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the decision of the Examiner to reject claims 21, 29, 32-
38, and 41--43 under 35 U.S.C. § 103(a) as being unpatentable over Carson,
and we designate our affirmance as a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
We add a NEW GROUND OF REJECTION of claim 18 under 35
U.S.C. § 103(a) as obvious over Carson pursuant to 37 C.F.R. § 41.50(b).
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."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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
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
16
Appeal2013-010493
Application 12/938,905
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
bar
17