Freddy Guime et al.

Patent Trials and Appeals Board

Jul 24, 2019

13739531 - (D) (P.T.A.B. Jul. 24, 2019)

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.
13/739,531 01/11/2013 Freddy Guime 220858-30001 8561
69139 7590 07/24/2019
LOEB & LOEB, LLP
321 NORTH CLARK
SUITE 2300
CHICAGO, IL 60654-4746
EXAMINER
POE, KEVIN T
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
07/24/2019 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):
CHPATENT@LOEB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte FREDDY GUIME, VICTOR GLAVA, and
ROBERT KALLAY1
__________

Appeal 2018-006596
Application 13/739,531
Technology Center 3600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
computerized method of determining an edge on an option strategy, which
have been rejected as being ineligible for patenting. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm but designate the affirmance as a new ground of rejection.
STATEMENT OF THE CASE
“Options are derivative securities whose values are a function of an
underlying asset. . . . A vanilla option on an (underlying) asset gives the

1 Appellants identify the Real Party in Interest as OptionsCity Software. Br. 2.
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buyer the right, but not the obligation, to buy (Call) or sell (Put) the
underlying asset at the strike price.” Spec. ¶¶ 17–18. “Option risks are
described by a set of partial derivatives commonly referred to as ‘the
Greeks’. Option Greeks include: Delta: the amount that an option price will
change given a small change in the price of the underlying asset . . . [and]
Vega: the amount that an option price will change given a small change in
volatility.” Id. ¶¶ 22–24.
“An edge may be thought of as a premium over a calculated value,
such as a theoretical value. Some users may view risk differently than other
users and thus, the pricing of the edge may be different for each user.” Id.
¶ 34. “In the past, traders often went by feel or experience in pricing the
edge on complex trades.” Id.
The Specification discloses a “method [that] may allow users to adjust
edge pricing based on quantifiable factors to be specific to a user, a customer,
an asset, an asset class or any other specific entity that is relevant to edge
pricing.” Id. “The result is that pricing of complex options including the edge
may be completed faster than in the past . . . [and] the pricing may be totally
automated, resulting in rapid and accurate complex option pricing with no
human involvement.” Id.
Claims 1–18 are on appeal. Claim 1 is representative and reads as
follows:
Claim 1: A computerized method of determining an edge on an option
strategy comprising:
receiving an option strategy for processing by a trade processing
server, said option strategy including at least the following data stored in a
memory: data for an underlying asset in the option strategy, user data,
customer data, asset data, and time parameter associated with a trade of the
underlying asset in the option strategy is transacted;
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determining, by the trade processing server, a time edge based on the
option strategy, said time edge being an estimated premium value, over a
calculated value, as a function of time for the option strategy;
determining, by the trade processing server, a delta value wherein the
delta value reflects acceptance of risk related to an underlying security in the
option strategy;
determining, by the trade processing server, a vega value wherein the
vega value reflects acceptance of risk related to volatility of the underlying
security in the option strategy;
accepting, by the trade processing server, a delta percentage to be
applied to delta risk;
accepting, by the trade processing server, a vega percentage to be
applied to vega risk wherein the delta percentage and the vega percentage
add up to 1;
determining, by the trade processing server, a delta edge comprising
multiplying the time edge by the delta percentage multiplied by the delta
value;
determining, by the trade processing server, a vega edge comprising
multiplying the time edge by the vega percentage multiplied by the vega
value; and
determining, by the trade processing server, the edge for the options
strategy based on a sum of the delta edge to the vega edge.
Br. 14–15 (Claims App’x).
Claim 10 is the only other independent claim, and is directed to a
computer system comprising, among other elements, instructions for
carrying out the steps recited in claim 1. Br. 17–18 (Claims App’x).
DISCUSSION
The Examiner has rejected claims 1–18 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 2. The Examiner reasons that
abstract ideas include fundamental economic practices and mathematical
relationships, and that, “[i]f an abstract idea is present in the claim, any
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element or combination of elements in the claim must be sufficient to ensure
that the claim amounts to significantly more than the abstract idea itself.” Id.
at 3, citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).
Here, the Examiner finds that the “[]receiving, determining, and
calculating [steps] described in the claim can be performed manually.” Id. at
4. The Examiner also finds that “determining an option strategy is a
fundamental economic practice long prevalent in our system of commerce,
which is in the realm of abstract ideas identified by the Supreme Court.”
Id. at 5. The Examiner concludes that the claims are “directed to the abstract
idea of determining an option strategy.” Id.
The Examiner also finds that the claims do not amount to significantly
more than the judicial exception because “[t]he trade processing server is
recited at a high level of generality and its broadest reasonable interpretation
perform[s] generic computer functions. Generic computers performing
generic computer functions to apply an abstract idea do not amount to
significantly more than the abstract idea.” Id. at 6.
Appellants argue that, in McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (2016), “[t]he Court indicated that claims may
be found to be patentable eligible where the claims use ‘a combined order of
specific rules that renders information into a specific format that is then used
and applied to create desired result’. McRo, 837 [F.3d] at 1315.” Br. 10.
Appellants argue that, here, the
claims solve problems with desired results by applying a
specific ordered combination of rules to determine the edge for
the options strategy based on a sum of the delta edge to the
vega edge. This is a specific approach that is a result of an
ordered combination of rule-based steps.
Id.
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Appellants also argue that “the claimed elements recite a specific
sequence of determination[s] based on a specific data value sets/points from
a given option strategy provided by the user.” Id. at 11. “Therefore, the
specific time edge, delta edge and vega edge values are different [for each
user]. Like the specific sequences of calculation made in McRo, the claimed
invention is also specific in that way.” Id.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has concluded that “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable under 35 U.S.C. § 101.
See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To determine if a claim falls into an excluded category, we apply a
two-step framework, described in Mayo and Alice. Id. at 217–18 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77
(2012)). We first determine what the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging.”).
Patent-ineligible abstract ideas include certain methods of organizing
human activity, such as fundamental economic practices (Alice, 573 U.S. at
219–20; Bilski, 561 U.S. at 611), mathematical formulas (Parker v. Flook,
437 U.S. 584, 594–95 (1978)), and mental processes (Gottschalk v. Benson,
409 U.S. 63, 69 (1972)). In contrast, patent-eligible inventions include
physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making
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water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, the claimed method employed a mathematical formula, but
the Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 192 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). The
Supreme Court noted, however, that a claim “seeking patent protection for
that formula in the abstract . . . is not accorded the protection of our patent
laws, . . . and this principle cannot be circumvented by attempting to limit
the use of the formula to a particular technological environment.” Id. (citing
Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, and “examine the elements of the
claim to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77 (alterations in original)). “[M]erely
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requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (January 7, 2019) (“Guidance”). Under that guidance, we first
determine whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts; certain methods of organizing
human activity such as a fundamental economic practice; or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
determine whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
a “well-understood, routine, conventional activity” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Guidance Step 2(A), Prong 1
Following the Guidance, we first consider whether the claims recite a
judicial exception. Claim 1 recites the steps of (a) “receiving an option
strategy for processing by a trade processing server, said option strategy
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including” certain data, (b) “determining, by the trade processing server, a
time edge based on the option strategy,” (c) “determining, by the trade
processing server, a delta value” that reflects acceptance of risk related to an
underlying security, (d) “determining, by the trade processing server, a vega
value” that reflects acceptance of risk related to volatility of the underlying
security, (e) accepting, by the trade processing server, a delta percentage and
a vega percentage (which together add up to one), to be applied to the delta
and vega values, respectively, (f) multiplying the time edge by the delta (or
vega) percentage multiplied by the delta (or vega) value to determine a delta
edge and a vega edge, and (g) adding the delta and vega edges to determine
the edge for the options strategy.
The Examiner finds that each of these limitations describes an abstract
idea, for two reasons. First, “[t]he reason that the limitations are considered
abstract are []receiving, determining, and calculating described in the claim
can be performed manually.” Ans. 4. Second, “determining an option
strategy is a fundamental economic practice long prevalent in our system of
commerce, which is in the realm of abstract ideas identified by the Supreme
Court.” Id. at 5.
We agree with the Examiner’s conclusion, but for a different reason.
In our view, claim 1 recites an abstract idea, at least in the steps of
“determining, by the trade processing server, a delta edge comprising
multiplying the time edge by the delta percentage multiplied by the delta
value,” “determining, by the trade processing server, a vega edge comprising
multiplying the time edge by the vega percentage multiplied by the vega
value,” and “determining, by the trade processing server, the edge for the
options strategy based on a sum of the delta edge to the vega edge.” Claim 1.
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These steps recite multiplying or adding a set of numbers together; in
other words, they recite the following mathematical equations:
delta edge = (time edge) x (delta percentage) x (delta value),
vega edge = (time edge) x (vega percentage) x (vega value), and
edge for the options strategy = (delta edge) + (vega edge).
These steps therefore recite the abstract idea of “[m]athematical
concepts—mathematical relationships, mathematical formulas or equations,
[or] mathematical calculations.” 84 Fed. Reg. at 52.
Guidance Step 2(A), Prong 2
Although claim 1 recites an abstract idea, it would still be patent-
eligible if “the claim as a whole integrates the recited judicial exception into
a practical application of the exception”; i.e., whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception.” 84 Fed. Reg. at 54. This analysis
includes “[i]dentifying whether there are any additional elements recited in
the claim beyond the judicial exception(s)” and “evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” Id. at 54–55. One of the
“examples in which a judicial exception has not been integrated into a
practical application” is when “an additional element adds insignificant
extra-solution activity to the judicial exception.” Id. at 55.
Here, we conclude that claim 1 does not integrate the purely
mathematical steps discussed above into a practical application, because the
other steps of the claimed method amount to simply setting the values for the
mathematical steps. That is, “receiving an options strategy” by a server
simply requires inputting a particular options strategy into a computer.
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Claim 1 does not limit the options strategies that can be used and the
Specification makes clear that “[o]ption strategies are many and varied.”
Spec. ¶ 36.
Likewise, “determining a time edge” simply requires inputting an
edge (“a premium over a calculated value,” id. ¶ 34) that reflects a higher
edge requirement for options that expire further in the future than for those
that expire sooner. See id. ¶ 37. Thus, “determining a time edge” is simply
setting a required premium that depends on how far in the future an option
expires.
Determining delta and vega values are also simply inputting of values
that reflect the degree of acceptance of risks associated with an underlying
security (delta) or with volatility of an underlying security (vega). Id. ¶¶ 39,
41. These values can be specific to a user, an asset, a customer, etc., id., but
they are nothing more than values (i.e., numbers).
Finally, accepting delta and vega percentages only requires setting
values that add up to one. “In use, the delta percentage and vega percentage
may be used to adjust the edge in a way that suits a user, a customer, an
asset, or other group.” Id. ¶ 44.
In summary, all of the steps of claim 1 other than those expressly
requiring mathematical calculations amount to no more than setting the
values to be used in those mathematical calculations. But “‘data-gathering
steps,’ CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370
(Fed. Cir. 2011), . . . add nothing of practical significance to the underlying
abstract idea.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
2014). We therefore conclude that claim 1 is directed to an abstract idea.
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Guidance Step 2(B)
Finally, the Guidance directs us to consider whether claim 1 includes
“additional elements . . . [that] provide[] ‘significantly more’ than the recited
judicial exception.” 84 Fed. Reg. at 56. The Guidance states that an
additional element that “simply appends well-understood, routine,
conventional activities previously known in the industry, specified at a high
level of generality, to the judicial exception, . . . is indicative that an
inventive concept may not be present.” Id.
Here, the only element recited in claim 1, other than the mathematical
and data-gathering steps, is the use of a “trade processing server” to carry
out the recited steps. Claim 1, however, does not recite any structural or
functional limitations of the server, and the Specification makes clear that
any of a variety of computers will do: “The computing system may be a
dedicated computing device 141, a dedicated portable computing device
101, an application on the computing device 141, an application on the
portable computing device 101 or a combination of all of these.” Spec. ¶ 27.
See also id. ¶ 29 (“server type computing device 141”).
Thus, under the broadest reasonable interpretation, the “trade
processing server” recited in claim 1 requires only a generic computer, and
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice Corp., 573
U.S. at 223.
The Guidance instructs us, however, to reevaluate additional elements
that were found to be insignificant extra-solution activity under Step 2(A) of
the analysis to determine whether those elements are “unconventional or
otherwise more than what is well-understood, routine, conventional activity
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in the field.” 84 Fed. Reg. at 56. The Guidance provides the following
relevant example:
when evaluating a claim reciting an abstract idea such as a
mathematical equation and a series of data gathering steps that
collect a necessary input for the equation, an examiner might
consider the data gathering steps to be insignificant extra-
solution activity in revised Step 2A, and therefore find that the
judicial exception is not integrated into a practical application.
However, when the examiner reconsiders the data gathering
steps in Step 2B, the examiner could determine that the
combination of steps gather data in an unconventional way and
therefore include an “inventive concept,” rendering the claim
eligible at Step 2B.
Id. (footnote omitted).
Here, the Specification does not specify how the data-gathering steps
are carried out. Regarding the step of “receiving an options strategy,” the
Specification states that
an option strategy may be accepted. Option strategies are many
and varied. By combining puts and calls along with buying and
selling the puts and calls, many different risks may be
addressed and many different payout scenarios can be created
by an option strategy. . . . Common strategies are given names
such as straddles, strangles, butterfly, etc.
Spec. ¶ 36. The Specification does not describe any method, much less an
unconventional method, by which an options strategy is received by the
server.
Regarding “determining a time edge,” the Specification states that “a
time edge based on the option strategy may be determined.” Id. ¶ 37. The
Specification states that “the time edge may be learned. Past trades may be
reviewed to determine a time edge for a user, a customer, an asset, etc.” Id.
¶ 38. The Specification states that “[t]he learning may take into account
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changes over time” and “the result of trades in the past may be analyzed.”
Id. However, the Specification does not further describe methods of
determining a time edge, or describe determining a time edge by learning as
unconventional.
What is true for the claimed step of “determining a time edge” is also
true of the claimed steps of “determining a delta value” and “determining a
vega value.” The Specification states that these values “may be determined.”
Id. ¶¶ 39, 41. The Specification also states that these values “may be
learned,” and the “learning may take into account changes over time” and
“the result of trades in the past may be analyzed.” Id. ¶¶ 40, 43. But the
Specification does not further describe methods of determining delta and
vega values, or describe determining these values by learning as
unconventional.
The Specification also states that
the vega value may be a normalized vega value. For example,
the vega value may be determined as a vega value for an
instrument at the money with the most time to expiration
relative to the other instruments in the strategy in comparison to
a vega value for any instrument.
Id. ¶ 42. The Specification does not, however, describe any specific, let
alone unconventional, method of determining a normalized vega value.
Regarding the steps of “accepting . . . a delta percentage” and
“accepting . . . a vega percentage,” the Specification states only that:
At block 420, a delta percentage may be accepted to be applied
to delta risk and at block 425, a vega percentage to be applied to
vega risk may be accepted where the delta percentage and the
vega percentage add up to 1. In use, the delta percentage and
vega percentage may be used to adjust the edge in a way that
suits a user, a customer, an asset, or other group.
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Id. ¶ 44. The Specification does not describe any specific, let alone
unconventional, method of setting delta and vega percentages.
In summary, the Specification does not disclose any methods of
carrying out the data-gathering steps of claim 1 that are “unconventional or
otherwise more than what is well-understood, routine, conventional activity
in the field.” 84 Fed. Reg. at 56. Thus, the combination of elements recited
in the method of claim 1 does not amount to significantly more than the
judicial exception itself, and under 35 U.S.C. § 101 the claimed method is
ineligible for patenting.
Appellants’ Arguments
Appellants argue that “claims may be found to be patentable eligible
where the claims use ‘a combined order of specific rules that renders
information into a specific format that is then used and applied to create
desired result’.” Br. 10 (citing McRO). Appellants argue that the claims here
are similar to those in McRO because they “solve problems with desired
results by applying a specific ordered combination of rules to determine the
edge for the options strategy based on a sum of the delta edge to the vega
edge.” Id.
Appellants also argue that the claimed method is similar to the
specific calculations made in McRO in that “each user’s option strategy
differs from another user. Therefore, the specific time edge, delta edge and
vega edge values are different.” Id. at 11. Appellants conclude that “the
Office has overgeneralize[d] the claim elements and has failed to consider a
specific combination of rules for the determination of the edge for a given
options strategy.” Id. at 12.
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We are not persuaded that McRO supports the patent-eligibility of the
claimed method. In our view, the court’s analysis in SAP Amer., Inc. v.
InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018), is controlling here. In SAP,
the claims were directed to “systems and methods for performing certain
statistical analyses of investment information.” Id. at 1163. “[T]he patent
proposes a technique that ‘utilizes resampled statistical methods for the
analysis of financial data,’ which do not assume a normal probability
distribution.” Id. at 1164.
The SAP court concluded that the claims were “ineligible because
their innovation is an innovation in ineligible subject matter. Their subject is
nothing but a series of mathematical calculations based on selected
information and the presentation of the results of those calculations.” Id. at
1163. The court reasoned that “[n]o matter how much of an advance in the
finance field the claims recite, the advance lies entirely in the realm of
abstract ideas, with no plausibly alleged innovation in the non-abstract
application realm. An advance of that nature is ineligible for patenting.” Id.
The SAP court’s analysis is directly applicable here. The subject of
claim 1 is nothing but a series of calculations based on selected information,
and the determination of an edge for an options strategy based on those
calculations. No matter how much of an advance the claimed method may
represent in the field of buying and selling options, the advance lies entirely
in the realm of abstract ideas, and is therefore ineligible for patenting.
The SAP court also distinguished the claims at issue in that case from
those of McRO:
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and
facial expressions” of animated characters on screens for
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viewing by human eyes. [McRO, 837 F.3d] at 1313. The
claimed improvement was to how the physical display operated
(to produce better quality images), unlike (what is present here)
a claimed improvement in a mathematical technique with no
improved display mechanism. The claims in McRO thus were
not abstract in the sense that is dispositive here.
SAP, 898 F.3d at 1167.
Here too, the claimed method is said to be an improvement in a
mathematical technique:
In the past, traders often went by feel or experience in pricing
the edge on complex trades. The [claimed] method may allow
users to adjust edge pricing based on quantifiable factors to be
specific to a user, a customer, an asset, an asset class or any
other specific entity that is relevant to edge pricing. The result
is that pricing of complex options including the edge may be
completed faster than in the past. Further, by using quantifiable
factors, the pricing may be totally automated.
Spec. ¶ 34. The Specification does not describe the claimed method as
leading to the “creation of something physical” or to an improvement to how
something, such as a physical display, operated. Cf. SAP, 898 F.3d at 1167.
Thus, just as in SAP, McRO does not support the patent-eligibility of the
instant claims.
We affirm the rejection of claim 1 under 35 U.S.C. § 101. Claims 2–
18 have not been argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
SUMMARY
We affirm the rejection of claims 1–18 under 35 U.S.C. § 101.
However, because our reasoning differs significantly from that of the
Examiner, we designate the affirmance a new ground of rejection in order to
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give Appellants a fair opportunity to respond. See In re Kronig, 539 F.2d
1300, 1302–03 (CCPA 1976).
TIME PERIOD FOR RESPONSE
This decision contains a new ground 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, the 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 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,
appellant 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.

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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

37 C.F.R. § 41.50(b)