International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardDec 23, 20202020005565 (P.T.A.B. Dec. 23, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/611,326 06/01/2017 Tien Hiong Lee AS920170002US1 4530 45725 7590 12/23/2020 Walder Intellectual Property Law PC 445 Crestover Circle Richardson, TX 75080 EXAMINER ZHANG, DUAN ART UNIT PAPER NUMBER 3685 MAIL DATE DELIVERY MODE 12/23/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIEN HIONG LEE, KONSTANTIN LEVINSKI, EDWIN BOAZ SOENARYO, and WENG SING TANG Appeal 2020-005565 Application 15/611,326 Technology Center 3600 Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and KENNETH G. SCHOPFER, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s final decision to reject claims 1–4, 6, 8–11, 13, 15–18, and 20.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND of rejection. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies International Business Machines Corporation as the real party in interest. App. Br. 2. Appeal 2020–005565 Application 15/611,326 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates generally to an improved data processing apparatus and method and more specifically to mechanisms for secure sensitive private information dependent transactions.” (Spec., para. 1). Claim 1, reproduced below, is illustrative of the claimed subject matter (emphasis added): 1. A method, in a data processing system, for secure sensitive private information dependent transactions, the method comprising: receiving, in a cognitive sensitive personal information (SPI) broker from a service provider, a query and a transaction token S associated with a current transaction between a SPI owner and the service provider, wherein the query comprises criteria required to be fulfilled using particular SPI of the SPI owner for the current transaction initiated by the SPI owner, the particular SPI stored on one or more authorized devices of the SPI owner, the particular SPI is fulfilled from the group consisting of identity information, financial information, and medical information; identifying, by the cognitive SPI broker, the particular SPI required based on the query; constructing, by the cognitive SPI broker, a request for the particular SPI from the SPI owner thereby forming a constructed request; sending, by the cognitive SPI broker, the constructed request to the one or more authorized devices associated with the SPI owner enrolled with the cognitive SPI broker; receiving by the cognitive SPI broker, the particular SPI from an authorized device of the one or more authorized devices associated with the SPI owner thereby forming received SPI; using, by the cognitive SPI broker, the received SPI to complete the current transaction; and sending, by the cognitive SPI broker, a notification to the SPI owner that the current transaction has been completed. Appeal 2020–005565 Application 15/611,326 3 Appeal Br. 37 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Coulter US 2010/0121767 A1 May 13, 2010 Ortiz US 2014/0108263 A1 Apr. 17, 2014 Barbir US 2014/0173754 A1 June 19, 2014 Yang US 2016/0300222 A1 Oct. 13, 2016 REJECTIONS Claims 1–4, 6, 8–11, 13, 15–18, and 20 are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter. Claims 1, 6, 8, 13, 15, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Coulter and Barbir. Claims 2, 9, and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Coulter, Barbir, and Ortiz. Claims 3, 4, 10, 11, 17, and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Coulter, Barbir, Yang, and Ortiz. OPINION The rejection of claims 1–4, 6, 8–11, 13, 15–18, and 20 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter. Claims 1–4, 6, 8–11, 13, 15–18, and 20 are indefinite for the reasons discussed below. Accordingly, the rejection of claims 1–4, 6, 8–11, 13, 15– 18, and 20 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter must fall, pro forma, because it necessarily is based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). Appeal 2020–005565 Application 15/611,326 4 We make the following observations to explain why we are raising a question of definiteness. We otherwise have no comment on the merits of the Examiner’s position regarding the patent–eligibility of the claimed subject matter. We cannot meaningfully review this rejection because, based on the present record, we have been unable to give the claim limitation “a cognitive SPI broker” a broadest reasonable construction in light of the Specification, as it would be interpreted by one of ordinary skill in the art. Introduction 35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” In that regard, claim 1 (reproduced above) covers a “process” and is thus statutory subject matter for which a patent may be obtained.2 This is not in dispute. The two other independent claims on appeal, claim 8 to “[a] computer program product” and claim 15 to “[a]n apparatus” are nominally directed to the “manufacture” and “apparatus” statutory categories of invention, respectively. This is also undisputed. However, the 35 U.S.C. § 101 provision “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) 2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which requires determining whether “the claim is to a statutory category.” 84 Fed. Reg. at 53. See also id. at 53–54 (“consider[] whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101.”). Appeal 2020–005565 Application 15/611,326 5 (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In that regard, notwithstanding claims 1, 8, and 15 cover statutory subject matter (as are the claims depending from them), the Examiner has raised a question of patent eligibility on the ground that claim 1 is directed to an abstract idea. Alice identifies a two-step framework for determining whether claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217. Alice step one — the “directed to” inquiry: According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218 (emphasis added). The Examiner determined, inter alia, that the claims are directed to “a method for [processing] secure sensitive private information dependent transactions.” Final Act. 5. To reach that determination, the Examiner reproduces much of claim 1, focusing on the “receiving,” “identifying,” “constructing,” “sending,” “receiving,” “using,” and, “sending” terms in the claim. See id. at 5–8. But the claim limitation “a cognitive SPI broker” is not addressed. Appellant disagrees, arguing inter alia that The fact that the claimed invention is an improved computer tool that operates to ensure that the SPI will remain secure once it is released to the organizations and/or stored in the service providers' datacenters is evident from the features recited in the claims that the Examiner overlooks in its oversimplification and generalization of the claimed invention. Taking claim 1 as an example, the claim recites that the data processing system receives, in a cognitive sensitive personal information (SPI) broker from a service provider … . Appeal 2020–005565 Application 15/611,326 6 App. Br. 8. See also App. Br. 13: the claims clearly are specifically directed to an improved computing tool that performs the ordered combination of operations to construct, by the cognitive SPI broker, a request for the particular SPI from the SPI owner thereby forming a constructed request and send, by the cognitive SPI broker, the constructed request to the one or more authorized devices associated with the SPI owner enrolled with the cognitive SPI broker. And Reply Br. 12: the claimed invention is claiming an inventive concept in the particular ordered combination of operations recited in the present claims, as well as the particular way in which this ordered combination of operations is implemented specifically in a specifically configured computing tool. No computing tool prior to the presently claimed invention provided the functionality of capabilities to perform the particular set of operations set forth in the present claims. Accordingly, a dispute over whether claim 1 is directed to an abstract idea is present. Specifically, is claim 1 directed to “a method for [processing] secure sensitive private information dependent transactions (Final Act. 5) or “an improved computing tool” (App. Br. 13)? Claim Construction3 To make a determination as to whether the claims at issue are directed to a patent-ineligible concept (or not), in accordance with step one of the 3 “[T]he important inquiry for a § 101 analysis is to look to the claim.” Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that ‘claim construction is not an inviolable prerequisite to a validity Appeal 2020–005565 Application 15/611,326 7 Alice framework, we need to first accurately articulate what it is that the claims are directed to. The Examiner and the Appellant have two different views on this. The correct view will be the one that aligns with the claims, properly construed. In that regard, we consider the claim as a whole4 giving it the broadest reasonable construction5 as one of ordinary skill in the art would have interpreted it in light of the Specification6 at the time of filing. All the claims call for a “cognitive SPI broker.” It is integral to the claimed process because all the steps are performed by it. The claim does not define want it is; that is, in structural terms. At best, it is described in functional terms; that is, it performs “receiving,” “identifying,” “constructing,” “sending,” “receiving,” “using,” and, “sending” steps. Claim 1 does not, otherwise, give one reading the claim any insight into determination under § 101.’ However, the threshold of § 101 must be crossed; an event often dependent on the scope and meaning of the claims.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48 (Fed. Cir. 2015). 4 “In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.” Diamond v. Diehr, 450 U.S. 175, 188 (1981). 5 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, footnote 14 (“If a claim, under its broadest reasonable interpretation.”). 6 “First, it is always important to look at the actual language of the claims. . . . Second, in considering the roles played by individual limitations, it is important to read the claims ‘in light of the specification.’” Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir. 2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others. Appeal 2020–005565 Application 15/611,326 8 what “a cognitive sensitive personal information (SPI) broke” entails, making it difficult to ascertain the claim’s scope. Turning to the Specification, “a cognitive SPI broker” is described several places, notably the following: • Para. 21: “The cognitive system comprises of a cognitive SPI broker that acts as a secure intermediary between service providers and customers, allowing a customer to transact with the service provider without revealing their SPI to the service provider throughout the life cycle of the business transactions. With reference to the above- mentioned example, the cognitive system enables the customer to make payments without revealing financial information to the on-line retail merchant”; • Para. 23: “in a first embodiment, the cognitive SPI broker searches a taxonomy of the SPI stored for the customer in a user registry for a location …”; • Para. 24: “In a second embodiment, the cognitive SPI broker searches a user registry for a location …”; and, • Para. 49: “Cognitive SPI broker 302 comprises cognitive reasoning engine 308, user registry 310, and SPI registration engine 312. Cognitive reasoning engine 308 is a lexical module that analyzes and processes queries and requests from service providers 316 received via service provider facing APIs 306. That is, cognitive reasoning engine 308 runs cognitive-based reasoning and decision making algorithms that act on those queries and requests. User registry 310 is a taxonomy of the SPI for all SPI owners 314 enrolled with Cognitive Appeal 2020–005565 Application 15/611,326 9 SPI broker 302 via a user enrollment process and device authorization process.” This last passage (para. 49) is apparently referring to Fig. 3 reproduced below: Fig. 3 “depicts a functional block diagram of a mechanism for secure sensitive private information dependent transactions in accordance with an illustrative embodiment.” Para. 11. The passages and Figure add to the difficulty in understanding what a “Cognitive SPI broker” is. As with the claims, some of the disclosures describe what the “Cognitive SPI broker” is intended to accomplish (paras. 21, 23, and 24), not what it is. Para. 49 provides more technical detail (i.e., it comprises “engine[s]”) but is an embodiment of the invention. The claimed process does not appear to limit the “Cognitive SPI broker” to that embodiment. To make matters even more confusing, the “engines” Appeal 2020–005565 Application 15/611,326 10 mentioned in para. 49 describe what the “cognitive SPI broker” comprises and are earlier described as not intended to be limiting of any particular implementation for accomplishing and/or performing the actions, steps, processes, etc., attributable to and/or performed by the engine. An engine may be, but is not limited to, software, hardware and/or firmware or any combination thereof that performs the specified functions including, but not limited to, any use of a general and/or specialized processor in combination with appropriate software loaded or stored in a machine readable memory and executed by the processor. Further, any name associated with a particular engine is, unless otherwise specified, for purposes of convenience of reference and not intended to be limiting to a specific implementation. Additionally, any functionality attributed to an engine may be equally performed by multiple engines, incorporated into and/or combined with the functionality of another engine of the same or different type, or distributed across one or more engines of various configurations. Para. 30. We understand that an objective of the invention is to “provide mechanisms for secure sensitive private information dependent transactions” (para. 16) and employing a “cognitive SPI broker” is essential in achieving that objective. But what is the “cognitive SPI broker”? Is it simply a concept, e.g., a mechanism for processing information? Or is it a generic computer system (see para. 30 (“a general … processor in combination with appropriate software”)) performing the recited “receiving,” “identifying,” “constructing,” “sending,” “receiving,” “using,” and, “sending” steps? Or is it something more than that as Appellant suggests. At this juncture, given nothing more than what is recited in the claims and the cited passages and Figure 3 from the Specification, we are unable to give the element “cognitive SPI broker” an ordinary and customary Appeal 2020–005565 Application 15/611,326 11 meaning. There is insufficient information to ascertain what the “cognitive SPI broker” of the claims is. The disagreement between the Examiner and the Appellant as to what the “cognitive SPI broker” is mirrors our own difficulty. The Examiner appears to view it as a generic computer system. See Ans. 6–7 (“general purpose hardware”). Appellant has a different view. See e.g., “an improved computer tool” (App. Br. 8). And yet the technology underlying the “cognitive SPI broker” which would help us understand the technological improvement over prior art process is never spelled out. We agree that the Specification provides support for the suggestion that the “cognitive SPI broker” provides an essential element in practicing the claimed method. See e.g., para. 21. But given no further technical details about the “cognitive SPI broker,” we cannot determine whether the claim element “cognitive SPI broker” is a generic computer system simply performing the recited “receiving,” “identifying,” “constructing,” “sending,” “receiving,” “using,” and, “sending” steps as the Examiner understands it to be, or, for example, more complex system, as Appellant suggests. Based on the present record, we are unable to resolve that dispute in any meaningful way. The Abstract Idea7 Since we are unable to ascertain what the “cognitive SPI broker” is, we are unable to give the claims a broadest reasonable construction (see 7 See Step 2A of the 2019 Revised 101 Guidance. Step 2A determines “whether a claim is ‘directed to’ a judicial exception,” such as an abstract idea. Id. at 53. Step 2A is a two prong inquiry. Appeal 2020–005565 Application 15/611,326 12 above). Consequently, we cannot proceed to identify those limitations that recite an abstract idea.8 Knowing what the “cognitive SPI broker” consists of is crucial to determining whether the claimed subject matter is directed to an abstract idea; that is to say, whether the claimed subject matter falls within the enumerated groupings of abstract ideas; that is, “Mathematical concepts,” “Certain methods of organizing human activity,” and “Mental processes.” 9 Specific asserted technological improvements, when claimed, can render claimed subject matter not directed to an abstract idea.10 Cf. McRO, 8 See Prong One (a) of Step 2A of the 2019 Revised 101 Guidance. “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea . . . .” Id. at 54. 9 See Prong One [“Evaluate Whether the Claim Recites a Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To determine whether a claim recites an abstract idea in Prong One, examiners are now to . . . (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section 1 of the [2019 Revised 101 Guidance].” Id. at 54. 10 See Prong Two (“If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application”) of Step 2A of the 2019 Revised 101 Guidance. “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 2019 Revised 101 Guidance 54. One consideration, implicated here, that is “indicative that an additional element (or combination of elements) may have integrated the exception into a practical application” (id., at 55) is if “[a]n additional Appeal 2020–005565 Application 15/611,326 13 Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (“When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3–D animation techniques.”). In that regard, we can consider specific asserted technological improvements in the step one analysis of the Alice framework. This is consistent with the case law. See Ancora Techns., Inc. v. HTC America, Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018) (“We have several times held claims to pass muster under Alice step one when sufficiently focused on such improvements.”) Nonetheless, as we have explained, without an understanding of what the “cognitive SPI broker” technically entails, we are unable to ascertain a broadest reasonable construction for the claims. That inability prevents us from accurately articulating what the claims are directed to and then reaching a determination as to whether what the claims are directed to be a patent-ineligible concept under step one of the Alice framework. See TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1294 (Fed. Cir. 2020) (“The Step 1 “directed to” analysis called for by our cases depends on an accurate characterization of what the claims require and of what the patent asserts to be the claimed advance. The accuracy of those characterizations is crucial to the sound conduct of the inquiries into the problem being addressed and whether the line of specificity of solution has been crossed.”) We do not reach step two of the Alice framework. element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” (id.). Appeal 2020–005565 Application 15/611,326 14 For the foregoing reasons, we are not placed in a position to do a meaningful review of this rejection. The rejection of claims 1, 6, 8, 13, 15, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Coulter and Barbir. The rejection of claims 2, 9, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Coulter, Barbir, and Ortiz. The rejection of claims 3, 4, 10, 11, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Coulter, Barbir, Yang, and Ortiz. Claims 1–4, 6, 8–11, 13, 15–18, and 20 are indefinite for the reasons discussed below. Accordingly, the rejections of claims 1, 6, 8, 13, 15, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Coulter and Barbir; claims 2, 9, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Coulter, Barbir, and Ortiz; and, claims 3, 4, 10, 11, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Coulter, Barbir, Yang, and Ortiz must fall, pro forma, because they necessarily arer based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). NEW GROUND OF REJECTION Claims 1–4, 6, 8–11, 13, 15–18, and 20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. The claims and the Specification fail to inform those skilled in the art about the scope of the “cognitive SPI broker” with any reasonable certainty. Appellant provides no definition for the “cognitive SPI broker” either in the Appeal 2020–005565 Application 15/611,326 15 briefs or the Specification. The “cognitive SPI broker” has no ordinary meaning, and its scope is unclear based on the intrinsic record. At most, the briefs and Specification describe the “cognitive SPI broker” in terms of its functions – e.g., “[t]he cognitive system comprises of a cognitive SPI broker that acts as a secure intermediary between service providers and customers, allowing a customer to transact with the service provider without revealing their SPI to the service provider throughout the life cycle of the business transactions.” Spec., para. 21. This is a result-oriented description that gives no insight into what the “cognitive SPI broker” is. It insufficiently circumscribes the scope of the “cognitive SPI broker.” Appellant argues that said “cognitive SPI broker” is “an improved computer tool”. App. Br. 8. This suggests that there are technical details associated with the “cognitive SPI broker” that render it more than a general purpose computer. However, because the present record provides insufficient insight into what those technical details are, the claim phrase “cognitive SPI broker” remains vague. “[U]nder the broadest reasonable interpretation when read in light of the Specification, [the phrase “cognitive SPI broker”] is vague and unclear, and a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language.” Ex parte McAward, 2015–006416 (PTAB Aug. 25, 2017) (precedential). Accordingly, claims 1–4, 6, 8–11, 13, 15–18, and 20 are rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim Appellant’s invention. Appeal 2020–005565 Application 15/611,326 16 CONCLUSION The decision of the Examiner to reject claims 1–4, 6, 8–11, 13, 15–18, and 20 is reversed and a new rejection is entered as a new ground of rejection. More specifically: The decision of the Examiner to reject claims 1–4, 6, 8–11, 13, 15–18, and 20 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter is reversed pro forma. The rejections of claims 1, 6, 8, 13, 15, and 20 under 35 U.S.C. § 103 as being unpatentable over Coulter and Barbir; claims 2, 9, and 16 under 35 U.S.C. § 103 as being unpatentable over Coulter, Barbir, and Ortiz; and, claims 3, 4, 10, 11, 17, and 18 under 35 U.S.C. § 103 as being unpatentable over Coulter, Barbir, Yang, and Ortiz are reversed pro forma. Claims 1–4, 6, 8–11, 13, 15–18, and 20 are newly rejected under 35 U.S.C. § 112(b). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–4, 6, 8– 11, 13, 15–18, 20 101 Eligibility 1–4, 6, 8– 11, 13, 15–18, 20 1, 6, 8, 13, 15, 20 103 Coulter, Barbir 1, 6, 8, 13, 15, 20 2, 9, 16 103 Coulter, Barbir, Ortiz 2, 9, 16 3, 4, 10, 11, 17, 18 103 Coulter, Barbir, Ortiz 3, 4, 10, 11, 17, 18 Appeal 2020–005565 Application 15/611,326 17 112(b) Indefiniteness 1–4, 6, 8–11, 13, 15– 18, 20 Overall Outcome 1–4, 6, 8– 11, 13, 15–18, 20 1–4, 6, 8–11, 13, 15– 18, 20 NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 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. . . . (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). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation