PN II, Inc.

Patent Trials and Appeals Board

Oct 29, 2020

2020001415 (P.T.A.B. Oct. 29, 2020)

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.
15/884,690 01/31/2018 Robert Patrick Broad 1297A.117USC3 8040
25215 7590 10/29/2020
The Dobrusin Law Firm P.C.
29 W. Lawrence Street
Suite 210
Pontiac, MI 48342
EXAMINER
FIGUEROA, LUZ ADRIANA
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
dobrusin_PAIR@firsttofile.com
patmail@patentco.com
rmasquelier@patentco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT PATRICK BROAD and JAY K. McDONALD
Appeal 2020-001415
Application 15/884,690
Technology Center 3600
Before DANIEL S. SONG, CHARLES N. GREENHUT, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 16–24, 26, and 28–36. See Non-Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and ENTER NEW GROUNDS OF REJECTION.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as PN II, Inc. Appeal Br.
2.
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Application 15/884,690
2
CLAIMED SUBJECT MATTER
The claims are directed to a window sill flashing. Claim 24,
reproduced below, is illustrative of the claimed subject matter:
1. A window sill flashing, comprising a first one-piece sill
flashing and a second one-piece sill flashing that are each a
continuous shaped structure and each include:
(i) a base having a substantially rectangular shape and a
front edge and at least one side edge;
(ii) a front flange projecting perpendicularly downward
from the front edge of the base;
(iii) at least one side flange having a side surface and a
front surface, wherein the side surface extends vertically from
the at least one side edge of the base and the front surface is
coplanar with the front flange and extends perpendicularly from
the side surface; and
wherein the first one-piece sill flashing and the second
one-piece sill flashing are each a vacuum formed unitary
structure consisting essentially of a thermoformed film including
polyvinyl chloride;
wherein the first one-piece sill flashing and the second
one-piece sill flashing are configured to partially overlap to
produce the window sill flashing having a length generally equal
to a width of a window opening; and
wherein the thermoformed film of both the first one-piece
sill flashing and the second one-piece sill flashing has a thickness
in the range of about 7.5 mils to 35 mils; and
wherein the base of both the first one-piece sill flashing
and the second one-piece sill flashing has a lower surface adapted
to be in direct contact with a bottom portion of the window
opening.
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3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Van Ausdall US 4,081,941 Apr. 04, 1978
Moffitt US 4,555,882 Dec. 03, 1985
Laska US 4,700,512 Oct. 20, 1987
Seelandt-Stasek US 5,653,072 Aug. 05, 1997
Restaino US 6,045,921 Apr. 04, 2000
Williams US 6,401,402 B1 June 11, 2002

REJECTIONS
Claims 1, 16, 18, 19, 21–23, 34–36 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Moffitt, Williams, and Laska. Non-Final
Act. 2.
Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Moffitt, Williams, Laska, and Seelandt-Stasek. Non-Final Act. 7.
Claim 20 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Moffitt, Williams, Laska, and Restaino. Non-Final Act. 8.
Claims 24, 28, 30–33 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Moffitt, Williams, and Van Ausdall. Non-Final Act. 9.
Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Moffitt, Williams, Van Ausdall, and Restaino. Non-Final Act. 13–14.
Claim 29 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Moffitt, Williams, Van Ausdall, and Seelandt-Stasek. Non-Final Act.
14.
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4
OPINION
Appellant’s Briefing and the Examiner’s Response
Appellant provides a lengthy briefing in this case in response to an
Office Action that is not particularly lengthy or complex. Appellant’s
arguments are routinely repeated and are frequently not germane to the
position actually set forth by the Examiner. Arguments must address the
Examiner’s action. 37 C.F.R. § 41.37(c)(1)(iv)(“The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant”).
The Examiner has thoroughly and comprehensively addressed all the
issues raised in this appeal. We agree with the Examiner’s findings, analysis,
and conclusions, with two exceptions related to claims 17 and 36, which we
discuss below. Accordingly, where not otherwise stated, we adopt the
Examiner’s factual findings, reasoning, and legal conclusions (Non-Final
Act. 2–14; Ans. 3–13) as our own. See, e.g., In re Paulsen, 30 F. 3d 1475,
1478 n. 6 (Fed. Cir. 1994). Concerning the rejections affirmed on the
grounds set forth by the Examiner, we include the following discussion
regarding issues related to those rejections only for emphasis.
As mentioned above, many issues are raised several times in
Appellant’s briefing. For the sake of brevity and conciseness, we organize
this opinion according to the issues raised and indicate to which claims and
arguments in the Brief those issues relate.

Overview of the rejections
Moffitt is the base or primary reference applied in all the rejections
before us. Non-Final Act. 2–14. The Examiner relies on, without more, “the
base 11a, the depending flange 12a, the upstanding flange 13a, and the end
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flange 15a [(including walls 16a, 17a)] constitut[ing] a unitary, one-piece
construction and [] made of a molded ABS plastic” of moisture guard 10a as
being the recited “first one-piece sill flashing” of independent claims 1, 24,
and 36. Non-Final Act. 3, 7, 9–10; Ans. 3 (citing Moffitt col. 2, ll. 57–60).
Similar structure is disclosed regarding Moffitt’s moisture guard 10b and
relied upon by the Examiner as the recited “second on-piece sill flashing.”
Non-Final Act. 3, 7, 9–10.
The Examiner relies on Williams to demonstrate that overlapping
moisture guards or flashing elements, like those of Moffitt, and taping their
overlapping joints was a technique well-known in the art. Non-Final Act. 4,
7, 10 (citing Williams Fig. 7; col. 5, ll. 35–38).
The Examiner relies on either Williams (claim 24) or Laska (claims 1
and 36) for the thickness ranges recited. Non-Final Act. 4–5, 7 (citing Laska
col. 2, ll. 34–36); Non-Final Act. 11 (citing Williams col. 3, ll. 23–26). The
Examiner relies on either Laska (claims 1 and 36) or Van Ausdall (claim 24)
to demonstrate that it was well-known in the art to employ polyvinyl
chloride (PVC). Non-Final Act. 4–5, 7 (citing Laska col. 2, ll. 34–36); Non-
Final Act. 11 (citing Van Ausdall col. 2, ll. 1–5). The Examiner also relies
on Van Ausdall with regard to process claim 24 to demonstrate that PVC is a
well-known alternative to Acrylonitrile butadiene styrene (ABS) and that it
was well-known to vacuum form such thermoplastics. Non-Final Act. 11
(citing Van Ausdall col. 2, ll. 1–5).
Seelandt-Stasek is relied upon by the Examiner to demonstrate, with
regard to claim 17 that sill flashings lacking rear walls were known in the
art. Non-Final Act. 8 (citing Seelandt-Stasek Figs. 1, 2).
Restanio is relied upon by the Examiner to demonstrate that the use of
a silicone coating as a release agent between stacked plastic products was
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6
well-known in the art. Non-Final Act. 8, 14 (both citing Restanio col. 4, ll.
10–13).
Appellant repeatedly emphasizes that the Examiner “concedes”
certain references are lacking aspects of the claimed subject matter. Appeal
Br. 19, 20, 22, 24, 26–29, 31–33, 36–38, 40–42, 44, 46–47, 51, 53–55, 56,
57, 59, 60, 61, 63, 65. Such concessions are neither unusual nor do they
demonstrate error in a rejection predicated on a combination of reference
teachings. “Non-obviousness cannot be shown by attacking references
individually when the rejection is predicated upon the teachings of a
combination of references.” See In re Merck & Co. Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (citation omitted).
Appellant repeatedly makes essentially naked assertions that the
Examiner has failed to provide an adequate motivation for the proposed
combinations. Appeal Br. 22, 24, 26, 28, 30–33, 40, 43, 45, 46, 48, 53, 56,
57, 60, 62, 63, 65. With claim 17 being the exception, we think the
Examiner has adequately articulated sufficient reasoning with rational
underpinnings to support the Examiner’s proposed combinations.
Appellant’s arguments do not adequately address and therefore do not
apprise us of any shortcomings in the specific reasoning set forth by the
Examiner. Some of Appellant’s arguments indicate the Examiner did not
sufficiently explain “why or how” to implement a proposed modification,
such as taping a joint. Appeal Br. 32. Such arguments fail to attribute the
requisite level of skill to the hypothetical artisan. In re Sovish, 769 F. 2d
738, 743 (Fed. Cir. 1985) (“This argument presumes stupidity rather than
skill.”). For example, it would have been readily apparent from the cited
references “how and why” to apply tape to a joint to secure pieces together
and achieve a seal.
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7

The Metallic Facing
Appellant initially and repeatedly argues that the presence of Moffitt’s
metallic facings 20a, 20b undermines the Examiner’s rejection because
Moffitt’s moisture guard ceases to be a “unitary structure.” Appeal Br. 18–
19. As noted above, and emphasized by the Examiner, the Examiner does
not rely on any aspect of Moffitt’s metallic facings 20a, 20b as being
components of the structure relied upon by the Examiner as the recited first
and second “one-piece sill flashing[s].” Ans. 3, 5, 7. Accordingly,
Appellant’s arguments do not address the Examiner’s action. The claims use
open-ended transitional phrases and thus do not preclude the presence of
additional structure apart from that affirmatively recited. MPEP § 2111.03.
The only exception to that is the “consisting essentially of” language recited
with respect to the sill flashings in particular. This language may mean that
the makeup of the sill flashing is free from unrecited components materially
affecting its characteristics. Id. However, such language does not preclude
the sill flashing from being included as part of some larger encompassing
combination.
An issue that could have been raised here but does not appear to have
been raised, is whether it was reasonable for the Examiner to regard only the
unitary polymeric portion relied upon as the “sill flashing.” In any case, we
would answer that question in the affirmative. At times Moffitt refers to
metallic facings as merely “fixed to” the base of the moisture guard (e.g.,
col. 2, ll. 53–54) and at times Moffitt seems to refer to it as a component of
the “moisture guard” (col. 3, ll. 52–53). However, we are not apprised of any
reasons why whichever structure Moffitt regards as the overall “moisture
guard” must be the same structure the Examiner equates to the recited “sill
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Application 15/884,690
8
flashing[s].” We are not apprised as to why it is unreasonable for the
Examiner to regard only Moffitt’s polymeric elements, be them a component
of, or fixed to moisture guards 10a, 10b, as the recited “sill flashing[s].” As
the Examiner points out, reading Moffitt as a whole indicates the metallic
facings 20a, 20b are optional components for improved durability. Ans. 3.
This notion is reinforced by the fact that, although depicted in Moffitt’s
preferred embodiment, those metallic facings do not form part of Moffitt’s
claimed “moisture guard” until Moffitt’s dependent claim 5.
For the foregoing reasons, Appellant’s arguments directed to Moffitt’s
metallic facings, and the various reasons they supposedly undermine the
Examiner’s rejections (Appeal Br. 18–19, 23–34, 36, 41–45, 48, 50, 54–55,
57, 59–63), do not demonstrate error in the Examiner’s rejections, because
such arguments do not actually address the grounds for rejecting the claims
actually set forth by the Examiner.

vacuum formed; thermoformed
With regard to machine or apparatus claims 1 and 36, the Examiner
correctly identifies the “vacuum-formed” and “thermoformed” limitations as
product-by-process type limitations and correctly directs Appellant’s
attention to MPEP § 2113 and cases cited therein. Although claim 24 is
directed to a process, “thermoforming” is used only as an attribute of the
film material used to vacuum form the sill flashing and is not recited as a
manipulative step in a manner similar to vacuum-forming. Thus, although
MPEP § 2113 as cited by the Examiner may not cover this specific scenario,
the Examiner reasonably regarded the film of claim 24 as being a
“thermoforming film” by virtue of its ability to be “formed by a
thermoforming process.” Non-Final Act. 10.
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Application 15/884,690
9
Vacuum-forming and thermoforming are not limitations that carry
with them a specific structural meaning associated with the process by which
such structures are formed. The particular type of molding used to arrive at a
product may not suffice to patentably distinguish over the prior art directed
to a structurally materially identical product even if that prior-art product
was formed using a different molding technique. See, e.g., In re Dike, 394
F.2d 584, 589 (CCPA 1968) (a “blow-molded” one-piece bottle was a
product-by-process limitation that did not, despite immaterial artifacts of the
process, such as a line left by the mold, distinguish the claimed product from
that of the prior-art.). Thus, the Examiner is correct in that the appropriate
question with regard to claims 1 and 36 is whether the process recitations
have any implicit material effect on the ultimate structure of the claimed
subject matter actually claimed. Non-Final Act. 3, 7.
Appellant contends, citing paragraph 272 of the Specification that
vacuum forming imparts distinct structural characteristics including having
“flanges substantially perpendicular to the base and allowing the material to
have a minimum thickness.” Appeal Br. 19–20.
Appellant does not apprise us of, and there does not appear to be any
reason, substantially perpendicular flanges could not be achieved through
other processes. Indeed, Moffitt and several other references of record
clearly illustrate that resultant structure could be achieved with little
discussion of the process for achieving it other than through some
conventional generic form of molding.

2 Citations to the Specification refer to the replacement Specification of Apr.
23, 2018.
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10
“[A]llowing the material to have a minimum thickness” may be an
advantage of the vacuum forming process itself but it is not an inherent or
implicit artifact having patentable significance that will necessarily be found
in the claimed structure as a result of performing that process. Indeed, the
claims expressly recite a thickness range of “7.5 mils to 35 mils” which is
significantly more encompassing than about 7.5 mils.[3] Thus, it cannot
reasonably be said on the record before us that a particular thinness such as
“as thin as 7.5 mils” is an inherent or implicit structural result of the vacuum
forming process.
Appellant, as best as we can understand, appears to argue that the
thermoforming technique allows for the use of PVC. Appeal Br. 20–21
(citing Spec. para. 25). However, Laska, cited by the Examiner concerning
the apparatus claims, demonstrates that it was well-known to make flashings
from PVC films. Laska col. 1, ll. 35–43. Although not expressly mentioned
by Laska, one skilled in the art would understand that the well-known
production techniques described by Laska (Laska col. 3, ll. 26–29) for
forming PVC would often involve the application of heat because PVC is a
notoriously well-known thermoplastic. With regard to the process claims,
the same must be said for Van Ausdall’s thin-walled flat sheet, or “film,” of
PVC or ABS material (Van Ausdall col. 2, ll. 1–4), making it reasonably
characterized as a “thermoforming film.” A skilled artisan must be presumed
to know something about the art apart from what the references expressly
disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).

3 It is noted that paragraph 27 of the Specification as originally filed was
corrected to replace millimeters (mm) with mils. Spec. Amnd. Apr. 23,
2018.
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11
free of a rear wall projecting from a rear edge of the base
There is no dispute that Seelandt-Stasek illustrates a rear-wall-free
structure according to claim 17. However, as Appellant correctly points out,
Moffitt and Williams attribute a significant benefit of preventing or
inhibiting water ingress to the rear walls. Appeal Br. 46 (citing Moffitt col.
2, ll. 40–45; Williams col. 3, ll. 59–65). The Examiner is correct that these
teachings of Moffitt and Williams do not teach away from the omission of a
rear wall because they do not discredit or criticize such an arrangement. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). However, the absence of a
teaching away does not absolve the Examiner from articulating adequate
reasoning with rational underpinnings for making the proposed modification.
In that respect, the Examiner only states:
it would have been an obvious matter of design choice to one of
ordinary skill in the art before the effective filing date of the
claimed invention to modify the sill flashing of Moffitt, Williams
and Laska to be free of a rear wall as taught by Seelandt-Stasek
in order to provide a sill flashing that can be placed on an exterior
window sill.
Non-Final Act. 8.
First, it is not clear how the absence of a rear wall creates the ability to
“be placed on an exterior window sill”; as both Moffitt and Williams
demonstrate, flashings having rear walls can be used on exterior window
sills. Second, while minor differences may be “obvious matters of design
choice” such rationale is typically reserved for the situation where a designer
or builder must choose from available options that do not result in
significant functional differences. In re Chu, 66 F. 3d 292, 299 (Fed. Cir.
1995) (citing In re Gal, 980 F.2d 717 (Fed.Cir.1992)). Accordingly, we do
not think the Examiner has carried the burden of establishing unpatentability
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12
with regard to claim 17 on the grounds presently set forth by the Examiner
for our review.
Nevertheless, on the record presently before us we are in agreement
with the Examiner’s ultimate conclusion. As Appellant points out, the
primary concern of Seelandt-Stasek is protecting the window sill from
damage. Appeal Br. 46–47. Thus, if one wished to use the sill flashing
primarily for this purpose as opposed to the prevention of water ingress, in
an arid climate for example, it would have been obvious to omit the rear wall
of the flashing. This would have the predictable and obvious benefit of
providing a flatter surface on which to set items or pass items through the
window and could potentially save costs associated with fabricating a more
complex and material-consuming structure having a rear wall. Accordingly,
we sustain the Examiner’s rejection of claim 17. However, as we have
supplemented the Examiner’s findings and reasoning, we designate our
affirmance of claim 17 as being based on a “new ground” of rejection
pursuant to 37 C.F.R. § 41.50(b) so as to afford Appellant the procedural
options associated therewith.

housewrap
The “housewrap” limitation is present in claims 35 and 36. However,
as claim 35 depends from claim 1 and claim 1 is directed only to “[a]
window sill flashing” and does not (as is the case with claim 36) include a
wall of a building, it is not apparent how the housewrap recited in claim 35
has any effect whatsoever on the scope of claim 35. This is because the
claimed flashing structure does not appear to be influenced in any way by
whether the window opening of claim 1, recited only for defining the width
of the flashing pieces, does or does not include a housewrap. In any case,
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Appellant elected to present arguments only with regard to claim 36 and we
therefore consider any arguments that could have been made with respect to
the housewrap recited in claim 35 as waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant makes of record evidence in the form of the book “Exterior
Siding, Trim and Finishes” that indicates the terms “paper flashing” and
“housewrap” are not synonymous. Appeal Br. 35 Appellant contends the
“paper flashing” of Moffitt refer to the “building paper” described in
Exterior Siding, Trim and Finishes, which treats building paper and
housewrap as distinct types of house coverings. Appeal Br. 35. The
Examiner does not address this evidence in the Examiner’s Answer, and
maintains that the recited claim term “housewrap” encompasses Moffitt’s
paper flashing P. Ans. 9–10.
The uncontroverted evidence before us, namely Exterior Siding, Trim
and Finishes publication, favors Appellant’s contention that “housewrap”
does not encompass Moffitt’s paper flashing P. Further, while flashing P
would presumably cover at least a bottom portion of a window opening in a
fashion similar to that illustrated on Moffitt’s door, when Moffit’s device is
applied to a window, as expressly suggested by Moffitt (col. 1, l. 50),
arguably there is also no teaching in Moffit to “cover an exterior wall.”
Appeal Br. 35.
The evidence supplied by Appellant, page 121 of Exterior Siding,
Trim and Finishes, remedies the aforementioned deficiencies by
demonstrating that it was well-known in the art to employ “housewrap”
material. It would have been obvious to wrap a wall and window sill in such
paper in order to achieve the stated, and thus predicable, result of providing
an additional barrier to moisture. It is noted that the cited page discusses
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potential failure modes of housewrap. However, the page also discusses
remedies, such as appropriate breathing spacing, and attributes the cause of
such failures only to specific, surfactant-containing siding materials. Thus,
we do not regard the article as discouraging the use of housewrap in general,
but rather encouraging its use only in proper situations and in conjunction
with compatible materials and techniques—matters that can be left for
resolution by the skilled artisan.
Accordingly, for the foregoing we sustain the Examiner’s rejection of
claim 36. However, as we have supplemented the Examiner’s findings and
reasoning, we designate our affirmance of claim 36 as being based on a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b) so as to afford
Appellant the procedural options associated therewith.

Restaino, Van Ausdall
It is clear on the record before us that Restanio demonstrates that it
was well-known to use a silicone release coating to facilitate separation of
stacked plastic components—the same purpose to which the coating of
Appellant’s claim 20 is directed. Non-Final Act. 8, 14 (both citing Restanio
col. 4, ll. 10–13); Spec. para. 25. Appellant argues:
[t]he Office Action has presented absolutely no reasoning as to
why a skilled artisan in building construction, specifically water
prevention at door and window openings, looking to resolve
challenges associated with water intrusion would refer to the
barrier of Restaino which in building construction is useful only
[sic as] a sound barrier.
Appeal Br. 48. First, Appellant’s assessment that Restanio is “useful only
[as] a sound barrier” is plainly incorrect. Restanio clearly states:
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This invention is directed to a composite, high density plastic
sheet material used in the manufacture of a water, dust, wind, air
and sound barrier and method of making same.
Col. 1, ll. 11–14.
Second, and with respect to both Restanio, and the process claims
rejected based on Van Ausdall (see Appeal Br. 57–59), the skilled artisan
would be well aware that the scope of products that can be formed of plastic
is exceptionally broad and we are not apprised of any reasons why, nor do
we think it is reasonable to conclude that, a skilled artisan would confine the
scope of art relevant to plastic product fabrication based on the intended use,
or field of use, of the final product. Plastic products having similar
manufacturing processes could very well have very different uses.
CONCLUSION
The Examiner’s rejections are AFFIRMED. However, we designate
our affirmance of the rejection of claims 17 and 36 as being based on new
grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Grounds
1, 16, 18,
19, 21–
23, 34–36
103(a) Moffitt, Williams,
Laska
1, 16, 18,
19, 21–
23, 34–36
36
17 103(a) Moffitt, Williams,
Laska, Seelandt,
Stasek, Moffitt,
Williams
17 17
20 103(a) Moffitt, Williams,
Laska, Restaino
20
24, 28,
30–33
103(a) Moffitt, Williams
and, Van Ausdall
24, 28,
30–33

26 103(a) Moffitt, Williams,
Van Ausdall,
Restaino, Moffitt,
Williams,
26
29 103(a) Moffitt, Williams,
Van Ausdall,
Seelandt, Stasek,
Moffitt, Williams,
29
Overall
Outcome
1, 16–24,
26, 28–36
17, 36

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

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).
AFFIRMED; NEW GROUND 37 C.F.R. § 41.50(b)