Ex Parte Aabye et al

Patent Trial and Appeal Board

Mar 28, 2018

12563410 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/563,410 09/21/2009 Christian Aabye
66945 7590 03/30/2018
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
79900-758390 (043910US) 6347
EXAMINER
MILEF, ELDA G
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
ipefiling@kilpatricktownsend.com
EDurrell@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN AABYE,
HAO NGO, and
DAVID WILLIAM WILSON
Appeal2016-000138
Application 12/563,410 1
Technology Center 3600
Before HUBERT C. LORIN, SHEILA F. McSHANE, and
MATTHEWS. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christian Aabye, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-7, 9-12, 19-27, and 30-34. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
1 The Appellants identify Visa International Service Association as the real
party in interest. Appeal Br. 3.
Appeal 2016-00013 8
Application 12/563,410
SUMMARY OF DECISION
We AFFIRM and denominate the affirmance as a NEW GROUND
OF REJECTION.
THE INVENTION
Claim 12, reproduced below, is illustrative of the subject matter on
appeal.
12. A method of preventing unauthorized access to a payment
application installed on a mobile payment device, comprising:
determining, by the mobile payment device, that a user is
attempting to utilize the payment application;
in response to determining that the user is attempting to utilize
the payment application, requesting the user to input user
identification data;
receiving the user identification data from a data input device
that is part of the mobile payment device;
verifying that the received user identification data is valid;
using a trusted source controller or application programming
interface (API) to obtain authentication data from a secret data store in
response to verifying that the received user identification data is valid;
providing the authentication data obtained from the secret data
store to the payment application;
authenticating the data input device of the mobile payment
device as a trusted data input device at least in part by verifying the
validity of the authentication data;
providing the user with access to the payment application when
both the authentication data and the user identification data are valid;
and
preventing the user from accessing the payment application
when either the authentication data or the user identification data is
not valid.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ritter
Labrou
Kagan
De we
US 6,934,689 B 1
US 2005/0187873 Al
US 2007/0078761 Al
WO 2007/145540 A2
The following rejections are before us for review:
Aug. 23, 2005
Aug. 25, 2005
Apr. 5, 2007
Dec. 21, 2007
1. Claims 1-7, 9-12, 19-27, and 30-34 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
2. Claims 1-7, 9, 11, 12, 19, 21-24, 26, 27, and 32-34 are rejected under
35 U.S.C. § 102(b) as being anticipated by Labrou.
3. Claims 10, 20, and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Labrou and Ritter.
4. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Labrou and Kagan.
5. Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Labrou and Dewe.
ISSUES
Did the Examiner err in rejecting claims 1-7, 9-12, 19-27, and 30-34
under 35 U.S.C. § 101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1-7, 9, 11, 12, 19, 21-24, 26,
27, and 32-34 under 35 U.S.C. § 102(b) as being anticipated by Labrou?
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Did the Examiner err in rejecting claims 10, 20, and 25 under 35
U.S.C. § 103(a) as being unpatentable over Labrou and Ritter?
Did the Examiner err in rejecting claim 30 under 35 U.S.C. § 103(a)
as being unpatentable over Labrou and Kagan?
Did the Examiner err in rejecting claim 31under35 U.S.C. § 103(a)
as being unpatentable over Labrou and Dewe?
ANALYSIS
The rejection of claims 17, 9--12, 19--27, and 30-34 under 35 US.C. § 101
as being directed to non-statutory subject matter.
The Appellants argued these claims as a group. See Reply Br. 3-8.
(There are separate headings for claims 12, 22, and 30 but the only argument
presented is that "Appellant submits [the claims are] patent eligible for
reasons similar to those discussed above [re claim 1]." Appeal Br. 13.) We
select claim 1 as the representative claim for this group, and the remaining
claims 2-7, 9-12, 19-27, and 30-34 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under 35
U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined the claims are "directed to
authentication of a user accessing a payment application which is a
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fundamental economic practice and thus an abstract idea." Final Act. 2.
The Answer repeats much of what claim 1 recites and then characterizes that
as a concept to which the claims are directed to, adding that "[t]his idea is
similar to the basic concept of comparing new and stored information and
using rules to identify options found to be an abstract idea by the courts, e.g.,
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950
(Fed. Cir. 2014)." Ans. 3--4.
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72-
73).
In that regard, the Examiner determined that
[ t ]he claim( s) does/ do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the claims are directed to an abstract idea with additional
generic computer elements that do not add meaningful limitations to
the abstract idea because they would be routine in any computer
implementation.
Final Act. 2. The Answer says about the same, albeit again repeating much
of what claim 1 recites. Ans. 3.
Claim 1 defines a mobile payment device. According to claim 1, said
device comprises (a) "a processor programmed to execute a set of
instructions"; (b) "a payment application installed in the mobile payment
device"; (c) "a memory"; and (d) "[a] set of instructions stored in the
memory [to be] executed by the processor [to] cause the mo bile payment
device [to perform functions]." These four elements, per se, are well known
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and conventional. This is evidenced by the background discussion in the
Specification with respect to consumer payment devices "used by millions
of people worldwide to facilitate various types of commercial transactions"
. " " h" s 2 9 via, e.g., smart c 1ps. pee., paras. - .
The invention lies not in the individual processor, payment
application, memory, or instructions per se of the claimed device, or their
ordered combination as claimed, but in the specific instructions that make up
the "set of instructions" that claim 1 recites.
The specific instructions that make up the "set of instructions" that
claim 1 recites perform two functions: (1) "[verification that a] received user
identification data is valid" and (2) "[authentication of] a data input device
of a mobile payment device as a trusted data input device at least in part by
verifying the validity of the authentication data." Claim 1.
With respect to (1 ), this is achieved by
determin[ ing] that a user is attempting to utilize the payment
application installed in the mobile payment device;
in response to determining that the user is attempting to utilize the
payment application, request[ing] the user to input user identification
data;
receiv[ing] the user identification data from a data input device that is
part of the mobile payment device; [and]
verify[ing] that the received user identification data is valid.
Claim 1. This verification scheme reasonably broadly covers the
commonplace input and validation of one's user identification (ID) and
password before an application can be accessed. See Spec. para. 8.
If (1) is successfully accomplished, then (2) is performed.
With respect to (2), this is achieved by
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obtain[ing] authentication data from a secret data store [via a trusted
source controller or application programming interface (API)];
provid[ing] the authentication data obtained from the secret data store
to the payment application; [and,]
verifying the validity of the authentication data [, thereby
authenticating the data input device of the mobile payment device as a
trusted data input device].
Claim 1.
This verification scheme (2) calls for the use of a "trusted source
controller or application programming interface ( API)." Controllers/ AP Is
are not disclosed to be anything other than conventional software performing
the steps as claimed. See Spec. para. 49. This scheme calls for using such
known elements to obtain authentication data from a "secret data store" and
then to provide said data to the payment application. Then the
authentication data is validated.
If ( 1) and (2) are successful, then "the user [gains] access to the
payment application" (claim 1 ). Otherwise, access is denied.
In effect, claim 1 combines two authentication schemes, both of which
are required to be successfully validated in order to provide a user with
access to a payment application of a mobile payment device. The first
reasonably broadly covers the common verification of one's ID and
password. The second - which is conducted if validation of the first
authentication scheme is successful - obtains authentication data from a
"secret data store," provides it to the payment application, and validates it.
It is the addition of a second authentication which is the focus of the
claimed advance over the prior art. "The 'abstract idea' step of the inquiry
calls upon us to look at the 'focus of the claimed advance over the prior art'
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to determine if the claim's 'character as a whole' is directed to excluded
subject matter."' Affinity Labs of Texas v. DirectTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016); see also Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016). The Specification supports this view.
See e.g.,
[0006] In a typical payment transaction, data is sent from a point of
sale terminal to the Issuer to authenticate a consumer and obtain
authorization for the transaction.
[0007] A payment device may include a payment application which is
activated in order to enable a consumer to initiate or otherwise
conduct a payment transaction .... A potential security problem that
may arise with such payment devices is that an unauthorized person
may try to obtain access to the payment application or to transaction
data by using the wireless network communications ability of the
payment device to activate the payment application or to attempt to
access data stored in a secure memory of the payment device.
[0010] ... The invention prevents unauthorized access ... by
requiring that access control data be received from a trusted source,
such as a controller or application in charge of managing inputs from
a phone keypad, in order to activate the payment application or to
access stored data.
Step one. In our view, claim 1 is directed to a dual-authentication
scheme. The claim's character as a whole is directed to adding an additional
authentication to that commonly required to access an application.
Authentication, per se, is an abstract idea. See Easy Web Innovations,
LLC v. Twitter, Inc., 2016 WL 1253674 (E.D.N.Y. 2016), aff d, No. 2016-
2335 (Fed. Cir. 2017) ("receiving, authenticating, and publishing data" is an
abstract idea.) Claims that include authentication steps have been found
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patent ineligible. See e.g., Intellectual Ventures I LLC v. J. Crew Group,
Inc., 703 Fed. Appx. 991 (Mem.) (Fed. Cir. 2017); Front Row Technologies
LLC v. MLB Advanced Media, L.P., 2017 WL 4127880 (Mem.) (Fed. Cir.
2017); GoDaddy.com LLC v. RPost Communications Limited, 2017 WL
1829147 (Mem.) (Fed. Cir. 2017); Clarilogic, Inc. v. FormFree Holdings
Corporation, 2017 WL 992528 (Fed. Cir. 2017); Morsa v. Facebook, Inc.,
622 Fed.Appx. 915 (Mem.) (Fed. Cir. 2015); and, Prism Technologies LLC
v. T-Mobile USA, Inc., 696 Fed. Appx. 1014 (Fed. Cir. 2017).
Based on these earlier decisions it is reasonable to find dual-
authentication to be similarly an abstract idea. "[T]he decisional mechanism
courts now apply is to examine earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided." Amdocs (Israel) Limited v. Openet Telecom, Inc. 841
F.3d 1288, 1294 (Fed. Cir. 2016).
The Appellants disagree that claim 1 is directed to an abstract idea.
According to the Appellants, "it is self-evident that the claims are patent
eligible." Appeal Br. 10. According to the Appellants,
claim 1 recites "use a trusted source controller or application
programming interface (AP!) to obtain authentication datafrom a
secret data store in response to verifYing that the received user
identification data is valid; ... authenticate the data input device of the
mobile payment device as a trusted data input device at least in part
by verifYing the validity of the authentication data; ... provide the user
with access to the payment application when both the authentication
data and the user identification data are valid ... "
(Appeal Br. 1) which is "not [] a fundamental economic practice known
from the pre-Internet world, but instead recite[s] a solution to a problem
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necessarily rooted in computer technology" (Appeal Br. 10). According to
the Appellants,
authentication of a user accessing a payment application on a mobile
device is a concept that has only came into existence in recent years.
With advances in the computing power of mobile devices in recent
years, mobile devices can now be installed with a payment application
to allow the mobile device to be used as a payment instrument for
contactless transactions. As explained in the Summary of the Claimed
Subject Matter, one problem with such a mobile device is that an
unauthorized party may attempt to connect to the mobile device via
the wireless network capabilities of the mobile device and gain access
to the payment application. To prevent wireless hacking into the
payment application of the mobile device, the claims recite techniques
that utilize two levels of authentication that not only authenticates the
user based on user identification data, but also [the] authenticates the
data input element of the mobile device receiving the user
identification data.
Appellant submits that preventing wireless hacking into a
mobile device is not a concept directed to a fundamental economic
practice, but is instead a concept inextricably tied to computer
technology arising in the realm of wireless computer networks.
Appeal Br. 9. The Appellants also argue that "the claims recite a very
specific way of preventing access to a payment application that clearly do
not seek to preempt others from performing the alleged abstract idea of
authenticating a user accessing a payment application using other
techniques." Appeal Br. 10.
The argument is unpersuasive because the claim is more broadly
directed to dual-authentication.
The Appellants' pre-emption argument confuses the pre-emption
concern with levels of abstraction. "What matters is whether a claim
threatens to subsume the full scope of a fundamental concept, and when
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those concerns arise, we must look for meaningful limitations that prevent
the claim as a whole from covering the concept's every practical
application." CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here the argued-over "very
specific way of preventing access to a payment application" (Appeal Br. 10)
simply describes the dual-authorization abstract idea at a lower level of
abstraction. It does not render the dual-authorization abstract idea to which
the claim is directed to any less an abstract idea.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted with
every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather, the
animating concern is that claims should not be coextensive with a
natural law, natural phenomenon, or abstract idea; a patent-eligible
claim must include one or more substantive limitations that, in the
words of the Supreme Court, add "significantly more" to the basic
principle, with the result that the claim covers significantly less. See
Mayo 132 S. Ct. at 1294. Thus, broad claims do not necessarily raise
§ 101 preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015) ("[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.").
Since we find the claimed subject matter covers patent-ineligible
subject matter, the pre-emption concern is necessarily addressed. "Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, []preemption concerns are fully addressed and
made moot." Ariosa Diagnostics, 788 F.3d at 1379.
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Step two. The Appellants argue that
[i]n the present case, Appellant submits that the claims are
patent eligible under the second part of the Mayo test, because the
claims, as a whole, improve another technology or technical field as
well as improve the functioning of the computer itself. . . . Preventing
unauthorized access to an application installed on a mobile device is a
computer security related concept, and thus the claimed techniques
provide improvements to technical field of computer security by
mitigating wireless hacking of the application installed on a mobile
device. Furthermore, because the claimed techniques enhances the
security protection of the mobile device, the claims also improve the
functioning of the mobile device itself by making the application
installed on the mobile device more secure and less susceptible to
unauthorized access.
Appeal Br. 11-12.
As we already stated, claim 1 is directed more broadly to dual-
authentication and is not limited to overcoming wireless hacking. The
claimed technique does not provide improvements in the technical field of
computer security by mitigating wireless hacking of the application installed
on a mobile device. Rather, claim 1 more broadly covers a mobile payment
device performing dual-authentication.
There is no dispute that the elements of the claimed device which
practice the claimed dual-authentication scheme are conventional. Given the
intrinsic evidence, we do not see, and the Appellants do not explain, how the
mobile payment device is improved by practicing said scheme. The
individual elements are conventional and they perform as they are expected
to. Their ordered combination as claimed does no more than what they are
expected to do individually. Cf Prism Technologies LLC v. T-Mobile USA,
Inc., 696 Fed. Appx. 1014, 1017 (Fed. Cir. 2017):
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The asserted claims merely recite a host of elements that are
indisputably generic computer components. . .. Viewed as an ordered
combination, the asserted claims recite no more than the sort of
"perfectly conventional" generic computer components employed in a
customary manner that we have previously held insufficient to
transform the abstract idea into a patent-eligible invention.
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321
(Fed. Cir. 2016).
The dual-authentication of claim 1 lacks the necessary details as to, for
example, any non-conventional software to transform it into an inventive
concept. Cf Credit Acceptance Corp., 859 F.3d at 1057.
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1342 (Fed. Cir. 2017) (explaining that "[o]ur law demands more" than
claim language that "provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it"); Elec. Power
Grp., 830 F.3d at 1354 [Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016)]; (explaining that claims are directed
to an abstract idea where they do not recite "any particular assertedly
inventive technology for performing [conventional] functions").
For the foregoing reasons, the rejection is affirmed. However, to the
extent our reasoning departs from that of the Examiner, we denominate the
affirmed rejection as a new ground of rejection.
The rejection of claims 1-7, 9, 11, 12, 19, 21-24, 26, 27, and 32-34 under
35 USC§ 102(b) as being anticipated by Labrou.
All the claims require "using a trusted source controller or application
programming Interface (API) to obtain authentication data from a secret data
store in response to verifying that the received user identification data is
valid." Claim 12. Similar language is used in the other independent claims,
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claims 1 and 22. The Examiner (Final Act. 4) cites para. 87 of Labrou as
evidence that said claim limitation is expressly described in the prior art,
which reads as follows:
[0087] As shown in the FIG. 4, a view 402 comprises a cipher text
part (or encrypted part) 406 and a perceptible (e.g., plaintext) part
408. A plain text part 408 includes the TID, the DIDc of the payer
200 generating the view 402, and the local current timestamp (TS) of
device 106. The TS, among other functions described herein, is also
used to prevent transaction replay. The encrypted part 406 includes
two critical fields: the agreement data and the DIDm of the payee's
202 device 106 involved in the agreement. The DIDm is the
minimum necessary reference field in order to provide the desired
verification properties of the UPTF protocol. Therefore, a user can
execute a UPTD 106 cashless monetary transaction with a transaction
party according to a PIE and a wireless wallet software 108
authentication parameter RSN and transaction messages comprising
an identifier of the mobile phone, an identifier of the transaction party
and an identifier for a transaction (for example, an identifier and/or
other transaction related data such as payment amount, etc.) thereby
providing the UPTD wireless wallet based upon a combination of the
mobile payment software at the UPTD and STS association of the PIE
and the software authentication parameter with financial entities of the
user and exchange of the transaction messages between the user, the
transaction party and the STS 120.
The Examiner does not clearly explain what in para. 87 of Labrou
corresponds to a trusted source controller or application programming
Interface (API); authentication data; or a secret data store. The Appellants
understand the Examiner to be equating Labrou's "RSN" to the claimed
authentication data. Appeal Br. 14. The Examiner appears to agree with
that. See Ans. 4. Assuming that is the case, we agree with the Appellants
that Labrou does not further describe the limitation "using a trusted source
controller or application programming Interface (API) to obtain [said]
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authentication data from a secret data store in response to verifying that the
received user identification data is valid" (claim 12 ).
According to said claim limitation, in response to verifying that the
received user identification data is valid, a trusted source controller or API
obtains authentication data from a secret data store. Thus, consistent with
equating Labrou's "RSN" to the claimed authentication data, Labrou would
have to describe a trusted source controller or API obtaining the RSN from a
secret data store in order for Labrou to anticipate the claimed subject matter.
We have reviewed para. 87 and are unable to find disclosure describing
obtaining the RSN from a secret data store, let alone "in response to
verifying that the received user identification data is valid."
For the foregoing reasons, after our consideration of the Appellants'
arguments and the evidence presented in this Appeal for the§ 102 rejection,
we are persuaded that the Appellants identify reversible error, and we
therefore reverse the anticipation rejection.
The rejection of claims 10, 20, and 25 under 35 US.C. § 103(a) as being
unpatentable over Labrou and Ritter.
The rejection of claim 30 under 35 US.C. § 103(a) as being unpatentable
over Labrou and Kagan.
The rejection of claim 31under35 US.C. § 103(a) as being unpatentable
over Labrou and Dewe.
These rejections rely on the fact that Labrou expressly describes
"using a trusted source controller or application programming Interface
(API) to obtain authentication data from a secret data store in response to
verifying that the received user identification data is valid." Claim 12. See
also claims 1 and 22. For the reasons discussed above, a preponderance of
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the evidence does not support said finding of fact. Accordingly, after our
consideration of the Appellants' arguments and the evidence presented in
this Appeal for the§ 103 rejection, we are persuaded that the Appellants
identify reversible error, and we therefore reverse the anticipation rejection.
CONCLUSIONS
The rejection of claims 1-7, 9-12, 19-27 and 30-34 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is affirmed but
denominated as a new ground of rejection.
The rejection of claims 1-7, 9, 11, 12, 19, 21-24, 26, 27, and 32-34
under 35 U.S.C. § 102(b) as being anticipated by Labrou is reversed.
The rejection of claims 10, 20, and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Labrou and Ritter is reversed.
The rejection of claim 30 under 35 U.S.C. § 103(a) as being
unpatentable over Labrou and Kagan is reversed.
The rejection of claim 31 under 35 U.S.C. § 103(a) as being
unpatentable over Labrou and Dewe is reversed.
DECISION
The decision of the Examiner to reject claims 1-7, 9-12, 19-27, and
30-34 is affirmed, but the affirmed rejection under § 101 is denominated as a
new ground of rejection.
NEW GROUND
This decision contains a new ground of rejection pursuant to
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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 Appellants, 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 ....
Should the Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
37 C.F.R. § 41.50(b)
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