Ex Parte Agapi et al

Board of Patent Appeals and Interferences

Jun 15, 2009

10744303 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CIPRIAN AGAPI, JAMES R. LEWIS, VANESSA V. MICHELINI, and
CLIFFORD J. STROHOFER
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Appeal 2009-001961
Application 10/744,303
Technology Center 3600
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Decided:1 June 15, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

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FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ciprian Agapi, James R. Lewis, Vanessa V. Michelini, and Clifford J.
Strohofer (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of
claims 1-17, the only claims pending in the application on appeal.
1 The two month time period for filing an appeal or commencing a civil action, as
recited in 37 CFR § 1.304, begins to run from the decided date shown on this page
of the decision. The time period does not run from the Mail Date (paper delivery)
or Notification Date (electronic delivery).

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We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).

We AFFIRM-IN-PART and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R § 41.50(b).
The Appellants invented an automated system for communicating information
to a user regarding travel schedule data (Spec. Para. 0007).
An understanding of the invention can be derived from a reading of exemplary
claims 1, 11, and 16, which are reproduced below [bracketed matter and some
paragraphing added].
1. A method of communicating information to a user interacting with
an automated system for accessing schedule data, comprising the steps
of:
[1] processing a user request for a scheduled event;
[2] loading an occurrence time for the scheduled event;
[3] triggering an interactive disambiguation process with the user
for the scheduled event if the occurrence time is within a
preconfigured time interval including midnight; and,
[4] scheduling the event without disambiguation if the occurrence
time is not within a preconfigured time interval including midnight.

11. A disambiguation tool for communicating information to a user
interacting with an automated tool for accessing schedule data,
[1] the tool executing in a computer system;
[2] the tool being configured to process a user request for a
scheduled event and to load an occurrence time for the scheduled
event,
[3] the tool being further configured to trigger an interactive
disambiguation process with the user for the scheduled event if the
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occurrence time is within a preconfigured time interval including
midnight; and,
[4] the tool being yet further configured to schedule the event
without disambiguation if the occurrence time is not within a
preconfigured time interval including midnight.

16. A system for disambiguating midnight reservations, comprising:
[1] a travel reservation system executing in a computer system;
[2] a disambiguation tool coupled to the a travel reservation system
and executing in the computer system, the disambiguation tool
comprising program code enabled and configured to disambiguate
midnight reservation requests through interactions with a user
requesting to schedule an event during a time interval including
midnight.

This appeal arises from the Examiner’s Final Rejection, mailed July 25, 2007.
The Appellants filed an Appeal Brief in support of the appeal on December 27,
2007. An Examiner’s Answer to the Appeal Brief was mailed on March 17, 2008.
A Reply Brief was filed on May 19, 2008.
PRIOR ART
The Examiner relies upon the following prior art:
Patullo et al. US 2005/0033613 A1 February 10, 2005
Lettovsky et al. US 2005/0033614 A1 February 10, 2005
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REJECTIONS
Claims 1-15 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
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Claims 11-17 stand rejected under 35 U.S.C. § 101 as being directed towards
non-statutory subject matter.
Claims 16-17 stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Patullo.
Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Patullo and Lettovsky.

ISSUES
The issues pertinent to this appeal are
• Whether the Appellants have sustained their burden of showing the
Examiner erred in the rejection of claims 1-15 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
o This pertinent issue turns on whether the Specification discloses the
feature of making a travel reservation when an ambiguity does not
exist.
• Whether the Appellants have sustained their burden of showing the
Examiner erred in the rejection of claims 11-17 under 35 U.S.C. § 101 as
being directed towards non-statutory subject matter.
o This pertinent issue turns on whether claims 11-17 only recite
software that is not embodied in a tangible medium.
• Whether the Appellants have sustained their burden of showing the
Examiner erred in the rejection of claims 16-17 under 35 U.S.C. § 102(e) as
anticipated over Patullo.
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o This pertinent issue turns on whether Patullo describes interacting
with a user and whether this limitation should be afforded patentable
weight.
• Whether the Appellants have sustained their burden of showing the
Examiner erred in the rejection of claims 1-15 under 35 U.S.C. § 103(a) as
unpatentable over Patullo and Lettovsky.
o This pertinent issue turns on whether Patullo and Lettovsky describe
triggering an interactive disambiguation process.

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Facts Related to Appellants’ Disclosure
01. When traveling across midnight, the date change can create
ambiguities and easily cause a user of the system to make a mistake as to
the actual date of travel (paragraph 0004). A disambiguation tool can be
coupled to the travel reservation system to solve this problem (paragraph
0019). The disambiguation tool can include programming for detecting
a reservation in proximity to midnight, since such a reservation can
create an ambiguity as to the requested reservation date (paragraph
0019).
02. If the occurrence time of the reservation does not lie between
midnight and a pre-determined ambiguity range, the process ends
(paragraph 0022). If the occurrence time does lie between midnight and
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the predetermined ambiguity range, a disambiguation message is
provided to the user to resolve the ambiguity (paragraph 0022).
03. The claimed invention can be realized in hardware, software, or a
combination of software and hardware (paragraph 0026).
Patullo
04. Patullo is directed to a computer system for making travel
arrangements (paragraph 0001).
05. Patullo describes a rates and reservations display that enables a user
to enter information such as customer type and child information
(paragraph 0023 and figure 1). The user is then presented with a
reservation booking request and a reservation booking confirmation
based on the inputted information (paragraph 0023 and figure 1).
06. Patullo further describes that the reservation system automatically
adjusts the date of the airline flight, for arrivals and departures, if the
fight time extends over midnight or the flight extends across the
international date line (paragraph 0042). The reservation system also
prevents a guest from having to enter multiple dates and perform
multiple searches for the most convenient and economical flights
arriving and departing on the dates specified (paragraph 0042).
Lettovsky
07. Lettovsky is directed to a system and method for coordinating
multiple travel itineraries for multiple travelers that are departing from
multiple locations but are traveling to the same destination (paragraph
0001).
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08. Lettovsky describes that a travel organizer enters specific travel
criteria for a trip (paragraph 0006). The criteria can include dates of
travel, the importance of the travelers arriving at the destination near the
same time, and the price of travel (paragraph 0006). The system then
outputs suggested travel itineraries based on the input criteria (paragraph
0006). The travel organizer is enabled the flexibility to view all of the
possible itineraries and replace one or more of the suggested itineraries
and then recalculate the time amounts and the prices for all of the
modified itineraries (paragraph 0006).
09. The flexibility provided to the travel organizer includes enabling the
organizer to sort itineraries based on departure times and arrival times
(paragraph 0073). The organizer can make adjustments to all of the
itineraries at once using the group control buttons or to individual
itineraries by select that itinerary (paragraphs 0074 and 0075). After
adjustments have been made, the new travel itineraries are presented to
the organizer with the change in price and time of travel between the
original and updated itineraries (paragraph 0075).
Facts Related To The Level Of Skill In The Art
10. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent art travel reservation systems. We will
therefore consider the cited prior art as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill
in the art does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and a need for testimony is not shown’”)
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(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d
158, 163 (Fed. Cir. 1985).
Facts Related To Secondary Considerations
11. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Non-statutory Subject Matter
35 U.S.C. § 101 provides:
Whoever 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, subject to the conditions and requirements of
this title.
This has been interpreted as follows:
In choosing such expansive terms as ‘manufacture’ and ‘composition
of matter,’ modified by the comprehensive ‘any,’ Congress plainly
contemplated that the patent laws would be given wide scope.
Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).
That wide scope nevertheless excludes laws of nature, natural phenomena, and
abstract ideas. “Such discoveries are ‘manifestations of … nature, free to all men
and reserved exclusively to none.”’ Id. at 309, (quoting Funk Bros. Seed Co. v.
Kalo Inoculant Co., 333 U.S. 127, 130 (1948)). “Phenomena of nature, though just
discovered, mental processes, and abstract intellectual concepts are not patentable,
as they are the basic tools of scientific and technological work.” Gottschalk v.
Benson, 409 U.S. 63, 67 (1972).
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Thus, the claimed invention as a whole must accomplish a practical
application. That is, it must produce a “useful, concrete and tangible result.” State
Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373
(Fed. Cir. 1998). The purpose of this requirement is to limit patent protection to
inventions that possess a certain level of “real world” value, as opposed to subject
matter that represents nothing more than an idea or concept, or is simply a starting
point for future investigation or research. See e.g., Brenner v. Manson, 383 U.S.
519, 528-36 (1966); In re Ziegler 992, F.2d 1197, 1200-03 (Fed. Cir. 1993).

Written Description
The first paragraph of 35 U.S.C. § 112 requires that the specification shall
contain a written description of the invention. This requirement is separate and
distinct from the enablement requirement. See, e.g., Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
The “written description” requirement implements the principle that a
patent must describe the technology that is sought to be patented; the
requirement serves both to satisfy the inventor's obligation to disclose
the technologic knowledge upon which the patent is based, and to
demonstrate that the patentee was in possession of the invention that
is claimed.
Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005).
One shows that one is “in possession” of the invention by describing
the invention, with all its claimed limitations, not that which makes it
obvious. Id. (“[T]he applicant must also convey to those skilled in the
art that, as of the filing date sought, he or she was in possession of the
invention. The invention is, for purposes of the ‘written description’
inquiry, whatever is now claimed.”) (emphasis in original). One does
that by such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention. Although the
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exact terms need not be used in haec verba, see Eiselstein v. Frank, 52
F.3d 1035, 1038 … (Fed. Cir. 1995) (“[T]he prior application need
not describe the claimed subject matter in exactly the same terms as
used in the claims ….”), the specification must contain an equivalent
description of the claimed subject matter.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
It is the disclosures of the applications that count. Entitlement to a
filing date does not extend to subject matter which is not disclosed,
but would be obvious over what is expressly disclosed. It extends only
to that which is disclosed. While the meaning of terms, phrases, or
diagrams in a disclosure is to be explained or interpreted from the
vantage point of one skilled in the art, all the limitations must appear
in the specification. The question is not whether a claimed invention is
an obvious variant of that which is disclosed in the specification.
Rather, a prior application itself must describe an invention, and do so
in sufficient detail that one skilled in the art can clearly conclude that
the inventor invented the claimed invention as of the filing date
sought.
Id. at 1571-72.

Anticipation
"A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987). "When a claim covers several structures or compositions, either generically
or as alternatives, the claim is deemed anticipated if any of the structures or
compositions within the scope of the claim is known in the prior art." Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The identical invention must be
shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged
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as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).

Obviousness
A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.”
35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR, 550 U.S. at 406. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. at 416.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 417.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
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“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 420.
ANALYSIS
Claims 1-15 rejected under 35 U.S.C. 112 § 112, first paragraph, as failing to
comply with the written description requirement
The Appellants argue these claims as a group.
Accordingly, we select claim 1 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2008).
Claim 1 recites scheduling an event with the disambiguation process when an
ambiguity exists in limitation [3]. Claim 1 further recites scheduling an event
when no ambiguity exists in limitation [4]. The Examiner found that the
Specification is silent as to scheduling an event when no ambiguity exists (Answer
Page 3). Specifically, the Examiner found that the Specification paragraph 00222
describes that “if the occurrence time does not lie between midnight and , then the process ends” and as such the Specification is silent as to
scheduling an event when no ambiguity exists (Ans. 3).
The Appellants contend that the Examiner is only considering the use of the
disambiguation tool and process, whereas this tool/process is only one part of the
reservation system (Br. 7, last para.). The Appellants specifically argue that it is
implicit from the Specification paragraphs 0019, 0023, and 0024 that a travel
reservation system makes reservations at any time and will invoke the

2 Although the Examiner cited to paragraph 0024 of the Specification, this cited
language is found in paragraph 0022.
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disambiguation tool when the reservation is made around midnight (Br. 8, first
para. and Reply Br. 2, last para.).
We agree with the Appellants. The Specification describes that the
disambiguation tool can be coupled to the reservations system (FF 01). If a
reservation contains an ambiguity, the disambiguation tool resolves the ambiguity
(FF 02). As such, it is implicit from this disclosure that the disambiguation process
will not occur if an ambiguity does not exist. The Examiner points to a portion of
the Specification that describes that the process ends if an ambiguity does not exist
(Ans. 3), however, it is the disambiguation process that is described as ending and
not the reservation process. That is, the disambiguation tool determines that no
ambiguity exists and ends the disambiguation subroutine, thereby returning to the
reservation routine that enables an unambiguous reservation to be made.
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 1-15 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.

Claims 11-17 rejected under 35 U.S.C. § 101 as being directed towards non-
statutory subject matter
The Examiner found that claims 11-15 recite a disambiguation tool that is
described in the Specification paragraph 0026 as realized in software (Ans. 4). The
Examiner found such a description is nothing more than computer code since the
tool is not further embodied within a physical computer readable medium and
therefore is descriptive material per se or software per se and directed towards
non-statutory subject matter under 35 U.S.C. § 101 (Ans. 4). The Examiner found
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that although claims 16-17 recite a system, these claims suffer from the same
deficiencies as claims 11-15 and are rejected for the same reasons (Ans. 5).
The Appellants contend that that the Specification provides a credible utility
and therefore satisfy the utility requirement of 35 U.S.C. § 101 (Br. 9, last para.).
The Appellants further contend that the claims further satisfy the requirements of
35 U.S.C. § 101 because the claims recite limitations that have a clear
transformative effect (Reply Br. 5, first para.).
With respect to claims 11-15, we agree with the Appellants. Limitation [1] of
claim 11 requires that the disambiguation tool is executed in a computer system.
Although the Specification provides that the claimed invention can be realized in
hardware, software of the combination thereof (FF 03), the claims are limiting the
disambiguation tool to be embodied in a tangible medium since it is being executed
in a computer system. As such, the disambiguation tool is embodied on a tangible
medium, even if only RAM, and therefore is not software per se or descriptive
material per se.
With respect to claims 16-17, we also agree with the Appellants. Limitation
[2] of claims 16 requires that the disambiguation tool is coupled to the travel
reservation system and limitation [1] requires that the travel reservation system is
executed in a computer system. As such, the disambiguation tool is executed in a
computer system. Thus, the disambiguation tool and the travel reservation system
are embodied on a tangible medium and are not software per se or descriptive
material per se for the same reasons discussed supra.
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 11-17 under 35 U.S.C. § 101 as being directed towards non-
statutory subject matter.
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Claims 16-17 rejected under 35 U.S.C. § 102(e) as being anticipated by
Patullo
The Appellants argue these claims as a group.
Accordingly, we select claim 16 as representative of the group.
The Examiner found that that Patullo anticipates claim 16 (Ans. 5). The
Examiner found that claim 16 recites the “disambiguation tool comprising program
code enabled and configured to” perform the disambiguation function (Ans. 5).
The Examiner further found that this functional limitation associated with the
structure (disambiguation tool) is not afforded patentable weight (Ans. 5).
The Appellants contend that Patullo fails to describe disambiguation of
midnight reservation requests through interactions with a user requesting to
schedule an event during a time interval including midnight (Br. 10, second
para. and Reply Br. 6, first para.). The Appellants specifically argue the term
“configured to” imparts structural limitations and therefore should be given
patentable weight (Br. 11, first para. and Reply Br. 6, first para.).
We agree with the Appellants. Limitation [2] of claim 16 require that
disambiguation tool comprises program code that is enabled and configured to
perform steps of a method. Although the program code is a not a structural
limitation in the sense it is a not a physically ascertainable separate part, once the
limitation of the program code is recited as configured and enabled to perform, it
needs to be afforded patentable weight. We find and the Examiner agrees that
Patullo also fails to describe interacting with a user to schedule an event as
required by limitation [2] of claim 16 (Ans. 6).
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 1-15 under 35 U.S.C. § 102(e) as anticipated by Patullo.
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NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 16-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Patullo and Lettovsky.
As discussed supra, Patullo fails to describe the functional limitation of
interacting with a user to schedule an event. Lettovsky describes interacting with a
user to schedule an event (FF 08 and FF 09). As such, claims 16 and 17 are
rejected for the same reasons discussed infra for claims 1-15.

Claims 1-15 rejected under 35 U.S.C. § 103(a) as unpatentable over Patullo
and Lettovsky
The Appellants argue these claims as a group.
Accordingly, we select claim 1 as representative of the group.
The Examiner found that Patullo describes all of the limitations of claim 1
except Patullo fails to describe that the disambiguation process is interactive with
the user (Ans. 7). The Examiner found that Lettovsky describes this feature. The
Examiner further found that a person with ordinary skill in the art would have
recognized the benefit of allowing a traveler to make itinerary modifications by
making the reservation process interactive with the user as describe by Lettovsky
and would have found it obvious to combine Lettovsky and Patullo (Ans. 6).
The Appellants contend that Lettovsky fails to describe triggering an
interactive disambiguation process (Br. 12, last para.). The Appellants further
contend that the Examiner’s rejection is a piecemeal analysis of Patullo and
Lettovsky (Reply Br. 7, last para.).
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We disagree with the Appellants. Limitation [3] of claim 1 requires that a user
interactive disambiguation process is triggered if the scheduled event is at some
time interval around midnight. Lettovsky describes enabling a user to input criteria
for a travel reservation and then a table of suggested itineraries based on this input
criteria is output (FF 08 and FF 09). The user is further enabled to make
modifications to the itineraries and the system interactively updates price
information and total travel times, including layover wait times (FF 08 and FF 09).
The updating of information as the user inputs modifications and enabling the
user to view and further modify the inputs is an interactive process with the user.
As such, Lettovsky is concerned with providing a user with accurate and desirable
travel itineraries and addresses this concern by describing an interactive scheduling
process that is triggered after a user inputs travel criteria. Patullo describes that
travel around midnight is a known problem for travel reservation systems (FF 06).
Patullo solves this known problem by automatically adjusting the time and date
information to account for travel around midnight (FF 06).
Patullo further describes that this problem can be solved by automatically
adjusting travel information, for travel that crosses midnight or the international
date line, in searching for suggested itineraries so that a user does not have to
account for this during the input of travel criteria (FF 06). As such, Patullo
explicitly describes a disambiguation process. A person of ordinary skill in the art
would have recognized the benefit of combining Patullo and Lettovsky in order to
provide accurate and desirable itineraries that account for traveling around
midnight. Furthermore, Patullo and Lettovsky describe both the disambiguation
and interactive processes as a whole, which is more than the mere piecemeal
locating of words in the references as alleged by the Appellants (Reply Br. 7, last
para.).
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Appeal 2009-001961
Application 10/744,303

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The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1-15 under 35 U.S.C. § 103(a) as unpatentable over
Patullo and Lettovsky.

CONCLUSIONS OF LAW
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 1-15 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 11-17 under 35 U.S.C. § 101 as being directed towards non-
statutory subject matter.
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 16-17 under 35 U.S.C. § 102 (e) as anticipated by Patullo.
A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b) in which
claims 16-17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Patullo
and Lettovsky.
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1-15 under 35 U.S.C. § 103(a) as unpatentable over
Patullo and Lettovsky.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-15 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is not sustained.
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Appeal 2009-001961
Application 10/744,303

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• The rejection of claims 11-17 under 35 U.S.C. § 101 as being directed
towards non-statutory subject matter is not sustained.
• The rejection of claims 16-17 under 35 U.S.C. § 102(e) as anticipated by
Patullo is not sustained.
• A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b).
o Claims 16-17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Patullo and Lettovsky.
• The rejection of claims 1-15 under 35 U.S.C. § 103(a) as unpatentable over
Patullo and Lettovsky is sustained.
Our decision is not a final agency action.
In addition to affirming the Examiner's rejection(s) of one or more claims, this
decision contains new grounds 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.” This Decision contains a new
rejection within the meaning of 37 C.F.R. § 41.50(b) (2007).
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new rejection:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner. . . .
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Application 10/744,303

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(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 CFR § 41.50(b)(1), 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 the 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 Board of Patent Appeals and Interferences for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007).
AFFIRMED-IN-PART 15
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JRG
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 3020
BOCA RATON, FL 33487
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