Ex Parte Baschong et al

Patent Trial and Appeal Board

Feb 28, 2018

13603807 (P.T.A.B. Feb. 28, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/603,807 09/05/2012 Werner Baschong 23264 2439
4743 7590 03/02/2018
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
FALKOWITZ, ANNA R
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER BASCHONG, OLIVER REICH, and
SEBASTIEN MONGIAT1
Appeal 2016-001557
Application 13/603,807
Technology Center 1600
Before DEMETRA J. MILLS, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
methods for the local treatment or prevention of inflammatory conditions,
which have been rejected as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM, but designate our affirmance as New Grounds of
Rejection.
1 Appellants identify the real party in interest as CIBA Specialty Chemical
Corp. (Br. 3.)
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STATEMENT OF THE CASE
According to the Specification, “[i]t is standard practice to use
glucocorticoids for the topical treatment of inflammatory and allergic
conditions,” but “[i]t is common knowledge that these compounds can have
unwanted side-effects.” (Spec. 1.) Likewise, the Specification states that,
“[ojwing to their insufficient ability to penetrate the skin, nonsteroidal
anti[-]inflammatory medicaments containing therapeutic agents such as
ketoprofen, BW755c, piroxicam, diclofenac or indomethazin cannot
effectively be applied topically, but only systemically.” (Id. )
The Specification states that “some phenol ethers have been proposed
having antioxidant, anti-inflammatory and anti[-]allergic properties.” (Id. )
Further according to the Specification, “[i]t is the object of this invention to
provide pharmaceutical compositions having surprisingly good
pharmacologically properties, in particular antioxidant, anti-inflammatory
and anti[-]allergic properties, especially when administered locally.” (Id. )
In particular, the Specification states that the invention relates to the use of
carbon or ester/amide bridged phenols or lactones thereof, or some sterically
hindered amines, “for the preparation of medicaments or formulations for
the treatment of radical induced impairments such as inflammatory or
allergic conditions, collagen damages, DNA-damage, or reperfiision-damage
(use as anti[-]aging).” (Id.)
Claims 1, 7—9, 13, and 14 are on appeal. Claim 1 is representative and
reproduced in full in the “CLAIMS APPENDIX” of Appellants’ Brief. (Br.
33—43.) In relevant part, claim 1 recites “a method for the local treatment or
prevention of inflammatory conditions” comprising “administering to a
patient in need of such treatment an effective amount of a pharmaceutical
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composition comprising at least one of the . . . compounds of formulae (7) to
(35). . . together with a pharmaceutically acceptable carrier or adjuvant.”
(Br. 33—42 (Claims App.).) During prosecution, Appellants elected without
traverse the following species in response to a restriction requirement:
(Nov. 19, 2012 Response to Restriction Requirement 2; Final Act. 4.)
The Examiner rejects claims 1, 7, 8, 13, and 142 under 35 U.S.C.
§ 103(a) as obvious over Baschong3 and Pflucker,4 and the teaching
references of Meyer,5 Brtko,6 Hersh,7 FD&C Act,8 and the entry for
“pharmaceutical” in the Merriam-Webster Online Thesaurus.9 (Final Act.
3.) The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as obvious over
2 Claim 10 has been cancelled. (Appeal Br. 44 (Claims App.).)
3 Baschong et al., WO 03/024417 Al, published Mar. 27, 2003
(“Baschong”).
4 Pflucker et al., WO 02/072583 Al, published Sept. 19, 2002 (“Pflucker”).
All citations to Pflucker in this decision refers to its U.S. equivalent,
Pflucker et al., US 2004/0102446 Al, published May 27, 2004.
5 Meyer et al., US 7,056,742 B2, issued June 6, 2006 (“Meyer”).
6 J. Brtko et al., Kojic Acid and Its Derivatives: History and Present State of
Art, 12 Cent. European J. Pub. Health S16 (2004) (“Brtko”).
7 Hersh et al., US 6,337,320 Bl, issued Jan. 8, 2002 (“Hersh”).
8 Federal Food, Drug, and Cosmetic Act, 21 U.S.C. § 321(g)(1) (“FD&C”).
9 Merriam-Webster Online Thesaurus, http://www.merriam-
webster.com/thesaurus/phamaceutical (last visited Jun. 29, 2012).
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the same set of evidence recited above in combination with Fankhauser.10
(Id. at 10.)
DISCUSSION
Issue
The same issue is dispositive for both of the rejections on appeal. We
therefore discuss the rejections together.
The Examiner finds that Baschong discloses pharmaceutical
formulations suitable for protecting skin against UV radiation damage,
which contain antioxidant light-protective agents in an amount from 0.001 to
30% by weight. (Final Act. 5.) The Examiner finds that Baschong
specifically discloses the instantly elected species as one such antioxidant.
(Id.) The Examiner finds that Baschong also discloses formulations
containing water, a “recognized pharmaceutically acceptable carrier.” (Id.)
The Examiner finds that Hersh teaches that “UV radiation induces
skin damage in the form of sunburn, photo[-]aging, and malignancies,” that
“sunburn includes redness, swelling, and infiltration of the dermal layers by
inflammatory cells ([i.e.,] inflammation),” and that “antioxidants in a topical
formulation minimize and ameliorate the free radical damage to the skin
from UV radiation.” (Id. at 6.) The Examiner finds that, “[t]hus[,] the
prevention of the damaging effect of UV radiation of Baschong is prevention
of inflammatory conditions localized to the UV exposed skin” and meets the
preamble limitation relating to “local. . . prevention of [an] inflammatory
condition[].” (Id.)
10 Fankhauser, US 2003/0069453 Al, published Apr. 10, 2003
(“Fankhauser”).
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In the alternative, the Examiner finds that the preamble limitation
relating to “local treatment or prevention of inflammatory conditions” is an
intended use that does not patentably distinguish the claimed invention over
the prior art. {Id. at 8.) In particular, the Examiner finds that
Baschong discloses the identical pharmaceutical antioxidant
composition as instantly claimed ... in the concentration which
completely overlaps the claimed concentration .... Because
both the composition and concentration of Baschong and in this
instant application are the same, it would be expected that the
composition would have the same inherent property, mainly the
treatment or prevention of inflammatory skin damage.
(Id.)
The Examiner finds that Baschong does not specifically disclose “the
method step of administering to a patient in need of. . . treatment [of
inflammatory conditions] an effective amount of [the elected] compound.”
{Id. at 7.) However, the Examiner finds that Pflucker discloses applying to
the skin and hair an effective amount of a compound for protecting against
UV radiation, and further finds that, “as all people are [affected by] the
influences of sunlight and the harm of UV exposure any person would be a
patient in need . . . [of] the prevention and treatment [of inflammatory
conditions].” {Id. at 8.)
The Examiner concludes that it would have been obvious to combine
the teachings of Baschong and Pflucker to arrive at the claimed invention,
with a reasonable expectation of success, because Baschong discloses that
“an antioxidant [that] can be used for UV protection can be used as part of a
topical skin cream” and “the standard method for using a topical
composition is to apply it to the skin as disclosed by Pflucker.” {Id. at 9.)
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Appellants contend that the cited references do not suggest a method
for the local treatment or prevention of inflammatory conditions or the step
of administering the recited pharmaceutical composition to a patient in need
of such treatment. (Br. 17—18.)
The issues with respect to this rejection are:
1. Whether the preamble of claim 1 recites an “intended use” that
does not patentably distinguish over the prior art;
2. If the preamble is limiting, whether a preponderance of
evidence of record supports the Examiner’s finding that the combination of
cited art renders obvious “[a] method for the local treatment or prevention of
inflammatory conditions comprising: administering to a patient in need of
such treatment. . . a . . . composition comprising [the elected compound].”
Findings of Fact
1. Baschong teaches “compositions comprising (a) (-)-guaiol, (b)
further skin-lightening active substance(s) and, optionally, (c) one or more
UV-A and/or UV-B absorbers as melanogenesis inhibitors and for skin-
lightening.” (Baschong, Abstract.)
2. Baschong teaches that its compositions are “suitable for
protecting ultraviolet-sensitive organic materials, especially the skin, against
the damaging effect of UV radiation, especially for lightening the skin in
conjunction with one or more UV filter(s), that is to say during or after
simultaneous lightening of the skin.” {Id. at 18.)
3. Baschong teaches that,
[i]n the compositions according to the invention, it is also
possible to use, in addition to components (a), (b) and (c),
secondary light-protective agents of the antioxidant kind which
interrupt the photochemical reaction chain triggered when UV
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radiation penetrates the skin or hair. That property is desirable
for cosmetic light protection because, as a result of the
influence of UV and light, damaging radicals may be formed
both in formulations and on the skin. Providing the
compositions according to the invention with antioxidants
achieves not only protection from UV damage but also, at the
same time, protection from the photochemical degradation of
constituents in the formulation.
(Id. at 28.)
4. Baschong teaches that typical examples of antioxidants that
interrupt the photochemical reaction chain triggered when UV radiation
penetrates the skin or hair include, e.g., selenium and derivatives thereof and
thiols such as glutathione. (Id. at 28—29.)
5. Baschong teaches that “[mjention may also be made of [certain]
phenolic antioxidants,” including the compound having the following
chemical structure:
(Id. at 29, 35.) The chemical structure reproduced above is labeled as
compound (A026) in Baschong and is the elected compound in the
application on appeal. (Id.', Nov. 19, 2012 Response to Restriction
Requirement 2; Final Act. 4.)
6. Baschong teaches that “[t]he amounts of antioxidants is usually
from 0.001 to 30 % by weight, preferably from 0.01 to 3 % by weight, based
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on the weight of the composition according to the invention.” (Baschong
38.)
7. Baschong teaches that its formulation may “exist in a wide
variety of presentation forms,” including gels, creams, and pastes, which
thus suggests topical application of the formulation. {Id. at 42.)
8. Hersh teaches:
the combination of several anti-oxidants, including enzymatic
co-factors and thiol compounds, and various tissue and cell
growth stimulating factors ... as a means of both minimizing
and ameliorating and also concomitantly repairing free radical
damage to the skin from ultraviolet radiation and also
stimulating the growth, differentiation and maturation of
epidermal cells resulting from environmental and metabolic
factors.
(Hersh 1:5—13; see also id. at 7:3—12, 7:22—24, 10:30-40.)
9. In particular, Hersh teaches “[a] composition of L-glutathione
(reduced) and selenium and an epidermal growth factor . . . and method of
using the composition to reduce and repair ultraviolet radiation-induced skin
damage, both acute injury (sunburn) and chronic damage (photo[-]aging and
cutaneous malignancies).” {Id. at Abstract; see also id. at 7:24—27, 7:40-45,
7:56-66.)
10. Hersh teaches that sunscreens alone are not adequate in
protecting skin from UV radiation or in repairing skin damaged by UV
radiation. {Id. at 5:27—29.)
11. Hersh teaches that
[i]t is important to supply locally both glutathione and the
synergistic antioxidants to restore epidermal glutathione levels
and enhance the reparative antioxidant chain breaking reactions.
It becomes imperative to prevent UV ray damage by
prophylaxis with skin care (sun protection) products and
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appropriate clothing, plus the prevention of free radicals and
their neutralization by locally applied chain-breaking
antioxidant preparations, as proposed in the present application.
(Id. at 12:42-49; see also id. at 20:43—47, 24:15—17 (teaching that “sunburn
should be treated with the combination of synergistic endogenous and
exogenous antioxidants as outlined herein”).)
12. Hersh teaches that sunburn involves an inflammatory response.
(Id. at 1:64—2:3, 4:55—5:6.)
13. Hersh teaches the topical administration of its composition to
human skin. (Id. at 11:51—54; see also id. at Abstract, 1:5—13, 7:45—66,
10:30-37.)
14. Pflucker teaches “use of quinoxaline derivatives as photostable
UV filters in cosmetic and pharmaceutical preparations for protection of the
human epidermis or human hair against UV radiation, especially in the range
280-400 m.” (Pflucker 11.)
15. Pflucker also teaches “a method for protecting the skin and . . .
hair against solar radiation, in which an effective amount of [the inventive
compound] in a cosmetic preparation is applied to the skin or the hair.” (Id.
1135; see also id. 1178 (topical administration), 1222 (sunscreen spray), 1
236 (sunscreen gel), ^fl[ 250, 262 (sunscreen lotion).)
16. Pflucker teaches that
[i]t is furthermore possible and advantageous to combine the
preparations according to the invention with antioxidants. A
combination of this type then exhibits both a protective action as
antioxidant and also against bums due to UV radiation. A protective
action against oxidative stress or against the action of free radicals can
thus also be achieved.
(Id. 1132; see also id. ^fl[ 164—166.)
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Analysis
We find the preamble “[a] method for the local treatment or
prevention of inflammatory conditions” to be limiting; however, we agree
with the Examiner that the cited prior art combination suggests such a
method comprising “administering to a patient in need of such treatment. . .
a . . . composition comprising [the elected compound].”
With respect to whether the preamble is limiting, our reviewing court
has held that,
[i]f a preamble “recites essential structure or steps, or if it is
‘necessary to give life, meaning, and vitality’ to the claim,” then the
preamble can limit the scope of a claim. Catalina Mktg. Int 7, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citation
omitted). “Conversely, a preamble is not limiting ‘where a patentee
defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the
invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478
(Fed.Cir. 1997)). “‘[WJhether to treat a preamble as a claim limitation
is determined on the facts of each case in light of the claim as a whole
and the invention described in the patent.’” Bicon, Inc. v. Straumann
Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (quoting Storage Tech. Corp.
v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003)).
TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015). In this case,
we find the preamble to be limiting because it acts as an antecedent basis for
a phrase in the body of the claim: that is, the step of “administering to a
patient in need of such treatment ' refers to the phrase in the preamble
relating to “local treatment... of inflammatory conditions.” Catalina
Mktg., 289 F.3d at 808 (explaining that “dependence on a particular disputed
preamble phrase for antecedent basis may limit claim scope because it
indicates a reliance on both the preamble and claim body to define the
claimed invention”).
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Although we find the preamble to be limiting, we nevertheless agree
with the Examiner that the cited prior art combination renders obvious “[a]
method for the local treatment or prevention of inflammatory conditions
comprising: administering to a patient in need of such treatment. . . a . . .
composition comprising [the elected compound].” (Appeal Br. 33 (Claims
App.).) Specifically, Baschong teaches that the elected compound is an
antioxidant suitable for use in a composition “for protecting skin against UV
radiation damage” as “secondary light-protective agents” that achieves UV
protection by “interrupting] the photochemical reaction chain triggered
when UV radiation penetrates the skin or hair.” (FF2, FF3.) Hersh similarly
suggests that a composition comprising a combination of antioxidants such
as F-glutathione (reduced) and selenium reduce and repair UV-induced skin
damage, including acute damage such as sunburn, through “reparative
antioxidant chain breaking reactions.” (FF8, FF9, FF11.) Hersh further
teaches that sunburn involves an inflammatory response. (FF12.)
Given the teachings of Baschong and Hersh, we find that it would be
obvious for a skilled artisan to administer a composition comprising the
elected compound to a patient in need of treatment for sunburn, an
inflammatory condition: Baschong teaches that the elected compound is an
antioxidant that acts as a “light-protective agent” by “interrupting] the
photochemical reaction chain triggered when UV radiation penetrates the
skin or hair” (FF3—FF5), while Hersh teaches that other antioxidants
functioning in similar fashion is useful in reducing and repairing skin
damage such as sunburn (FF8, FF9, FF11). As for the limitation regarding
local treatment, we note that both Baschong and Hersh teach or suggest
topical application of their compositions, while Pflucker, a reference that
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also teaches cosmetic and pharmaceutical preparations protecting against
UV radiation, likewise teaches topical application of its preparations to skin
or hair. (FF7, FF13, FF15.)
Appellants contend that Baschong teaches using guaiol in mixtures
with other components to lighten or prevent tanning of the skin and does not
suggest a method for the treatment or prevention of inflammatory
conditions. (Br. 17—19.) While Appellants concede that Baschong discloses
the elected compound as a phenolic antioxidant, Appellants argue that
Baschong teaches that such antioxidants are optional, that even if an
antioxidant such as the elected compound is added to Baschong’s
formulation, the formulation is still “specifically designed to lighten” or
prevent the tanning of skin, and that “Baschong’s teaching that the
antioxidants can interrupt the photochemical reaction chain triggered when
UV radiation penetrates the skin or hair is not the same as or similar to a
method of preventing or treating inflammation conditions.” {Id. at 23.)
We are not persuaded. “A reference may be read for all that it
teaches, including uses beyond its primary purpose.” In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012). Thus, the fact that Baschong primarily
teaches a composition for lightening or preventing tanning of the skin and
teaches the elected compound as an optional ingredient does not diminish
the relevance of its teaching with respect to the use of the elected compound.
Likewise, while Baschong’s teaching that antioxidants such as the elected
compound interrupts the photochemical reaction chain triggered by
penetration of UV radiation in skin and hair does not by itself suggest a
method of preventing or treating inflammatory conditions, it renders such a
method obvious when combined with Hersh’s teaching that antioxidants
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performing a similar function are useful in treating sunburn, an
inflammatory condition.
Appellants acknowledge that Hersh discusses sunburn, an
inflammatory condition, as one possible damaging effect of UV radiation.
(Br. 20.) However, Appellants contend that “it is well known . . . that there
are a multitude of different effects that can be caused by UV radiation,” and
Baschong focuses on a tanning effect of UV radiation that is not the same or
similar to sunburn. (Id.) We are not persuaded for the same reasons already
discussed. In particular, Hersh does not merely discuss sunburn as a
possible damaging effect of UV radiation, but also teaches using a
combination of antioxidants that enhance reparative antioxidant chain
breaking reactions to treat sunburn. (FF8, FF9, FF11.) This teaching
combined with Baschong’s teaching of the elected compound as an
antioxidant that interrupts the photochemical reaction chain triggered by UV
radiation in skin or hair would have rendered it obvious to use the elected
compound in treating sunburn, as discussed above
Appellants contend that the Examiner’s citation to the FD&C Act and
Merriam-Webster to show that “the[] components of Baschong’s cosmetic
formulations may quality as drugs or fall under the FDA category of
mitigate, treat or prevent a disease” does not cure the defects in the rejection,
because “[such] teaching is not equivalent to a teaching of local treatment or
prevention of inflammatory conditions.'1'’ (Br. 22.) While we agree that the
FD&C Act and Merriam Webster does not suggest that the elected
compound may be used to treat or prevent an inflammatory condition, the
Examiner cites these references only to show that the prior art combination
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suggests a pharmaceutical composition rather than merely a cosmetic
composition, a point Appellants have not disputed. (Final Act. 6—7.)
Appellants further argue that Baschong also fails to suggest the step of
“administering to a patient in need of. . . treatment an effective amount of a
pharmaceutical composition.” (Br. 24.) Appellants contend that the
Examiner’s citation to Pflucker does not cure this deficiency in Baschong
because “it would not be obvious for one of ordinary skill in the art to turn to
Pflucker after reading Baschong seeking a method step of administering the
formulation to a patient in need when the active components of the
formulation[s] are completely different.” {Id. at 25.) Appellants further
disagree with the Examiner’s position that, “‘as all people are [a]fleeted [by]
the influences of sunlight and the harm of UV exposure any person would be
a patient in need thereof for the prevention and treatment.’” {Id. at 26—27
(citing Final Act. 8).)
We agree with Appellants that not every person would meet the claim
limitation of “a patient in need of [local] treatment [of inflammatory
conditions.” In Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378—
79 (Fed. Cir. 2005), the Federal Circuit held that prior art disclosure of the
topical application of a lotion does not anticipate a claim specifically reciting
application of the lotion to skin sunburn, because “[t]he issue is not. . .
whether [the] lotion if applied to skin sunburn would inherently treat that
damage[] but whether [the prior art] discloses the application of its
composition to skin sunburn.” Similarly, not every person is in need of
treatment for inflammatory conditions because not every person suffers
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from, e.g., sunburn.11 Nevertheless, as discussed above, we find that the
cited prior art combination suggests administration of the elected compound
to a patient in need of treatment of an inflammatory condition (i.e., sunburn),
because Hersh suggests that antioxidant chain breaking reactions help to
repair UV radiation-induced damage such as sunburn, and Baschong teaches
that the elected compound is an antioxidant that interrupts the undesirable
photochemical reaction chain triggered by UV radiation. Thus, unlike in
Perricone, the cited prior art combination suggests the application of the
elected compound to skin sunburn.
Finally, for the same reasons as discussed above, we note but are not
persuaded by Appellants’ argument that the rejection of claim 1 relies on
impermissible hindsight. (Appeal Br. 28.) “Any judgment on obviousness
is in a sense necessarily a reconstruction based upon hindsight reasoning, but
so long as it takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).
11 The Federal Circuit in Perricone held that a prior art’s disclosure of the
topical application of the claimed composition necessarily anticipates a
claim to a method of preventing skin sunburn, because while not all skin
suffers from sunburn, “all skin surfaces are susceptible to sunburn damage.”
Perricone, 423 F.3d at 1379. However, we note that the claim on appeal
does not recite administering to a patient in need of treatment or prevention
of inflammatory conditions such as sunburn. Thus, we do not address
whether topical administration of Baschong’s composition would inherently
meet the limitation of “administering to a patient in need of’ treatment or
prevention of inflammatory conditions.
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Accordingly, we affirm the Examiner’s rejection of claim 1. Claims
7, 8, 13, and 14, which were not separately argued, fall with claim 1. See Br.
16; 37 C.F.R. § 41.37(c)(l)(iv). Appellants do not make any separate or
additional arguments with respect to claim 9; thus, we affirm the rejection of
claim 9 for the same reasons. Because our reasoning differs from that of the
Examiner, however, we designate our affirmance as New Grounds of
Rejection to provide Appellants with an opportunity to respond.
SUMMARY
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1, 7—9, 13, and 14 but designate our affirmance as new grounds of
rejection.
TIME PERIOD FOR RESPONSE
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.”
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 grounds 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. . . .
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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