Ex Parte Cartier et al

Patent Trial and Appeal Board

Jun 25, 2018

13734075 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/734,075 01/04/2013
44152 7590 06/27/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
Eduard A. Cartier
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.
BUR920120142US1 1208
EXAMINER
ISLAM, MOHAMMAD K
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
docketing@rmsc2.com
lgallaugher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDUARD A. CARTIER, CHARLES LaROW,
TRAVIS S. MERRILL, and ERNEST Y. WU
Appeal2017-001653
Application 13/734,075
Technology Center 2800
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's decision rejecting claims 1-20, which constitute all pending
claims in this application. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a new ground of
rejection. 2
1 The Appellant, GlobalFoundries Inc., is the real party in interest. Appeal
Br. 2.
2 Our decision refers to the Specification ("Spec.") filed Jan. 4, 2013, the
Examiner's Final Office Action ("Final Act.") dated December 18, 2015,
Appellant's Appeal Brief ("Appeal Br.") filed April 18, 2016, the
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STATEMENT OF THE CASE
The application relates to testing of semiconductor devices to measure
dielectric breakdown. Spec. i-f4. The testing method includes application of
a plurality of stress voltages to a semiconductor device at a predetermined
voltage ramp rate until failure occurs. Id.
Claim 1 is illustrative of the subject matter on appeal.
1. A method for testing a semiconductor device to measure
dielectric breakdown to determine a reliability of dielectric
material of the semiconductor device, comprising:
a computer applying a plurality of stress voltages to a
semiconductor device under test;
the computer measuring a plurality of current
measurements until a failure criteria occurs, using a
predefined voltage ramp rate and a predefined plurality of
stress voltage steps, wherein the number of the plurality of
current measurements is less than or equal to the number of
the predefined plurality of voltage steps;
the computer identifying a stress voltage at which the
semiconductor device fails; and
the computer calculating a frequency dependent voltage
acceleration factor based on the quotient of the natural log of
the voltage at which the semiconductor device under test
failed to the natural log of the predetermined voltage ramp
rate.
Appeal Br. 43 (Claims App.).
Examiner's Answer ("Ans.") dated Sept. 9, 2016, and Appellant's Reply
Brief ("Reply Br.") filed Nov. 9, 2016.
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REJECTIONS
The Examiner maintains the following grounds of rejection:
1. Claims 1-12 and 193 under 35 U.S.C. § 101 as directed to
subject matter falling within a judicial exception;
2. Claims 13-20 under 35 U.S.C. § 101 as directed to non-
statutory subject matter and as directed to subject matter falling within
a judicial exception.
ANALYSIS
Rejection 1: Claims 1-12 and 19 Rejected under 35 US.C. § 101
To determine whether subject matter is patentable under 35 U.S.C.
§ 101, the Supreme Court has set forth a two part test "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. v. CLS Banklnt'l, 134 S.Ct. 2347, 2355 (2014). The first step in the
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts," such as an abstract idea. Id. (citation
omitted). For computer-related technologies, "the first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities" (which would be eligible subject
matter) or instead "on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool" (which would be ineligible subject
matter). Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 1338
(Fed. Cir. 2016) (emphasis added).
"[I]t is not enough to merely identify a patent-ineligible concept
underlying the claim; we must determine whether that patent-ineligible
3 Claim 19 was inadvertently omitted from the original rejection. See
Appeal Br. 4, Ans. 2.
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concept is what the claim is 'directed to."' Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016). "If the claims are
not directed to an abstract idea [or other patent-ineligible concept], the
inquiry ends. If the claims are 'directed to' an abstract idea, then the inquiry
proceeds to the second step of the Alice framework." McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (emphasis
omitted).
The second stage of the inquiry (where reached) looks more precisely
at what the claim elements add-specifically, whether, in the Supreme
Court's terms, they identify an "inventive concept" in the application of the
ineligible matter to which (at stage two) the claim is directed. Elec. Power
Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-1356 (Fed. Cir. 2016)
(quoting Enfish, 822 F.3d at 1335-36). An inventive concept is an element
or combination of elements that "ensure[ s] that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself." Alice Corp., 134 S.Ct. at 2355. "[I]nvocations of computers and
networks that are not even arguably inventive are insufficient to pass the test
of an inventive concept in the application of an abstract idea." Elec. Power,
830 F.3d at 1355 (internal quotes omitted.)
Claim 1
The Examiner determined that the claim 1 is abstract as it is directed
to a "combination of human evaluation and mathematical concept
(algorithm)." Final 7.
Appellant argues that the claim is not abstract. Appeal Br. 7-19. In
support of its argument, Appellant cites two Patent Office publications:
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"Interim Eligibility Guidance"4 published in 2014 and the "Update on
Subject Matter Eligibility" 5 (hereinafter "Update") published in 2015. The
Update on Subject Matter Eligibility indicates that one category of abstract
idea is "an idea of itself." In this regard, the Update provides as follows:
Several cases have found concepts relating to processes of
comparing data that can be performed mentally abstract, such as
comparing information regarding a sample or test subject to a
control or target data (Ambry, Myriad CAFC), collecting and
comparing known information (Classen), comparing data to
determine a risk level (Perkin-Elmer), diagnosing an abnormal
condition by performing clinical tests and thinking about the
results (In re Grams), obtaining and comparing intangible data
( Cybersource ), and comparing new and stored information and
using rules to identify options (SmartGene).
Update6 at 5; see also Reply 5-6 (quoting Update). Appellant argues that
the process of claim 1 could not be performed by a human and further that it
does not fit within any of the specific examples of the Update. Appeal Br. 8.
Appellant additionally cites the Interim Eligibility Guidance which
indicates that mathematical relationships such as algorithms have been held
to be abstract. Id. at 9-10. Appellant argues that the present claims do not
"fit within these examples" and are therefore not directed to mathematical
relationships and are not abstract.
Claim 1 is to a method that requires 1) applying a plurality of voltages
at a predetermined ramp rate to a semiconductor device; 2) measuring the
resultant current; 3) identifying a stress voltage where a failure criterion is
4 79 Fed. Reg. 74618 (2014).
5 80 Fed. Reg. 45429 (July 30, 2015).
6 As published at https://www.uspto.gov/sites/default/files/documents/ieg-
july-2015-update.pdf (last visited June 22, 2018).
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met; and, 4) calculating a "frequency dependent voltage acceleration factor."
Thus, the focus of the claim is on collecting information and analyzing it.
This is broadly similar to the steps of the patent at issue in Electric
Power Group. There, the Federal Circuit held that "we have treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas." 830 F.3d at 1353. In the same case, the court further held that "[i]n a
similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Id. at 1354.
Accordingly, we determine claim 1 to be directed to abstract subject
matter and the first part of the Alice test to be satisfied. We next tum to the
second part of the Alice test-whether the claim, considering all elements,
amounts to significantly more than an abstract idea.
In addition to the measuring, identifying, and calculating steps of the
claim, claim 1 also requires applying a plurality of voltages to a
semiconductor device at a predetermined ramp rate. The Examiner
describes this as "nothing more [than the] recitation of [a] generic
semiconductor testing system." Ans. 8.
Although not relied upon in the Final Rejection, during the course of
prosecution the Examiner cited several references teaching the use of
ramped voltages in testing semiconductors. The Examiner determined that
Lin 7 teaches a method of testing a dielectric that includes "incrementally
increasing said stress voltage." Non-Final Action (July 6, 2015) 5---6. The
7 US 6,602,729 B2, issued Aug. 5, 2003 ("Lin").
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Examiner additionally cited Haase, 8 which teaches "first and second voltage
ramp rates." Id. at 6. Similarly, the Examiner determined that Aubel9
teaches "a voltage ramp dielectric breakdown test." Id. at 6. Accordingly,
the Examiner has shown that such technique is well-understood, routine and
conventional to a skilled artisan. See Berkheimer v. HP Inc., 881F.3d1360,
1367---68 (Fed. Cir. 2018).
Appellant additionally argues that the Examiner's analysis is
incomplete. Appeal Br. 15-16; Reply 14. The rationale articulated by the
Examiner is sufficient as it identifies the judicial exception (abstractness)
that renders the claim ineligible as well as the additional elements of the
claim and why they do not claim "significantly more" than the exception.
Ans. 8-9. Nonetheless, in view of our reliance on the references cited above
(Lin, Haase, and Aubel), we designate the present decision as a new ground
of rejection.
In light of all of the foregoing, we affirm the rejection of claim 1 as
directed to abstract subject matter and not identifying an inventive concept.
Claim 2
Claim 2 depends from claim 1 and further requires that "the
predefined voltage ramp rate is defined as R (rate)= dV/dt, wherein Vi is a
stress voltage in the plurality of stress voltages, and wherein t is the duration
of the stress voltage." Appeal Br. 43 (Claims App.). Appellant did not
8 US 6,967,499 Bl, issued Nov. 22, 2005 ("Haase").
9 Aubel, Oliver et al., New Approach of90NM Low-K Interconnect
Evaluation Using a Voltage Ramp Dielectric Breakdown (VRDB) Test, IEEE
43rd Annual International Reliability Physics Symposium, San Jose 2005,
483--489 (August 2005).
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submit argument regarding claim 2 in the Appeal Brief. See generally
Appeal Br. Appellant does, however, offer argument regarding claim 2 in
the Reply Brief. Reply 10-11. While argument on this point is arguably
waived, see 37 C.F.R. § 41.37(c)(l)(iv), we nonetheless consider such
argument in the interest of creating a complete record.
Appellant argues that claim 2 is not directed to an abstract idea
because the limitation at issue differs from the alarm limits at issue in Parker
v. Flook. Reply 10-11. This is inadequate to show error in a determination
of abstractness. The Examiner cites Parker v. Flook as general guidance,
not as providing identical limitations.
Appellant additionally argues that the limitation of claim 2 adds
significantly more "by further defining the predefined voltage ramp rate of
the measuring component." Id. at 11. The limitation further defines the
voltage ramp rate mathematically. Mathematical equations are generally
considered to be abstract matter. Elec. Power, 830 F.3d at 1354. The
present equation does not render the claim other than abstract.
Claim 3
Appellant briefly argues that claim 3 amounts to significantly more
than the judicial exception. Appeal Br. 20; Reply 17. Claim 3 depends from
claim 1 and further requires that "measuring the plurality of current
measurements includes determining a current and identifying a voltage at
each step included in the predefined plurality of voltage steps." Appeal Br.
43 (Claims App.). The Examiner determined such limitation to be "mere
data gathering, necessary in carrying out the abstract idea which are related
to the mere data collection (or insignificant extra-solution) activities, that is
routine, conventional and previously known in the industry." Ans. 10.
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Appellant has not shown error in the Examiner's determination that
claim 3 is directed to an abstract idea nor shown that it includes significantly
more than the abstract idea.
Claim 4
Appellant additionally argues that claim 4 amounts to significantly
more than the judicial exception. Reply 18. Claim 4 depends from claim 1
and further requires that "the plurality of stress voltages produces alternating
current, direct current, or both." Appeal Br. 43 (Claims App.). The
Examiner determined that the additional elements (beyond those portions
that are abstract per se) are "(i) nothing more recitation of generic
semiconductor testing system (ii) mere instructions to implement the idea on
a computer that are well-understood, routine, and conventional activities
previously known to the pertinent industry." Ans. 10.
Appellant argues that the claim, considered as a whole, amounts to
more than a claim to an abstract idea. Appeal Br. 18. Appellant additionally
argues that the Examiner's analysis was incomplete as it did not cite prior art
showing that certain claim elements were routine, conventional and
previously known. Id. As above, the measuring, identifying, and
calculating steps of claim 1 are abstract. The application of a voltage may
be an additional element, but is routine, conventional and previously known.
Ans. 8. Similarly, a stress voltage that produces a current (either alternating
or direct) is routine. Lin teaches that, "[d]uring testing, the voltage is
ramped from a base voltage Vb to an increasingly higher stress voltage Vs
and two current measurements are taken, a base current h measurement at
the base voltage and a stress current Is measurement at the stress voltage."
Lin 2 :4 7-51. Haase teaches that "[ s ]tress and current measurements were
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employed using a computer-controlled Agilent 4156C semiconductor
parameter analyzer." Haase 6:8-10. Similarly, Aubel teaches that the stress
voltage produces a "leakage current." Aubel at 483 ("[t]he core of this test is
a leakage current measurement at elevated temperatures and much higher
stress voltages."). Further, any defect arising from the Examiner's omission
of specific prior art in the Final Rejection is cured by citation to Lin, Haase,
and Aubel.
Accordingly, we affirm the rejection of claim 4.
Claim 5
Appellant additionally argues that claim 5 amounts to significantly
more than the judicial exception. Appeal Br. 20. Claim 5 depends from
claim 4 and further requires that the failure criteria include at least one of
"the applied stress voltage being greater than or equal to a predetermined
maximum voltage," "a measured current of the plurality of current
measurements being greater than or equal to a predetermined maximum
current," or "a logarithmic slope of a current versus a voltage curve, derived
from the plurality of current measurements and the plurality of stress
voltages, increases by a factor two to five times greater than or equal to a
previously calculated logarithmic slope included in the current versus the
voltage curve or a predetermined slope." Appeal Br. 43--44 (Claims App.).
The Examiner determines the foregoing to require "mere data
gathering." Ans. 11.
Appellant has not shown that the mere gathering and comparison of
data is "significantly more" than an abstract idea. The "being greater than or
equal to" limitations are simple comparisons of values. Accordingly, in the
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present context, such limitations do not impart patentability and we affirm
the rejection of claim 5.
Claim 6
Claim 6 depends from claim 1 and further requires that "the frequency
dependent voltage acceleration factor is defined by the following formula:
n = {Ln(VFArL)/LnR} - 1, wherein VFAIL is the stress voltage at which the
semiconductor device fails, and wherein R is the predefined voltage ramp
rate." Appeal Br. 44 (Claims App.). That is, the voltage acceleration factor
is defined by a mathematical equation.
Appellant argues that claim 6 is not directed to abstract subject matter.
Reply 11-12. Specifically, they argue that the present limitation differs
from that at issue in Parker v. Flook, cited by the Examiner (Ans. 6). As a
result, Appellant contends, there is no showing of abstractness. Reply 12.
Mathematical equations are generally considered to be abstract matter.
Elec. Power, 830 F.3d at 1354. The present equation does not render the
claim other than abstract.
Appellant additionally argues that the equation of claim 6 amounts to
significantly more than the judicial exception because it "recites a specific
variable and also how this specific variable is found." Appeal Br. 21. This
is true of most equations and is insufficient, of itself, to show "significantly
more" than an abstract idea.
Claim 7
Claim 7 is an independent claim to a "computer system" that is similar
in scope to claim 1. Appeal Br. 44 (Claims App.). Claim 7 lists a number of
generic computer components (processors, memories, and storage devices)
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and additionally requires "program instructions to" perform functions
similar to the method steps of claim 1. Id. Such elements are generic and do
not impart patentability.
Appellant repeats, often verbatim, its arguments set forth with regard
to claim 1. Id. at 22-29. We find these arguments unpersuasive for the
reasons set forth above.
Claim 8
Claim 8 depends from claim 7 and adds the same limitation as claim 2
(which depends from claim 1 ). Appellant fails to show error in the
Examiner's determination for the reasons set forth in regard to claim 2.
Claim 9
Claim 9 depends from claim 7 and adds the same limitation as claim 3
(which depends from claim 1 ). Appellant fails to show error in the
Examiner's determination for the reasons set forth in regard to claim 3.
Claim 10
Claim 10 depends from claim 7 and adds the same limitation as claim
4 (which depends from claim 1 ). Appellant fails to show error in the
Examiner's determination for the reasons set forth in regard to claim 4.
Claim 11
Claim 11 adds the same limitation as claim 5. Appellant fails to show
error in the Examiner's determination for the reasons set forth in regard to
claim 5.
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Claim 12
Claim 12 depends from claim 7 and adds the same limitation as claim
6 (which depends from claim 1 ). Appellant fails to show error in the
Examiner's determination for the reasons set forth in regard to claim 6.
Claim 19
Claim 19 depends from claim 1 and further requires that "the
computer determines a reliability of the dielectric material of the
semiconductor device under test." Appeal Br. 47 (Claims App.). This
language is additionally found in the preamble of claim 1. Id. at 43.
The Examiner determined that claim 19 is directed to abstract subject
matter for the same reasons as claim 1, discussed above. Ans. 2-8. The
Examiner further determined that claim 19 was not directed to significantly
more than an abstract idea so as to identify inventive subject matter. Id. at
11. Specifically, the Examiner determined that the additional elements of
claim 19 (beyond those found to be abstract) amount to nothing more than
the recitation of a generic semiconductor testing system using a computer,
instructions to implement an abstract idea by computer, and/or generic
computer structure. Id.
Appellant argues that claim 19 is not directed to abstract subject
matter for the same reasons as claim 1. Appeal Br. 4--20, 21; Reply 2-9, 16.
We find such arguments unpersuasive for the reasons set forth above in
regard to claim 1.
Appellant did not argue that claim 19 includes limitations that amount
to significantly more than an abstract idea (other than by its dependency on
claim 1) in their initial brief. See generally Appeal Br. Accordingly, such
arguments are waived.
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In the interest of completeness, we address Appellant's arguments set
forth in its Reply regarding step 2 of the Alice analysis. Appellant argues
that "generic computers performing generic computer functions in [and] of
itself does not lead to a conclusion of patent ineligibility." Reply 20. This,
of itself, does not identify an inventive concept and is inadequate to show
that the Examiner erred in determining that the claim as a whole fails to
amount to significantly more than an abstract idea.
Appellant further argues that the rejection is incomplete due to the
Examiner's failure to cite prior art to show that the claims features are
routine, conventional and previously known in the industry. Id. As above,
the present decision cites such prior art (and is designated as a new ground
of rejection).
In view of the foregoing, the rejection of claim 19 is affirmed.
Rejection 2: Claims 13-18 and 20 Rejected under 35 USC§ 101
The Examiner rejected claims 13-18 and 20 as not directed to
statutory subject matter. Ans. 17-18. The Examiner additionally rejected
these claims as directed to a judicial exception. Id. at 18-23.
Statutory Subject Matter
Claim 13 and its dependents (claims 14--18 and 20) are directed to
"one or more computer-readable storage media" on which are stored certain
program instructions. Appeal Br. 45--46 (Claims App.). The Examiner
rejected these claims on the basis that they did not fall within one of the four
statutory categories of invention, because the descriptions or expressions of
the programs are not physical "things." Ans. 17.
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The Specification provides that "[c]omputer-readable media may be a
computer-readable signal medium or a computer-readable storage medium."
Spec. i-f 14. The Specification further provides that "[i]n the context of this
document, a computer-readable storage medium may be any tangible
medium that can contain, or store a program for use by or in connection with
an instruction execution system, apparatus, or device." Id. (emphasis
added). The Federal Circuit has indicated that tangible storage media may
be patentable subject matter. See Mentor Graphics Corp. v. EVE-USA, Inc.,
851F.3d1275, 1294 (Fed. Cir. 2017) (holding that a patent claim construed
to include "read-only memory, random-access memory, CD-ROMs,
magnetic tape, optical data storage devices, carrier waves" embraced both
patentable and nonpatentable (carrier waves) subject matter); cf In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) ("A transitory, propagating
signal like Nuijten's is not a 'process, machine, manufacture, or composition
of matter."'). Here, the Specification indicates that the claimed storage
media is tangible. Accordingly, Appellant has shown error in this regard.
Judicial Exceptions
Claims 13-18 and 20 are drafted as "computer program product"
claims but otherwise correspond to claims 1---6 and 19. Appellant offers the
same arguments on appeal of the rejection based on the claims' falling
within the judicial exception for abstract ideas as offered in support of
claims 1---6 and 19. Appeal Br. 3 3--40.
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The Federal Circuit has provided guidance that a claim directed to a
"computer readable medium," despite its format, should be treated no
differently from comparable process claims:
[W]e explained in CyberSource Corp. v. Retail Decisions, Inc.
that we look not just to the type of claim but also "to the
underlying invention for patent-eligibility purposes." 654 F.3d
1366, 1374 (Fed. Cir. 2011). We applied that principle in
concluding that a claim directed to a "computer readable
medium," despite its format, should be treated no differently
from the comparable process claims held to be patent ineligible
under § 101. Id. at 13 7 5. Most recently, in CLS Bank
International v. Alice Corp., we held that the format of the
various method, system, and media claims asserted in that case
"d[id] not change the patent eligibility analysis under§ 101."
685 F.3d 1341, 1353 (Fed. Cir. 2012).
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (US.), 687 F.3d
1266, 1276-77 (Fed. Cir. 2012). Accordingly, we determine claims 13-18
and 20 to fall within a judicial exception to § 101 for the same reasons set
forth with regard to claims 1---6 and 19.
CONCLUSION
The rejection of claims 1-12 and 19 as falling within a judicial
exception to § 101 is affirmed. The rejection of claims 13-18 and 20 as
claiming nonstatutory subject matter is reversed. The rejection of claims
13-18 and 20 as falling within a judicial exception to § 101 is affirmed.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner's Answer, the decision of the
Examiner rejecting claims 1-20 is affirmed.
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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).
We enter a new ground of rejection as to claims 1-20 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:
( 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.
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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.
AFFIRMED; 37 C.F.R. § 41.50(b)
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