Ex Parte Crawford et al

Patent Trial and Appeal Board

Jun 29, 2018

10969767 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/969,767 10/19/2004
20350 7590 07/03/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED ST A TES OF AMERICA
Erik S. Crawford
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.
90945-800959 (013700US) 2553
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIKS. CRAWFORD and THOMAS B. SA YOR
Appeal2017-003264
Application 10/969,767
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the Final
Rejection of claims 13-17, 26, and 30-43, all claims currently pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and ENTER A NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).
Appeal2017-003264
Application 10/969,767
STATEMENT OF THE CASE
Appellants' 1 invention is directed to "system and methods for more
easily paying bills, such as utility bills, by a consumer using point-of-sale
systems." Spec. i-f 4. Claim 13, reproduced below with the disputed
limitations in italics, is representative of the claimed subject matter:
13. A method of facilitating bill payments by a customer, the
method comprising:
registering a customer by a computer system to create a
customer account;
receiving, by the computer system into a database
associated with the computer system, a plurality of bill
information associated with the customer account, the bill
information associated with a plurality of vendors, where at least
one of the plurality of bill information comprises information
associated with a purchase made at a first point of sale terminal;
calculating, by the computer system, a total amount owed
by the customer from the plurality of bill information;
providing, by the computer system, the customer with a
paper billing statement which includes a magnetic strip
containing data indicating the total amount and a transaction
identifier associated with the total amount;
calculating, by the computer system, based on the plurality
of bill information, a pay date for a payment of the total amount
owed by the customer, wherein the calculated pay date is an
earliest due date associated with the plurality of bill information;
subsequent to providing the customer with the total
amount and the transaction identifier, receiving from a second
point of sale terminal, by the computer system into the database
associated with the computer system, a payment record, the
payment record including the transaction identifier received by
1 According to Appellants, The W estem Union Company of Englewood,
Colorado, is the real party in interest. App. Br. 2.
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the second point of sale terminal reading the magnetic strip of
the paper billing statement, and the payment record further
including at least a portion of the total amount associated with
the transaction identifier previously provided to the customer, the
payment record having been generated in conjunction with a
payment made by the customer at the second point of sale
terminal;
apportioning, by the computer system, the payment
amount among the plurality of vendors in accordance with the
plurality of bill information;
transferring, by the computer system, to each of the
plurality of vendors an amount received for each respective
vendor associated with the customer; and
transmitting, by the computer system to the vendors, an
indication that the customer is the source of the transmitted
funds.
REJECTIONS
Claims 13-17, 26, and 30-43 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception without
significantly more. 2 Ans. 14.
Claims 13-16, 26, 30, 31, 34, and 35 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kissner et al. (US 2005/0137948 Al;
published June 23, 2005) ("Kissner") and Meyer et al. (US 2002/0077976
Al; published June 20, 2002) ("Meyer"). 3 Ans. 3.
2 The Examiner's statement of rejection incorrectly lists claims 1-13, 17,
and 26-43, but pending claims should be correctly listed as claims 13-17,
26, and 30-43.
3 The Examiner's statement of rejection incorrectly omits claims 30 and 31,
which are rejected in the body of the rejection, and the statement of the
rejection should be correctly listed as claims 13-16, 26, 30, 31, 34, and 35.
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Claims 17, 32, and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kissner, Meyer, and Antognini et al. (US
2002/0023055 Al; published Feb. 21, 2002) ("Antognini"). Ans. 10.
Claims 36-43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kissner, Meyer, and Siegel et al. (US 2002/0082931 Al;
published June 27, 2002) ("Siegel"). Ans. 11.
ANALYSIS
35 U.S.C. § 101 Rejection
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 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.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner determines the claims are directed to "performing a bill
payment," which is "a fundamental economic practice" and, thereby, an
abstract idea. Final Act. 5.
Appellants argue the Examiner has oversimplified the claims, has not
properly addressed the entirety of the claims, and, therefore, failed to
adequately explain why the claims are an "abstract idea." App. Br. 7-9.
Specifically, Appellants argue that, unlike in Alice, the claimed invention "is
far from such a basic concept" as "intermediated settlement." App. Br.
10-11. Appellants contend the claimed invention, similar to the claims in
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), "are not
directed simply to performing bill payments, but recite specific mechanisms
of facilitating bill payments involving a customer computer system, a first
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point of sale (POS) terminal associated with a purchase, and a second POS
terminal used to pay the bill." Reply Br. 4.
We are not persuaded by Appellants' arguments and find the
Examiner set forth the statutory basis of the rejection in a sufficiently
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the
USPTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies the requirements of 35 U.S.C. § 132). We agree with
the Examiner's determination that the claims are directed to the fundamental
economic practice of performing a bill payment. See Final Act. 5; see, e.g.,
Inventor Holdings, LLC v. Bed Bath & Beyond Inc., 123 F. Supp. 3d 557,
561 (D. Del. 2015), aff'd, 643 F. App'x 1014 (Fed. Cir. 2016) (Mem)
("Following the guidance of Alice and its progeny, the court finds that the
concept of local processing of payments for remotely purchased goods is an
abstract idea ... this concept qualifies as 'longstanding commercial practice'
and a 'method of organizing human activity.' See Alice, 134 S. Ct. at 2356-
57'').
In Enfzsh, the Court held "describing the claims at such a high level of
abstraction and untethered from the language of the claims all but ensures
that the exceptions to§ 101 swallow the rule." Enfzsh, 822 F.3d at 1337-38.
Here, we find the Examiner has not described the claims in a way untethered
from the language of the claims. See Final Act. 3--4. The claimed invention
is directed to "facilitating bill payments" by providing customers with
billing statements that contain transaction information (i.e., transaction
identifier, total amount due, date due) and enabling the customers to provide
payment at point of sale terminals to vendors indicated in the billing
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statement. Appellants have not persuasively explained why the claims are
not directed to an abstract idea.
In the second step of the Alice analysis, we "consider the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo
Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
In other words, the second step is to "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."' Id. (alteration in original) (quoting Mayo, 566
U.S. at 72-73).
The Examiner further determines the additional elements in the claims
do not provide meaningful limitations to transform the abstract idea into a
patent eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself. Ans. 16-19. Specifically,
the Examiner determines that the claimed invention utilizes generic
computer components performing basic functions of storing, retrieving,
processing, and displaying data through the program that enables execution
of the abstract ideas. Ans. 16. According to the Examiner, "[ n ]othing in the
claims, understood in light of the specification, requires anything other than
off-the-shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information." Ans. 18. The
Examiner finds the claimed computer components perform purely generic
computer functions. Ans. 16. The Examiner further finds the claimed
invention does not improve upon an existing prior art system, and instead
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advances "a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions." Ans. 19.
Appellants argue the claimed invention "overcome[ s] the problems of
conventional bill payments by mail via check or money orders, and the
problems of various electronic bill payment services" by "facilitating bill
payment to multiple different vendors from a single point of sale (POS)
terminal of a merchant during a customer purchase." App. Br. 13; see id. at
14. According to Appellants, the claimed invention "reflect[ s] a clear
improvement to the relevant technology and ... [is] an improvement to the
functioning of the computer devices involved." App. Br. 14. Appellants
contend the claimed "operations, taken together, recite a specially
programmed and designed device having features that are beyond 'what is
well understood, and conventional,' which qualifies as significantly more
than an abstract idea." Id. According to Appellants, the claimed
computerized operations using the claimed computer components (i.e.,
computer system, first POS terminal, second POS terminal, vendor systems)
are not a "computer network operating in its normal, expected manner." Id.
at 14--15 (citing DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed.
Cir. 2014)).
We are not persuaded by Appellants' argument and agree with the
Examiner's findings and conclusions. See Final Act. 3-5; Ans. 16-20.
Appellants have not adequately explained how or provided persuasive
evidence to show why the claims add meaningful limits to practicing the
abstract idea.
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We agree with the Examiner that the claims do not improve another
technology or technical field, or functioning of the computer itself, and do
not have meaningful limitations beyond generally linking use of an abstract
idea to a technological environment. See Ans. 16-19. Rather than reciting
additional elements that amount to "significantly more" than the abstract
idea, the pending claims generically recite computer systems with host and
vendor computers. See Spec. ,-r 18. These computers describe generic
computers and functions and do not satisfy the inventive concept. See, e.g.,
DDR Holdings, 773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point" (internal
citation and internal quotation marks omitted)).
Moreover, we disagree with Appellants that the claims in this case are
directed to a computer-centric problem or improves technology or computer
operations. In DDR, the Court found that the claims "do not merely recite
the performance of some business practice known from the pre-Internet
world along with the requirement to perform it on the Internet. Instead, the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257. Unlike the claims in DDR, the claimed invention in
this case does not improve computers as tools, but rather improves
independently abstract ideas that use computers as tools. See Ans. 19 (the
claimed invention advances "a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions").
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The additionally claimed elements of a first point of sale terminal and
a second point of sale terminal do not amount to "significantly more" than
the abstract idea. A point of sale device "may comprise, for example, a
point-of-sale terminal 110 in a store location, physically or wirelessly
coupled with host computer 120," which "comprises a server, a computer, or
the like." Spec. i-f 18. These point of sale terminals, which are claimed to
provide information associated with purchases and payments made at the
terminals, are merely functioning as conventional point of sale terminals.
See Spec. i-f 3 ("a variety of electronic bill payment services have become
available," including "service that permits utility bills to be paid at an agent
location" by collecting the money at the location and "enter[ing] the account
information from the bill statement into a terminal, and then mak[ ing] the
payment electronically").
This case is similar to Electric Power, in which our reviewing court
found the claims patent-ineligible because "[t]he claims at issue do not
require any nonconventional computer, network, or display components, or
even a 'non-conventional and non-generic arrangement of known,
conventional pieces,' but merely call for performance of the claimed
information collection, analysis, and display functions 'on a set of generic
computer components' and display devices." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (citing BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed.
Cir. 2016)). Similarly, the claims in this case merely recite using computers
as tools while collecting information (i.e., the claimed receiving billing
information associated with a purchase at a first point of sale, and receiving
payment record information in conjunction with a payment made), analyzing
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information (i.e., the claimed calculating total amount owed by the customer
and earliest due date from the billing information, and apportioning payment
amount to each of the vendors according to the billing information), and
providing certain results (i.e., the claimed providing a paper billing
statement indicating the billing data, and transferring payment funds to
vendors while indicating the customer is the source of the funds).
To the extent Appellants rely on a lack of prior art (see App. Br. 13),
Appellants misapprehend controlling precedent. Although the second step
in the Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness. Alice, 134 S.
Ct. at 2355. A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 566 U.S. 66 at 78-79. Further,
"under the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016).
With regard to Appellants' preemption argument (see App. Br. 15),
although the extent of preemption is a consideration, the absence of
complete preemption is not dispositive. See, e.g., Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility"); Ultramercial, Inc. v.
Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013) ("[T]he Supreme Court
has stated that, even if a claim does not wholly pre-empt an abstract idea, it
still will not be limited meaningfully if it contains only insignificant or token
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pre- or post-solution activity-such as identifying a relevant audience, a
category of use, field of use, or technological environment") (internal
citations omitted), vacated and remanded, WildTangent, Inc. v.
Ultramercial, LLC, 134 S. Ct. 2870 (2014) (remanding for consideration in
light of Alice, 134 S. Ct. 2347). Accordingly, even if the claims do not
preempt the abstract idea, that alone is not enough to render the claims
patent-eligible.
The claims, when viewed as a whole, perform conventional
processing functions (receiving, analyzing, and displaying data) that courts
have routinely found insignificant to transform an abstract idea into a patent-
eligible invention. As such, the claims amount to nothing significantly more
than an instruction to implement the abstract idea on a generic computer -
which is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 134 S. Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 13-17, 26, and 30-43.
35 U.S. C. § 103 (a) Rejections
Claims 13-17, 30, 32, 34, and 36--39
Issue: Did the Examiner err in finding the combination of Kissner and
Meyer teaches or suggests "providing, by the computer system, the customer
with a paper billing statement which includes a magnetic strip containing
data indicating the total amount and a transaction identifier associated with
the total amount," as recited in independent claim 13?
Appellants contend none of the cited portions of Kissner or Meyer
teaches "a magnetic strip [within a billing statement] containing data
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indicating the total amount and a transaction identifier associated with the
total amount," as recited in claim 13. Reply Br. 2 (citing Meyer i-fi-179, 127).
Specifically, Appellants argue Kissner's printed Anoto pattern is a printed
dot pattern that is not the same as or equivalent to a "magnetic strip
containing data indicating the total amount and a transaction identifier
associated with the total amount." App. Br. 16 (citing Kissner i1 81).
As cited by the Examiner (Adv. Act. 2), Kissner teaches "the bill is
printed using only generic Anoto pattern and includes a traceable code that
is used by the consumer to identifY the particular bill." Kissner i1 81
(emphasis added). As further cited by the Examiner (Ans. 2), Meyer teaches
"[t]o pay the bill, the customer 503 takes the bar-coded invoice to a
participating store (e.g.[,] a supermarket) that processes bill payments. The
customer presents his bar-coded bill remittance stub to the checkout cashier
for scanning at the checkout scanner 504." Meyer i152 (emphasis added).
Meyer further teaches "the scanner 504 picks up the bill payment bar code
that identifies the biller to be paid and the account number to be credited."
Id. (emphasis added). In other words, Kissner teaches using an Anoto
pattern containing transaction information on a billing statement, and Meyer
teaches scanning a bar-code containing transaction information on a billing
statement.
We agree with Appellants that Kissner and Meyer fail to teach a
billing statement that includes data indicating the total amount and a
transaction identifier in a magnetic strip. In both Kissner and Meyer, the
code on the billing statement is scanned optically (i.e., an Anoto pattern, as a
printed dot pattern, and UPC are scanned optically). Both Kissner and
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Meyer are silent to using a magnetic strip (i.e., scanned magnetically)
instead of optically scanned patterns to contain transaction information.
However, Appellants' Specification describes "some or all of the
customer identification and payment amount information is maintained on
billing statement 170, such as in a Universal Product Code (UPC) 174," and
alternatively "a magnetic strip may be provided on billing statement 170
having appropriate information." Spec. i-f 24. According to Appellants'
Specification, "[i]nformation maintained in UPC 174, the magnetic strip,
written or printed on billing statement 170, or the like, may include the
customer identification, the payment amount due (a minimum amount and/or
a total amount), vendor information, and the like." Id. Therefore, as
recognized by Appellants, UPC and a magnetic strip are both known ways to
maintain print transaction information on a billing statement.
"[T]he simple substitution of one known element for another"
generally will be obvious unless the substitution or the application of the
known technique would have been beyond the level of ordinary skill in the
art, or the results of the substitution would not have been predictable by one
of ordinary skill in the art. KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398,
416-17 (2007). "[T]he [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418. We conclude that the
use of a known in the art magnetic strip in place of Meyer's bar code would
have been obvious as mere substitution of one element for another known in
the field. It would not have been "uniquely challenging or difficult for one
of ordinary skill in the art" to maintain transaction information in Meyer in a
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magnetic strip rather than in a bar-code. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citingKSR, 550
U.S. at 419).
Accordingly, we sustain the rejection of independent claim 13 under
35 U.S.C. § 103(a) as being unpatentable over Kissner and Meyer.
However, because our reasoning differs from that of the Examiner, we
designate our affirmance of the rejection as a new ground of rejection.
Appellants do not present arguments for separate patentability of
dependent claims 14--17, 30, 32, 34, and 36-39, which fall with claim 13.
Accordingly, we sustain the rejections of claims 13-17, 30, 32, 34, and 36-
39 under§ 103(a), and designate our affirmance of the rejections as new
grounds of rejection.
Claims 26, 31, 33, 35, and 40--42
Issue: Did the Examiner err in in finding that the combination of
Kissner and Meyer teaches or suggests
provide the customer with a paper billing statement
having a tear away portion which includes a magnetic strip
containing data indicating the total amount and a transaction
identifier associated with the total amount, wherein the tear away
portion may be presented at a second point of sale terminal so
that the first vendor associated with the purchase made at the
first point of sale terminal is not revealed to a second vendor
associated with the second point of sale terminal,
as recited in independent claim 26 (emphasis added)?
The Examiner relies on Meyer's encryption and digital certification
for data providing security to data during transfer, including security means
such as a magnetic physical key, to teach presenting the tear away portion of
the billing statement including the magnetic strip to a second point of sale
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terminal "so that the first vendor associated with the purchase made at the
first point of sale terminal is not revealed to a second vendor associated with
the second point of sale terminal." Ans. 20 (citing Meyer i-f 127).
Appellants contend Meyer only teaches security measures for data
transfers, but does not teach presenting the tear away portion of the billing
statement so that the first vendor is not revealed to the second vendor. App.
Br. 18.
We are persuaded by Appellants' arguments. As Appellants point out
(App. Br. 18), Meyer teaches "one- or two-way data encryption and/or
digital certification for data being input and output, to provide security to
data during transfer ... may comprise security means in the including one or
more of the following ... magnetic or other physical key device." Meyer
,-r 127.
We find the Examiner has not provided sufficient findings that
Meyer's broad provision of "security to data during transfer" necessarily
teaches or suggests the claimed presenting the billing statement such that the
first vendor is not revealed to the second vendor.
Accordingly, we are constrained on the record before us to reverse the
Examiner's§ 103(a) rejection of independent claim 26, along with the
§ 103(a) rejections of dependent claims 31, 33, 35, and 40-42.
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Claim 43
Issue: Did the Examiner err in in finding that the combination of
Kissner and Meyer teaches or suggests
determine from the transaction identifier that the first
vendor is an authorized vendor in a group of authorized vendors
which include the first vendor and the second vendor;
transmit an approval to the second point of sale terminal
upon determining that the first vendor is an authorized vendor,
for display of an approval at the second point of sale terminal of
such authorization,
as recited in independent claim 43 (emphasis added)?
The Examiner relies on Meyer's assigned biller identification number
that is distributed to teach the claimed determining the first vendor is an
authorized vendor in a group of authorized vendors. Ans. 21 (citing Meyer
ii 79).
Appellants contend Meyer only teaches assigning and distributing
biller identification numbers to different billers, but does not teach
determining from the transaction identifier that the first vendor is an
authorized vendor in a group of authorized vendors. App. Br. 18-19.
We are persuaded by Appellants' arguments. As Appellants point out
(App. Br. 18), Meyer describes that an "assigned biller identification number
is acquired or distributed from a central registry authority." Meyer ii 79.
Meyer merely teaches an identification number being assigned to the biller
from a central registry, but is silent to making any determinations about the
first vendor or that assigning an identification number indicates a vendor is
an authorized vendor from a group of authorized vendors.
We find the Examiner has not provided sufficient findings that
Meyer's assigned biller identification number (e.g., transaction identifier
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assigned) teaches or suggests the claimed determining, "from the transaction
identifier[,] that the first vendor is an authorized vendor in a group of
authorized vendors."
Accordingly, we are constrained on the record before us to reverse the
Examiner's§ 103(a) rejection of independent claim 43.
DECISION
The Examiner's rejection of claims 13-17, 26, and 30-43 under 35
U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 13-17, 30, 32, 34, and 36-39
under 35 U.S.C. § 103(a) are affirmed. We designate our affirmance of the
rejections of claims 13-17, 30, 32, 34, and 36-39 as NEW GROUNDS OF
REJECTION so as to provide Appellants with a full and fair opportunity to
respond to the thrust of the rejection.
The Examiner's rejections of claims 26, 31, 33, 35, and 40-43 under
35 U.S.C. § 103(a) are reversed.
This decision contains a new ground of rejection of claim 13 pursuant
to 37 C.F.R. § 41.50(b) (2011). Section 41.50(b) provides that "[a] new
ground of rejection ... shall not be considered final for judicial review."
Section 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 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
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reheard under §41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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