Ex Parte Gobbi et al

Patent Trial and Appeal Board

Jun 25, 2018

12811515 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/811,515 07/01/2010 Carlotta Gobbi
4372 7590 06/27/2018
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
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.
108907.00063 8213
EXAMINER
LOVE, TREVOR M
ART UNIT PAPER NUMBER
1611
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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CARLOTTA GOBBI, LUCIO BASSETTI,
and VALERIO BORZA TT A 1
Appeal2017-006760
Application 12/811,515
Technology Center 1600
Before JOHN G. NEW, ELIZABETH A. LA VIER, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a method for regulating the release rate of microencapsulated
actives. 2 The Examiner's rejections of claims 1-3, 6-16, 18, and 19 under
35 U.S.C. § 102(b) and§ 103(a) are appealed. We have jurisdiction under
35 U.S.C. § 6(b).
1 The Real Party in Interest is identified as "ENDURA S.p.A." Appeal Br.
2. Appellants' Appeal Brief is not paginated; therefore, we refer to the
pages therein based on the respective table of contents, which identifies page
2 as the first substantive page thereafter, and then counting.
2 We have considered and herein refer to the Specification of July 1, 2010
("Spec."); Final Office Action of Jan. 22, 2016 ("Final Action"); Appeal
Brief of Sept. 20, 2016 ("Appeal Br."); Examiner's Answer of Dec. 29, 2016
("Answer"); and Reply Brief of Feb. 28, 2017 ("Reply Br.").
Appeal2017-006760
Application 12/811,515
We reverse and add new grounds of rejection under 35 U.S.C. §112,
first and second paragraphs, and§ 103(a), pursuant to our authority under
37 C.F.R. § 41.50(b).
STATEMENT OF THE CASE
The Specification states "the present invention relates to the use of
piperonylbutoxide (PBO) in formulations comprising actives in agronomical
field, in particular insecticides, acaricides, fungicides, snailicides,
antihelminthics and herbicides, as modulator of the release rate of the
active." Spec. 1. The Specification further states "[i]t is known that the use
of synergic substances, as for example piperonylbutoxide (PBO) can
influence the insecticide-, acaricide-, fungicide-, snailicide-, anti-helminthic-
and herbicide-activity in vitro and/or in vivo." Id. Further, it states
It has been suggested to carry out a previous treatment
with the synergic product at various times before treating the
harm[ fJul species with the actives, in order to get the better
synergic activities, especially in the presence of high resistance
by harmful species to actives. In this way the actives can develop
their full activity as the harmful species are already sensitized
and with weakened self-defence [sic] properties.
Id. at 1-2. The Specification further states "[ m ]icroencapsulated
formulations of insecticides, fungicides, snailicides, acaricides,
antihelminthics, herbicides and their process of preparation are known in the
prior art." Id. at 2. Further, "[s]ome microencapsulated actives in
association with synergic agents are described, for example, in patent
application WO 2006/111,553." Id.
The Specification's cited international patent application publication
WO 2006/111,553 (pub. Oct. 26, 2006) (the "'553 publication"), noted
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supra, discloses two formulations containing an active component, such as
the pyrethroid bifenthrin, and a synergistic compound, such as PBO. '553
publication 7-8. Embodiments of these two formulations are illustrated at
Figures 1 and 2 of the '553 publication, which are reproduced below:
Figure 1 Figure 2
Figure 1 (above left) shows
a) a concentrated aqueous microcapsule suspension containing
component (A) [the active component] is prepared by interfacial
polymerisation in a water/oil mixture in the presence of the
required quantity of component A, the surfactant and the
necessary quantities of suitable monomers and co-monomers of
the encapsulating polymer;
b) component (B) [the synergistic compound] and further
quantities of the surfactant and suitable monomers and co-
monomers of the encapsulating polymer are added to the
concentrated aqueous microcapsule suspension obtained in (a),
the latter being subjected to further encapsulation.
c) the microcapsules obtained in (b) can be recovered and
stored in water or in any other suitable solvent which does not
dissolve the microcapsule wall, or in an
emulsion/microemulsion containing further amounts of
component B.
Id. at 9-10 (emphasis added). Figure 2 (above right) shows:
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Application 12/811,515
a) a concentrated aqueous suspension of microcapsules
containing components (A) [active component] and (B)
[synergistic component] is prepared by interfacial
polymerisation in a water/oil mixture in the presence of the
required quantities of components (A) and B, the surfactant and
the necessary quantities of suitable monomers and co-monomers
of the encapsulating polymer
b) the emulsioned/microemulsioned component (B) (in such a
quantity that at least 50% of the total (B) present in the final
formulation is contained in the emulsion/microemulsion) and
other additives useful for the specific application are added to
the concentrated aqueous suspension of microcapsules
obtained in (a), to obtain theformulative composition of figure
2, ready for use.
The presence of encapsulated component (B) can have various
functions useful for the application: for example modulating
even more precisely the release time of component A, for the
same encapsulating membrane; sensitising damaging species
which may have resisted initial contact with component B;
possibility of using two different synergists when considered
necessary.
Id. at 10 (emphases added); see also id. at 11-13 (Example 1). The '553
publication discloses that "a formulation based on bifenthrin+ PBO
microencapsulated in polyurea (PU) and microemulsified PBO" is prepared
by a method including first providing microencapsulated bifenthrin and
PBO, to which is added a mix of PBO and emulsifier, ultimately resulting in
a formulation of 3-10 µm microcapsules of bifenthrin and PBO surrounded
by a PBO emulsion, overall containing 10% PBO and 2% bifenthrin, in
water (~74%). Id. at 11-13. This formulation was disclosed as delaying the
release of the bifenthin for 6 hours. Id. at 21 (table).
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Independent claim 1 is representative and is reproduced below:
1. A method for regulating the release rate of
microencapsulated actives comprising:
la) addition or subtraction of piperonylbutoxide (PBO),
component B) to formulation A), wherein formulation A)
comprises at least one microencapsulated active having
agrochemical activity and PBO outside the microcapsule, and
2a) dilution by water of formulation A) and/or component
B) until the active application dose is achieved, wherein the PBO
addition or subtraction allows to modulate the release rate of the
active from the microcapsules,
the ratio by weight PBO/active ranges from 0.1 to 80,
wherein the addition of PBO (component B) ranges from
20% to 600% by weight of the PBO outside the microcapsule of
formulation A).
Appeal Br. 15 (Claims App'x).
The following rejections are appealed:
Claims 1-3, 6-16, 18, and 19 are rejected under 35 U.S.C. § 102(b) as
anticipated by Giberti. 3 Final Action 3.
Claims 1-3, 6-8, 11, 12, 14--16, 18, and 19 stand rejected under 35
U.S.C. § 103(a) over Technical Guide4 and MSDS. 5 Id. at 6.
Claims 1-3, 6-12, 16, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) over Technical Guide, MSDS, and Piccolo. 6 Id. at 8.
3 WO 2006/111839 Al (pub. Oct. 26, 2006) ("Giberti").
4 Whitmire Micro-Gen Research Laboratories, Inc., Technical Guide,
Prescription Treatment® Brand 1600 X-clude® (2001) ("Technical Guide").
5 Whitmire Micro-Gen Research Laboratories, Inc., Material Safety Data
Sheet, Prescription Treatment® brand 1600 X-clude® Timed Release
Pyrethrum (2005) ("MSDS").
6 WO 2005/039287 A2 (pub. May 6, 2005) ("Piccolo").
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Claims 1-3, 6-8, 11-13, 16, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) over Technical Guide, MSDS, and Taranta. 7 Id. at 10.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference." In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009).
Regarding obviousness, "the 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." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). "In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls. What matters is the objective reach of the claim. If
the claim extends to what is obvious, it is invalid under§ 103." Id. at 419.
ANTICIPATION
The Examiner determined that the appealed claims are anticipated by
Giberti. Final Action 3-5; Answer 3--4.
Appellants argue the claims as a group, discussing only independent
claim 1. Appellants argue that Giberti' s Example 1 (cited by the Examiner),
which "discloses the preparation of a microcapsule suspension wherein the
7 WO 2005/074685 Al (pub. Aug. 18, 2005) ("Taranta").
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microcapsules contain cypermethrin together with PBO" and then "[t]o the
microcapsule dispersion is added a microemulsion containing PBO, and then
water," discloses only "formulation A) as defined in pending claim 1."
Appeal Br. 9.
The claim recites providing a "formulation A)," where that
"formulation A) comprises at least one microencapsulated active having
agrochemical activity and PBO outside the microcapsule," and the step of
"addition or subtraction of piperonylbutoxide (PBO), component B) to
formulation A)." Thus, the claimed method requires there be a formulation
where there is initially some PBO outside a microencapsulated active
compound, to or from which is added or subtracted PBO. Appellants'
interpretation of Giberti is not entirely accurate because Giberti discloses
adding a microcapsule dispersion of a-cypermethrin and PBO to a
microemulsion of PBO. Thus, Giberti does not disclose that PBO is initially
a part of this microcapsule dispersion (outside the microcapsules of active)
or that after the microcapsule dispersion is mixed with the PBO
microemulsion, PBO is then added or subtracted from the mixture. For
these reasons, we conclude Giberti does not anticipate claim 1.
OBVIOUSNESS
The Examiner determined that the claims would have been obvious
over the combination of Technical Guide and MSDS, also adding Piccolo or
adding Taranta to the prior art combination with respect to certain dependent
claims. Final Action 6-8.
Appellants argue "[t]he Examiner alleges that 'Technical Guide,
while teaching the instant method steps, does not directly identify whether
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the PBO is inside or outside the microcapsule.' (Office Action, page 7)
(emphasis added)." Appeal Br. 10. Further, Appellants argue
nowhere does Technical Guide disclose or suggest the location
of the PBO, whether inside or outside the microcapsules.
Appellant further notes that the Examiner has admitted that the
reference does not directly identify whether the PBO is inside or
outside the microcapsule. (Office Action, page 7). Thus, the
skilled technician reading Technical Guide would not know
whether the PBO has been added inside or outside the
microcapsules.
Id. at 11.
As we concluded supra, the claims require providing a formulation
having PBO outside of a microencapsulated active compound (to or from
which PBO is added or subtracted). Neither Technical Guide nor MSDS
teaches or suggests this. Each reference merely indicates that an active
ingredient is microencapsulated and that PBO is provided as a synergist.
Therefore, we reverse the obviousness rejections, each of which relies upon
these references for such a teaching.
NEW GROUNDS OF REJECTION
WRITTEN DESCRIPTION UNDER 35 USC§ 112, FIRST PARAGRAPH
"[A Jn invention may be enabled even though it has not been
described." University of Rochester v. G.D. Searle & Co., 358 F.3d 916,
921 (Fed. Cir. 2004). A description adequate to satisfy 35 U.S.C. § 112,
first paragraph,
must "clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed." In other
words, the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the
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art that the inventor had possession of the claimed subject matter
as of the filing date.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane) (citation omitted, alteration in original). "[W]hile the description
requirement does not demand any particular form of disclosure, or that the
specification recite the claimed invention in haec verba, a description that
merely renders the invention obvious does not satisfy the requirement." Id.
at 1352 (citations omitted).
"Put another way, one skilled in the art, reading the original
disclosure, must immediately discern the limitation at issue in the claims."
Purdue Pharma L.P. v. Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir.
2000). "When no such description can be found in the specification, the
only thing the PTO can reasonably be expected to do is to point out its
nonexistence." Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)
(citation omitted).
Claim 1 recites "la) addition or subtraction of piperonylbutoxide
(PBO), component B) to formulation A), wherein formulation A) comprises
at least one microencapsulated active having agrochemical activity and PBO
outside the microcapsule, and" also recites "the ratio by weight PBO/active
ranges from 0.1 to 80." Appeal Br. 15 (emphasis added). As argued by
Appellants throughout their brief and discussed supra, the claimed method
requires that there be some PBO present in claimed "formulation A" outside
a microencapsulated active (to which PBO is added/subtracted). However,
regarding ratios of PBO-to-active, the Specification states the following:
In formulations A) the ratio by weight PBO/active preferably
ranges from 1 to 50, more preferably from 5 to 30, still more
preferably from 10 to 20.
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Component B) is always added (or subtracted) to the formulation
A) in order to have a variation of the active release rate from the
microcapsule according to the test described in the Examples.
Generally the PBO addition preferably ranges from 20% to 600%
by weight of the PBO outside the microcapsule of formulation
A).
For formulations A) not containing PBO outside the
microcapsule, the addition of component B) is such to bring the
PBO/active ratio by w from 0.1 to 80, preferably 1 to 40, more
preferably 3 to 20.
Spec. 4 (emphasis added).
Appellants' Specification very clearly identifies the claimed ratio
range of PBO-to-active of 0.1 to 80 as relating to an embodiments not
containing PBO outside the microcapsule. The claim indisputably requires
otherwise. Thus, the claimed method is not disclosed in the Specification.
For the reasons above, we reject claims 1-3, 6-16, 18, and 19 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
INDEFINITENESS UNDER 35US.C.§112, SECOND PARAGRAPH
"'A claim is indefinite when it contains words or phrases whose
meaning is unclear,"' i.e., "ambiguous, vague, incoherent, opaque, or
otherwise unclear in describing and defining the claimed invention." In re
Packard, 751F.3d1307, 1310-13 (Fed. Cir. 2014); see also MPEP
§ 2173.02(1) (Rev. 07.2015, Nov. 2015) (advising examiners that a rejection
for indefiniteness is appropriate "after applying the broadest reasonable
interpretation to the claim, if the metes and bounds of the claimed invention
are not clear"). In resolving an indefiniteness issue, we ask whether one of
ordinary skill in the art would understand what is claimed when the claim is
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read in light of the Specification. Power-One, Inc. v. Artesyn Techs., Inc.,
599 F.3d 1343, 1350 (Fed. Cir. 2010).
As explained in the MPEP § 2173 .05( e ), a "lack of clarity could arise
[for example] where a claim refers to 'said lever' or 'the lever,' where the
claim contains no earlier recitation or limitation of a lever and where it
would be unclear as to what element the limitation was making reference."
This is an illustration of how the failure to provide adequate antecedent basis
for claim elements can render a claim indefinite as unclear.
"[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite." Ex
parte Miyazaki, 89 U.S.P.Q.2d 1207, 2008 WL 5105055, at *5 (BPAI 2008)
(precedential).
Regarding claim 1, the claim terms "the microcapsule" in step 1 a, "the
microcapsules" in step 2a, and "the microcapsule" in the last clause of the
claim each lacks antecedent basis. Nowhere preceding these references is a
structure identified as a microcapsule (singular or plural) introduced.
Further, claim 1 recites "addition or subtraction of piperonylbutoxide
(PBO), component B) to formulation A)." Claim examination is not an
examination in grammar, but it is unclear from this claim language,
particularly due to the placement of the comma, whether "component B" is
PBO or whether "component B" is some component in addition to PBO.
Further, claim 1 recites "the ratio by weight PBO/active ranges from
0.1 to 80." As discussed above, the claim requires that there is some PBO
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initially in the claimed formulation A, that some amount of PBO may be
added thereto, and, necessarily, that there will ultimately be some amount of
PBO in the entire composition. It is unclear to which of these three
transitioning PBO amounts the claimed ratio refers.
Moreover, claim 1 recites "the addition of PBO (component B) ranges
from 20% to 600% by weight of the PBO outside the microcapsule of
formulation A)." It is unclear whether this claimed range of percentages
refers to the amount of PBO added to the composition or to the ultimate
amount of PBO in the composition after adding PBO.
For each of the reasons above, the claims are ambiguous, vague,
incoherent, and opaque. Therefore, we reject claims 1-3, 6-16, 18, and 19
under 35 U.S.C. § 112, second paragraph, as indefinite.
OBVIOUSNESS
In making the new obviousness rejection set forth below, in view of
the indefiniteness rejection presented above, we interpret the claim
limitations identified above as ambiguous, vague, incoherent, and/or opaque
as follows:
we interpret the microcapsule(s) claim elements to
microcapsule(s) contammg the claimed active
agrochemical activity;
we interpret component B to be PBO;
refer to
having
we interpret the claimed ratio of PBO/active of 0.1to80 to refer
to the amounts of such components in the ultimate composition;
and
we interpret the claimed PBO ranging from 20% to 600% to refer
to an amount of PBO added based on a percentage of the amount
of PBO initially outside the microcapsule of formulation A.
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We conclude these interpretations are consistent with the broadest
reasonable interpretation of the claims in view of the Specification and are
reasonable in view of Appellants' arguments on appeal and the Examiner's
determinations in the Final Action and Answer. See generally Spec.; see
Appeal Br. 6-13; see Final Action 3-8; see Answer 3-5.
If a claim is subject to two interpretations and one interpretation
would render the claim unpatentable over the prior art, it is proper for the
Office to enter both a 112, 2nd rejection and a prior art rejection based on an
interpretation of the claim. Ex parte Ionescu, 222 USPQ 537 (BP AI 1984);
see also Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991)
(exercising discretion to reach art rejections despite indefiniteness where
nature of case permitted).
We concluded above that Giberti does not anticipate claim 1 because
it does not disclose adding PBO to (or subtracting it from) a formulation of a
microencapsulated active already having PBO outside a microcapsule.
Generally, the method taught and suggested by Giberti and the method of
claim 1 are illustrated by the following figures:
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Giberti Example 1
water
Claim 1 method
•• )
The figure above at top illustrates Giberti' s Example 1 where a
microencapsulated active ( 6. 7 g) and PBO ( 6. 7 g) formulation dispersed in
water is added to a microemulsion of PBO (16.2 g), to which further water is
added (resulting in adding about 242% PBO, respective of the original
amount present, to the microencapsulation formulation and an ultimate ratio
of PBO/active of3.4:1). The second figure above at bottom shows the
method of claim 1 where a formulation of microencapsulated active
(formulation A) has some PBO outside a microcapsule of active compound,
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to which is added PBO and water. It would have been obvious in view of
Giberti's Example 1 to add the PBO microemulsion to the
microencapsulated active and PBO formulation rather than adding the
microencapsulation to the microemulsion, as illustrated above. There is
essentially no difference. Doing so would be within the scope of the method
of claim 1 because after any PBO of the microemulsion is added to the
microencapsulation there is necessarily PBO outside the microcapsule(s), to
which more PBO is added.
Further supporting the obviousness of this modification, for example,
Appellants' Specification describes:
The PBO (component B)) can be added to formulations
A), or viceversa, and then water is added until obtaining the
active application dose. Alternatively water can be added to
formulations A) and/or to component B) and then mixing.
The application dose is well known to the skilled in the art,
depending on the active and/or the employments.
Spec. 8 (emphasis added). The Specification does not describe the
embodiment where PBO is added to formulation A as critical, or even
producing a different result from the other embodiment. Thus, the direction
the components are poured/ added with respect to one another is a distinction
without difference.
"If a person of ordinary skill can implement a predictable variation [of
a known work],§ 103 likely bars its patentability." KSR, 550 U.S. at 417.
The obviousness analysis "can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." Id. at 418. "A
person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 421.
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Such an addition of PBO microemulsion to an active
microencapsulation formulation is taught and suggested by the '553
publication. The '553 publication, as discussed supra in the Statement of
the Case, teaches and suggests: (1) providing a formulation of
microencapsulated bifenthrin and PBO; (2) adding PBO to this formulation;
(3) adding water to achieve a desired dose; ( 4) ultimately the ratio of PBO to
active is 5: 1; and ( 6) the composition is expected to and results in
modulating the release of the active. '553 publication 10-13, 21 (table).
"It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable." In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Here, it may not have been
explicitly recognized how adding the PBO to the microencapsulated active
formulation would control the delayed release of the active in use; however,
the '553 publication teaches and suggests modifying the process disclosed
by Giberti to be the method of claim 1 and states "[t]he presence of
encapsulated component (B) can have various functions useful for the
application: for example modulating even more precisely the release time of
component A," which suggests a role for PBO in regulating active release
from microcapsules. '553 publication 10.
For the reasons above, we reject independent claim 1 under 35 U.S.C.
§ 103(a) as obvious over Giberti and the '553 publication, individually or in
combination. As the Board's function is primarily one of review, we leave
to the Examiner any further determination as to whether the related
dependent claims are also unpatentable in view of this new ground of
rejection or otherwise.
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SUMMARY
The anticipation rejection is reversed.
The obviousness rejections are each reversed.
Claims 1-3, 6-16, 18, and 19 are herein rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Claims 1-3, 6-16, 18, and 19 are herein rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite.
Claim 1 is herein rejected under 35 U.S.C. § 103(a) as obvious over
Giberti and/or the '533 publication.
TIME PERIOD FOR RESPONSE
This Decision contains more than one new ground of rejection
pursuant to 3 7 C.F .R. § 41. 50(b ), which 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:
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 amend-
ment 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
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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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED
37 C.F.R. § 41.50(b)
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