Ex Parte Hornsby et al

Board of Patent Appeals and Interferences

Jan 29, 2009

10499928 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC ROWLES HORNSBY, JAMES EDWARDS, and
JOHANNES GERARDUS VAN ROON
____________

Appeal 2008-2611
Application 10/499,928
Technology Center 3600
____________

Decided: January 29, 2009
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Eric Hornsby et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-8, 14-21, and 23-25. Claims 9-13
and 22 were previously cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).

THE INVENTION
The Appellants’ claimed invention is a liner panel comprised of semi-
rigid material interposed between two layers of flexible material. Claims 1
and 17, reproduced below, are representative of the subject matter on appeal.
1. A liner panel comprising a laminate of:
a first layer of paper;
a second layer of paper; and
a semi-rigid foam material interposed between
the first and second layers of paper,
wherein at least a portion of the laminate has
been crushed to provide at least a portion of the
laminate with a reduced thickness.

17. An internal liner panel comprising a laminate
of:
a first layer of paper sheet;
a first layer of semi-rigid foam material;
a second layer of paper sheet;
a second layer of semi-rigid foam material;
and
a third layer of paper sheet,
wherein the first, second and third layers of
paper sheet are of identical weights and the first
and second layers of semi-rigid foam material are
identical materials and are of the same thickness.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
MacPhail US 3,459,274 Aug. 5, 1969
Hartzell US 3,522,140 Jul. 28, 1970
Della-Donna US 4,157,638 Jun. 12, 1979
The Appellants seek our review of the following rejections:
1. Claims 1-4, 7, 8, 14, 15, 17, 19, and 20 under 35 U.S.C. 102(b) as
anticipated by Della-Donna.
2. Claim 5 under 35 U.S.C. 103(a) as unpatentable over Della-Donna.
3. Claims 6 and 18 under 35 U.S.C. 103(a) as unpatentable over Della-
Donna in view of Hartzell.
4. Claim 16, 21, and 23-25 under 35 U.S.C. 103(a) as unpatentable over
Della-Donna in view of MacPhail.

ISSUES
The Examiner found that claims 1-4, 7, 8, 14, and 15 were anticipated
by Della-Donna, claim 5 was unpatentable over Della-Donna, and claim 6
was unpatentable over Della-Donna and Hartzell. Ans. 3-5. Appellants
contend that Della-Donna does not disclose a portion of the laminate with a
reduced thickness and would not have led one having ordinary skill in the art
to the claimed laminate with at least a portion having a reduced thickness.
App. Br. 8-11 and 13-15.
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The first issue before us is:
Have Appellants shown that the Examiner erred in rejecting claims
1-8, 14, and 15 because Della-Donna does not disclose or suggest at least a
portion of the laminate with a reduced thickness?
The Examiner found that claims 17, 19, and 20 were anticipated by
Della-Donna and claim 18 was unpatentable over Della-Donna and Hartzell.
Ans. 4-5. Appellants contend that the prior art does not disclose the three
paper layers of the laminate having identical weight. App. Br. 11-15.
The second issue before us is:
Have Appellants shown that the Examiner erred in rejecting claims
17-20 because the prior art does not teach or suggest the three paper layers
of the laminate having identical weight?
The Examiner found that claims 16, 21, and 23-25 were unpatentable
in view of Della-Donna and MacPhail. Ans. 5-7. Appellants contend that
the prior art does not teach at least a portion of the laminate having a
reduced thickness, and that a person of ordinary skill in the art would not
have combined these references because the crushing method of MacPhail
would have damaged the tabs of the laminate of Della-Donna making the
laminate unsuitable for its intended purpose. App. Br. 16-18.
The third issue before us is:
Have Appellants shown that the Examiner erred in rejecting claims
16, 21, and 23-25 because the combined teachings of the prior art would not
have led one having ordinary skill in the art to the claimed laminate having a
reduced thickness?
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FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Della-Donna discloses a building structure for use in the
construction of concrete buildings. Della-Donna, col. 1, ll. 6-7.
2. Building structure 10 includes two exterior panels 12, 14, each
made of a lightweight relatively inexpensive material such as
cardboard or paperboard, each panel having a substantially quadrate
shape. Della-Donna, col. 2, ll. 33-37.
3. Between the two exterior panels is interior panel 16 made of an
insulated material with a generally foam structure such as
polyurethane or polystyrene foam, and of generally the same width
and length as exterior panels 12, 14. Della-Donna, col. 2, ll. 37-41.
4. Exterior panels 12, 14 are attached to interior panel 16 by
means such as glue or staples. Della-Donna, col. 2, ll. 47-52.
5. Alternatively, interior panel 16 may be comprised of two foam
interior panels (interior panels 17, 17’), with a lightweight relatively
inexpensive material (interior panel 18) disposed between interior
panels 17, 17’. Della-Donna, col. 2, ll. 44-47.
6. Interior foam panels 17, 17’ are attached to interior panel 18 by
means such as glue or staples. Della-Donna, col. 2, ll. 47-52.
7. While Della-Donna discloses that both exterior panels 12, 14
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and interior panel 18 are made of the same general type of material
(“lightweight relatively inexpensive material”), Della-Donna does not
expressly disclose that interior panel 18 has identical weight to
exterior panels 12, 14. Nothing in Della-Donna’s disclosure suggests
that panel 18 must have the same weight as panels 12, 14. Della-
Donna, col. 2, ll. 32-47.
8. Exterior panels 12, 14 have tab portions 20, 22 along a first
edge of the panel disposed so that tab portion 20 fits along the vertical
edge of a concrete base (or the like), and tab portion 22 fits the
horizontal edge of a concrete case (or the like). Della-Donna, col. 2, ll.
53-62; Fig. 2.
9. Exterior panels 12, 14 have tab portion 24 extending past
interior panel 16 along a second edge that is perpendicular to the first
edge that has tabs 20, 22. Della-Donna, col. 2, ll. 53-62; Fig. 1.
10. In one embodiment, panels 12, 14 have tab portions along all
four edges, so that tabs 20 and 22 are along the lower edge, tab
portions 24 and 24’ are along the side (vertical) edges and tab portions
25 are along the top edge. Della-Donna, col. 2, ll. 63-66; Fig. 1, 2.
11. In the embodiment that has a single interior panel 16, a groove
26 extends along the edges of interior panel 16. Della-Donna, col. 3,
l. 1; Fig. 2.
12. In the embodiment that has three interior panels (i.e. 17, 17’,
and 18), interior panel 18 is slightly smaller in length and width than
interior panels 17, 17’ so that groove 26 is formed. Della-Donna, col.
3, ll. 12-17; Fig. 2.
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13. In both the single interior panel and triple interior panel
embodiments, groove 26 is sized to permit tab portions (20, 22, 24,
24’, and 25) to be folded into the groove so that there are no
protruding tab portions. Della-Donna, col. 3, ll. 1-17; Fig. 2.
14. Tab portions (20, 22, 24, 24’ and 25) can be folded to fit into
groove 26 during shipment to prevent bending or mangling the tabs,
and may be selectively unfolded as desired for construction. Della-
Donna, col. 3, ll. 5-12.
15. Della-Donna does not disclose any of interior panels (16, 17,
17’, 18) or exterior panels (12, 14) having a portion with a reduced
thickness. Della-Donna, passim.
16. MacPhail discloses a process for crushing construction
materials comprising foamed thermoplastic resins (especially
polystyrene) to improve acoustical characteristics. MacPhail, col. 1, ll.
29-32; ll. 57-60; col. 2, ll. 33-34.
17. MacPhail teaches the process is useful for construction
materials such as panels for wall construction:
Although, any form of foamed thermoplastic
material may be partially compressed in
accordance with this invention to improve its
acoustical characteristics, preferably the
foamed materials are in a form suitable for
direct use as construction materials such as a
foam sandwich where the foamed material is
enclosed between liner board facings which
support the internal foam structure and enable
the production of building elements for use in
the construction of walls, ceilings, floor units,
and the like.
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MacPhail, col. 2, ll. 15-24.
18. Appellants do not present any argument or evidence that
crushing of the laminate panel produced unexpected results. Spec.,
passim; App. Br., passim; Reply Br., passim.
19. Appellants do not present any argument or evidence that using
the crushing method of MacPhail on the panel of Della-Donna is
beyond the skill of a person of ordinary skill in the art. App. Br.,
passim; Reply Br., passim.

PRINCIPLES OF LAW
Appellants’ Burden
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Teaching Away
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference would be led in a direction divergent from the path that
was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001). “[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
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to be nonobvious.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S.
Ct. 1727, 1740 (2007) (citing United States v. Adams, 383 U.S. 39, 51-52
(1966)).
ANALYSIS
1. Claims 1-4, 7, 8, 14, 15, 17, 19, and 20 under 35 U.S.C. 102(b) as
anticipated by Della-Donna.
Claim 1
Independent claim 1 requires that at least a portion of the laminate
have a reduced thickness. As outlined below, Della-Donna does not disclose
this aspect of the claim.
Della-Donna discloses a substantially quadrate shaped panel
comprised of five layers: two stiff exterior panels, two interior foam panels
interposed between the exterior panels and a central stiff lightweight panel
interposed between the interior foam panels (Facts 1, 2, 5). In one
embodiment, foldable tabs (20, 22, 24, 24’ 25) extend along all four edges of
the building panel that may be folded in during shipping and selectively
unfolded for construction (Facts 8-10, 14). These tabs fold into groove 26,
which is sized for that purpose (Fact 13). In this embodiment, groove 26 is
formed by the interior panel 18 being slightly smaller in length and width
than the adjoining foam panels 17, 17′ (Fact 12). Della-Donna does not
disclose a portion of the laminate having a reduced thickness (Fact 15).
The rejection does not point to any support in Della-Donna’s
specification for at least a portion of the panel having a reduced thickness;
rather, the rejection finds that Figure 2 shows that exterior panel 12 has a
reduced thickness at “the edges at 25” (Ans. 4). This is inaccurate. What
the rejection is referring to as a reduced thickness is in fact groove 26.
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Figure 2 is a cross sectional view of Della-Donna’s panel, showing tab
portion 25 folded into groove 26 (Fact 13). Della-Donna does not disclose a
portion of the laminate having a reduced thickness to form the groove;
rather, the groove is formed by the central panel being slightly smaller in
length and width than the adjoining panels (Facts 12, 15).
Because Della-Donna does not disclose each element of the claim,
Della-Donna does not anticipate claim 1. Verdegaal Bros. v. Union Oil Co.
of California, 814 F.2d 628, 631 (Fed. Cir. 1987). The rejections of claims
2-4, 7, 8, 14, and 15 likewise fall by virtue of their dependence on claim 1.

Claim 17
Independent claim 17 includes the limitation that the three paper
layers must be of identical weight. Della-Donna does not disclose this
feature of the claim.
Della-Donna discloses a substantially quadrate shaped panel that
includes three paper layers: exterior panels 12, 14 and interior panel 18
(Facts 2, 5, 7). While Della-Donna describes that both exterior panels 12,
14, and interior panel 18 are formed of “lightweight relatively inexpensive
material,” this does not mean that panel 18 is of an identical weight to
exterior panels 12, 14 (Fact 7).
In addition, Della-Donna does not inherently disclose that panel 18 is
the same weight as panels 12, 14. Nothing in Della-Donna’s disclosure
suggests that panel 18 must necessarily have the same weight as panels 12,
14 (Fact 7). Because it is not necessarily true that panel 18 has the same
weight, that characteristic is not inherent. In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349 (Fed. Cir. 2002); see also In re Robertson, 169 F.3d
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743, 745 (Fed. Cir. 1999) (“Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.”).
Because Della-Donna does not teach each element of the claim, Della-
Donna does not anticipate claim 17. Verdegaal Bros. v. Union Oil Co. of
California, 814 F.2d 628, 631 (Fed. Cir. 1987). Claims 19 and 20 are also
not anticipated by Della-Donna by virtue of their dependence on claim 17.

Claim 5 under 35 U.S.C. 103(a) as being unpatentable over Della-Donna.
Claim 5 depends from claim 1, adding the further limitation that the
thickness of the laminate is approximately 20mm. The rejection of claim 5
suffers from the same shortcoming as the rejection of claim 1 analyzed
supra, namely, that Della-Donna does not disclose a panel having at least a
portion with a reduced thickness. Further, the Examiner has not provided
any reason why one having ordinary skill in the art, in view of the teaching
of Della-Donna, would have been led to modify Della-Donna’s panel to
have at least a portion with a reduced thickness. For these reasons, this
rejection also cannot be sustained.

2. Claims 6 and 18 under 35 U.S.C. 103(a) as unpatentable over Della-
Donna in view of Hartzell.
Claim 6
Claim 6 depends from claim 1, adding the further limitation of
attaching the sheets of laminate using a fire retardant bonding agent or
adhesive. The rejection of claim 6 suffers from the same shortcoming as the
rejection of claim 1 analyzed supra, namely, that Della-Donna does not
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disclose a panel having at least a portion with a reduced thickness. Further,
the Examiner has not provided any reason why one having ordinary skill in
the art, in view of the combined teachings of Della-Donna and Hartzell,
would have been led to modify Della-Donna’s panel to have at least a
portion with a reduced thickness. While the Examiner’s reasoning might
explain why one of ordinary skill in the art might have selected a particular
overall finished foam thickness suitable to provide a desired degree of
insulation, the Examiner’s reasoning does not explain why one of ordinary
skill in the art would have selected a material having at least a portion with a
reduced thickness. For these reasons, the rejection of claim 6 also cannot be
sustained.

Claim 18
Claim 18 depends from claim 17, adding the further limitation of
attaching the sheets of laminate using a fire retardant bonding agent or
adhesive. The rejection of claim 18 suffers from the same shortcoming as
the rejection of claim 17 analyzed supra, namely, that Della-Donna does not
disclose a panel having three paper layers of identical weight. Further, the
Examiner has not provided any reason why one having ordinary skill in the
art, in view of the combined teachings of Della-Donna and Hartzell, would
have been led to modify Della-Donna’s panel to have three paper layers of
identical weight. For these reasons, the rejection of claim 18 also cannot be
sustained.

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3. Claims 16, 21, and 23-25 under 35 U.S.C. 103(a) as unpatentable
over Della-Donna in view of MacPhail.
Claim 16
Claim 16 depends from claim 1 and adds the limitation that the entire
laminate is crushed to reduce a thickness of the laminate.
MacPhail discloses a process for crushing laminate construction
panels that improves the acoustic qualities of the panel (Facts 16, 17). The
Examiner determined that it would have been obvious to one having
ordinary skill in the art to have crushed the entire laminate of Della-Donna
to a reduced thickness to enhance the acoustic property of the panel, as
taught by MacPhail, which would be desirable in an insulating wall panel.
Ans. 6.
Appellants first contend that claim 16 is directed to crushing of a
panel that improves rigidity and impact resistance, and MacPhail is limited
to applications to improve sound attenuation properties. App Br. 15.
Because the prior art suggests the Appellant’s liner panel, any inherent
advantages – unless based on unexpected results – cannot form the basis for
patentability. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).1 In
other words, the fact that the teachings of MacPhail would have suggested
modifying Della-Donna’s building structure in a manner which would have
improved both the rigidity and the impact resistance of the structure for
reasons other than to improve these two properties does not alter the
conclusion of obviousness.
Further, the Appellants cannot overcome the Examiner’s findings
merely by arguing that the Examiner is wrong or that the Examiner has not

1 Appellants have not presented any evidence to show that crushing of the
laminate panel would have produced unexpected results (Fact 18).
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proven inherency. The Examiner has a reasonable basis for belief that
crushing a polystyrene foam to a thickness at which the acoustical properties
of the foam are improved will inherently improve both the rigidity and the
impact resistance of the foam. In view of that reasonable belief, the burden
shifts to the Appellants to submit evidence proving that the Examiner’s
inherency finding is incorrect. In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
Appellants’ second attack on the rejection is that a person of ordinary
skill in the art would not use the crushing method of MacPhail on the panel
of Della-Donna because it might crush the tab portions and make the panel
unsuitable for its function. App. Br. 10, 16. Appellants do not point to any
portion of Della-Donna suggesting that crushing the panel would be
detrimental. Nor do Appellants present any arguments or evidence that the
combination is beyond the skill of a person of ordinary skill in the art (Fact
19).
We find nothing in Della-Donna that suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant. Medichem, S.A. v. Rolabo,
S.L.¸ 437 F.3d 1157, 1165 (Fed. Cir. 2006). To the contrary, MacPhail
specifically discloses the process may be used on foam sandwich panels
(Fact 17). Della-Donna’s tab portions are flexible, because they may be bent
to fit into a groove (Fact 14), and we see no reason why it would not be
possible to complete the crushing method of MacPhail on the panel of Della-
Donna without damage to the tab portions. A person of ordinary skill in the
art, upon reading Della-Donna and MacPhail would not have been led in a
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direction divergent from the path that was taken by the applicant. In re
Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001).
Appellants have failed to demonstrate the Examiner erred in this
rejection.

Claims 21 and 23
Appellants argue claims 21 and 23 as a group. App. Br. 16; Reply Br.
11. Claim 21 is selected as the representative claim, and claim 23 stands or
falls with claim 21. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Claim 21 is a method claim that requires attaching a pair of layers of
paper to a central semi-rigid foam layer in a single stage process and
crushing at least a portion of the laminate to provide a reduced thickness.
The Examiner found that Della-Donna teaches a first and second layer
of paper with semi-rigid foam in between and MacPhail teaches crushing of
a laminate panel to improve acoustic qualities. Ans. 6, 10. Appellants make
two attacks on this rejection: one, that Della-Donna does not have a crushed
portion of reduced thickness, and two, that a person of ordinary skill in the
art would not use the crushing method of MacPhail on the panel of Della-
Donna because it might crush the tab portions and make the panel unsuitable
for its function. App. Br. 16-17. We address each argument in turn.
While Della-Donna does not have at least a portion of reduced
thickness (as discussed in the analysis of claim 1 supra), that fact alone does
not demonstrate error in this rejection. In this rejection, unlike the
anticipation rejection of claim 1, MacPhail suggests creating at least a
portion of reduced thickness. For that reason, Appellants’ argument that
Della-Donna does not teach a portion of reduced thickness is an individual
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attack on the references and does not demonstrate error in the rejection. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
Our analysis of claim 16, supra, disposed of the contention that a
person of ordinary skill in the art would not have used the crushing method
of MacPhail on the laminate panel of Della-Donna because the method
would crush the tabs.
Appellants have failed to demonstrate the Examiner erred in this
rejection. The rejection of claim 23 likewise stands with the rejection of
claim 21.
Claims 24 and 25
Appellants argue claims 24 and 25 as a group. App. Br. 18; Reply Br.
12. Claim 24 is selected as the representative claim, and claim 25 stands or
falls with claim 24. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Claim 24 depends from claim 21 and adds the further limitation that
the entire laminate is mechanically crushed. The Appellants rely on their
arguments for patentability of claim 16, viz., that MacPhail is not directed to
improving both rigidity and impact resistance and that Della-Donna teaches
away from crushing or reducing the thickness of its panel. App. Br. 18. Our
analysis upholding the rejection of claim 16, supra, applies equally here.
Appellants have failed to demonstrate the Examiner erred in this
rejection. The rejection of claim 25 likewise stands with the rejection of
claim 24.
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NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1-5 under 35 U.S.C.
103(a) as unpatentable over the combined teachings of Della-Donna and
MacPhail.
ANALYSIS
Della-Donna discloses a panel comprised of: a first layer of paper, a
second layer of paper, and a semi-rigid foam material interposed between
the first and second layers of paper (Facts 1-4). Della-Donna does not
disclose any portion of the laminate with a reduced thickness (Fact 15).
MacPhail discloses a process for crushing construction materials
comprising foamed thermoplastic resins (especially polystyrene) to improve
acoustical characteristics (Fact 16). MacPhail teaches the process is useful
on construction materials such as panels for wall construction (Fact 17).
Using the crushing process of MacPhail on the entire panel of Della-Donna
would provide at least a portion of the laminate with a reduced thickness.
It would have been obvious to a person of ordinary skill in the art to
use the crushing method of MacPhail on the laminate panel of Della-Donna
to improve the acoustical characteristics of the panel, a desirable property in
construction panels. As such, claim 1 would have been obvious in view of
Della-Donna and MacPhail.
Claim 2 depends from claim 1 and adds the limitation that the semi-
rigid foam material is polystyrene foam. Della-Donna teaches that the semi-
rigid foam material may be polystyrene (Fact 3).
Claims 3 and 4 depend from claims 2 and 3, respectively, and add the
limitations that the laminate further comprises a fourth layer of foam
laminated to either the first or second layer, and a fifth layer of paper
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laminated to the fourth layer of foam. Della-Donna teaches that the single
central layer of semi-rigid foam could instead be two layers of semi-rigid
foam laminated to a central paper layer (Facts 5, 6).
Claim 5 depends from claim 1 and adds the limitation that the
laminate is approximately 20 mm thick. The Appellants’ Specification does
not appear to attribute any criticality to this claimed thickness. The selection
of the overall finished thickness of the panel was a matter of design choice
depending on the desired properties including insulation value of the panel.
Thus, it would have been obvious to make Della-Donna’s panel of a
thickness of approximately 20 mm.

CONCLUSIONS
Appellants have shown that the Examiner erred in rejecting claims
1-8, 14, and 15 because Della-Donna does not disclose or suggest at least a
portion of the laminate with a reduced thickness and for that reason does not
teach or suggest each element of the claim.
Appellants have also shown that the Examiner erred in rejecting
claims 17-20 because Della-Donna does not teach or suggest the three paper
layers of the laminate having identical weight, and for that reason does not
teach or suggest each element of the claim.
The Appellants have not shown that the Examiner erred in rejecting
claims 16, 21, and 23-25 because the prior art teaches at least a portion of
the laminate having a reduced thickness, and a person of ordinary skill in the
art would have been led to combine these references in the manner claimed.
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We conclude that the subject matter of claims 1-5 would have been
obvious to a person of ordinary skill in the art at the time of the claimed
invention in view of Della-Donna and MacPhail and enter a new ground of
rejection.

DECISION
We reverse the Examiner’s rejections of claims 1-8, 14, 15, and 17-
20. We affirm the Examiner's rejection of claims 16, 21, and 23-25.
Pursuant to 37 C.F.R. § 41.50(b), we enter new ground of rejection
under 35 U.S.C. § 103(a) of claims 1-5 as unpatentable in view of Della-
Donna and MacPhail.
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 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 Appellant, 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:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART and 37 C.F.R. § 41.50(b)

vsh

Appeal 2008-2611
Application 10/499,928

21
DELIO & PETERSON
121 WHITNEY AVENUE
NEW HAVEN, CT 06510