Ex Parte Hyde et al

Patent Trial and Appeal Board

Aug 31, 2016

12462796 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/462,796 08/07/2009
138951 7590 09/02/2016
Advent, LLP/INTELLECTUAL VENTURES
3930 South 147th
Suite 101
Omaha, NE 68144
FIRST NAMED INVENTOR
Roderick A. Hyde
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.
0705-004-002F-OOOOOO
1016
CONFIRMATION NO.
1947
EXAMINER
CUEVAS, PEDRO J
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
uspto@adventip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE, MURIEL Y. ISHIKAWA,
ERIC C. LEUTHARDT, MICHAEL A. SMITH,
LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD
Appeal2014-005651
Application 12/462,7961
Technology Center 2800
Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Examiner's final
decision rejecting claims 1---6, 9, 12-16, 19--44, 50, 103, and 104. We have
jurisdiction under 35 U.S.C. § 6.
The '796 Application describes a system comprising an intraluminal
power generation device. (Spec. 3--4). Independent claim 1 is representative
of the subject matter on appeal and is reproduced below:
1 According to Appellants, the real party in interest is Searete LLC. App. Br.
4.
Appeal2014-005651
Application 12/462,796
1. A system comprising:
an anatomical intraluminal piezoelectric generator, the
anatomical intraluminal piezoelectric generator configured for disposal
in a lumen of a body;
a deformable intraluminal pressure change-receiving structure
operably coupled to the anatomical intraluminal piezoelectric generator;
and
a power utilization device, at least a portion of the power
utilization device is configured for disposal at least one of
intraluminally or extraluminally,
wherein the anatomical intraluminal piezoelectric generator
generates electricity in response to deformation of the deformable
intraluminal pressure change receiving structure.
(App. Br. 61 (Claims App.)).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1--'3, 21, 22, 24--43, 50, and 104 rejected under 35 U.S.C.
§ 103(a) as unpatentable over over the combination of McLean
(US 3,563,245 issued Feb. 16, 1971) and Schroeppel (US 4,690,143
issued Sept. 1, 1987). (Final Act. 4).
2. Claims 1-3, 21, 22, 41, 42, 50, and 104 rejected under 35 U.S.C.
§ 103(a) as unpatentable over over the combination of Lehr
(US 3,906,960 issued Sept. 23, 1975) and Schroeppel. (Final Act. 6).
3. Claims 4---6, 12, and 103 rejected under 35 U.S.C. § 103(a) as
unpatentable over over the combination of McLean, Schroeppel, and
Tolkoff (US 2004/0039242 Al, published Feb. 26, 2004). (Final
Act. 9).
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4. Claims 4---6, 12, and 103 rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and Tolkoff.
(Final Act. 10).
5. Claims 5, 9, 13-15, and 103 rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McLean, Schroeppel, and
Gianchandani (US 2005/0080346 Al, published Apr. 14, 2005). (Final
Act. 10).
6. Claims 5, 9, 13-15, and 103 rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and
Gianchandani. (Final Act. 11-12).
7. Claims 16 and 103 rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of McLean, Schroeppel, and Ayazi (US
2006/0044078 Al, published Mar. 2, 2006). (Final Act. 13).
8. Claims 16 and 103 rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lehr, Schroeppel, and Ayazi. (Final Act. 13).
9. Claims 19, 20, and 23 rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McLean, Schroeppel, and Wang
(US 5,690,693, issued Nov. 25, 1997). (Final Act. 14).
10. Claims 19, 20, and 23 rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and Wang.
(Final Act. 15).
11. Claim 44 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of McLean, Schroeppel, and Hastings (US 5,457,624,
issued October 10, 1995). (Final Act. 15-16).
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12. Claims 43 and 44 rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lehr, Schroeppel, and Hastings. (Final Act.
16).
OPINION
Rejection 1.
The Examiner rejected claims 1-3, 21, 22, 24--43, 50, and 104 under 35
U.S.C. § 103(a) as unpatentable over the combination of McLean and
Schroeppel. (Final Act. 4). Appellants' arguments for reversal of this
rejection are principally based on the discussion of independent claims 1, 50,
and 104. Appellants have also addressed several dependent claims. Claims
not specifically argued will stand or fall with the respective independent
claim. Separately argued claims will be addressed.
Claim 1
We affirm the rejection of claim 1.
Appellants argue the Examiner has not established how one of ordinary
skill in the art would interpret reference character (9) of McLean as disclosing
or suggesting or that the generator of McLean is "configured for disposal in a
lumen of a body" as recited in claim 1. (App. Br. 16-17). Appellants argue
McLean's generator (9) is not an "intraluminal" generator, rather it is part of
the pacer unit (1) that is coupled to and activated by an inflatable/deflatable
mechanical pressure transmitter device (10). (App. Br. 16-17; McLean,
paragraph bridging cols. 2-3). Appellants argue the Examiner has not
established how one of ordinary skill in the art would have modified or
combined McLean and Schroeppel in an attempt to achieve Appellants'
claimed invention. (App. Br. 18-20).
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Appellants' arguments are not persuasive of reversible error.
Appellants' initial arguments address the cited references individually and do
not address the rejection as provided by the Examiner. Appellants' arguments
regarding the combined teachings of McLean and Schroeppel are premised on
bodily incorporation and do not focus on the Examiner's reasons for
combining the cited art. Final Act. 7. It is well established that the
obviousness inquiry does not ask "whether the references could be physically
combined but whether the claimed inventions are rendered obvious by the
teachings of the prior art as a whole." In re Etter, 756 F.2d 852, 859 (Fed.
Cir. 1985) (en bane); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(stating "[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference"). McLean and Schroeppel each identify different techniques for
use of intraluminal devices for generating power. McLean discloses the
generator (9) is coupled via an intravenous catheter tube (2) to and activated
by an inflatable/deflatable mechanical pressure transmitter device (10) that is
located within the right ventricle of the heart. (McLean col. 2, 11. 57-75).
Schroeppel describes an intraluminal piezoelectric generator which generates
electric power based on the contraction/flexing of the catheter/lead body that
may be tapped by the attachment of the appropriate conductors to the
piezoelectric film (Schroeppel col. 2, 11. 43---68). In response to Appellants'
argument the Examiner further states:
Since MCLEAN clearly teaches the production of electrical
energy by transforming mechanical energy obtained from changes of
pressure within the lumens of a body, using the piezoelectric-type
generator disclosed by SCHROEPPEL in place of the generator of the
power supply disclosed by MCLEAN for the purpose of using a
generating means of a smaller size, with less components, and without
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magnetic fields that could interfere with the operation of a pacemaker
would have been obvious to one with ordinary skill in the art at the time
the invention was made. (Ans. 3--4).
Appellants have not adequately explained why one skilled in the art would not
have been capable of adapting an intraluminal piezoelectric generator for
supplying the power to the device of McLean. See In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in
the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Claims 2-3, 21, 22, and 24--43
Appellants present the arguments for claims 2-3, 21, 22, and 24--43
together and argue these claims are patentable for the same reasons as claim 1.
(App. Br. 21 ). Appellants have not provided substantive arguments for claims
2-3, 21, 22, and 24--43 that differ from those presented for independent claim
1. (Id.).
As stated above, we do not find Appellants' arguments regarding the
patentability of claim 1 persuasive. Consequently, we sustain the rejection of
claims 2-3, 21, 22, and 24--43 for the reasons presented by the Examiner and
stated above.
Claim 50
We affirm the rejection of claim 50. Appellants argue the Examiner has
not established that McLean or Schroeppel disclose or suggest the recitations
of "the anatomical intraluminal piezoelectric generator configured for disposal
in a lumen of a body" or "at least a portion of the power utilization device
being configured for disposal at least one of intraluminally or extraluminally"
as required by claim 50. (App. Br. 22).
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Appellants' argument is not persuasive. Contrary to Appellants'
arguments, the Examiner has identified elements in McLean and Schroeppel
that are suggestive of the structure required by the claimed invention.
Specifically, Schroeppel discloses an intraluminal piezoelectric generator
which generates electric power based on the contraction/flexing of the
catheter/lead body. (Col. 2, 11. 43 ---66). McLean Figure 1 depicts a
pacemaker (power utilization device) that is disposed extraluminally. (Col. 2,
11. 51 - 73). Appellants have failed to provide a technical explanation
explaining why the elements described by McLean and Schroeppel fail to
meet the elements required by the claimed invention.
For the reasons presented above when discussing claim 1 and those
presented by the Examiner we are not persuaded by Appellants' argument that
the Examiner failed to provide evidence or explanation as to why it would
have been obvious to combine the teachings of McLean and Schroeppel.
(App. Br. 25-26).
Claim 104
We reverse the rejection of claim 104. The subject matter of claim 104
requires "a power utilization device operably coupled to the anatomical
intraluminal piezoelectric generator via at least one of a radiant transmission
coupling, an electromagnetic radiation coupling, an inductive coupling, or an
acoustical coupling." Appellants correctly argue on page 28 of the Appeal
Brief that the Examiner acknowledges in various portions of the Final Action
(e.g., pages 9, 11, and 13) that the combined teachings of McLean and
Schroeppel do not describe the coupling means required by claim 104.
Accordingly, we reverse the rejection of claim 104.
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Rejection 2.
The Examiner rejected claims 1-3, 21, 22, 41, 42, 50, and 104 under 35
U.S.C. § 103(a) as unpatentable over the combination of Lehr and Schroeppel.
Final Act. 6. Appellants' arguments for reversal of this rejection are
principally based on the discussion of independent claims 1, 50, and 104.
Appellants have also addressed several dependent claims. Claims not
specifically argued will stand or fall with the respective independent claim.
Separately argued claims will be addressed.
Claim 1
Appellants initially argue the record lacks objectively verifiable
evidence of how a person of ordinary skill in the art would interpret Lehr's
reference character 19 of Figure 3. (App. Br. 31.) The Examiner finds
reference character 19 is exemplary of a power utilization device. (Final Act.
7). The failure of Lehr to provide a description of reference character 19 is
harmless error. A person of ordinary skill in the art reading the reference as a
whole would understand the invention is directed to a medical energy
converter that converts mechanical to electrical energy for use by a device.
Lehr discloses the energy generated is utilized for "treatment of many
electrical disorders of the body, e.g. heart, carotidsinus, bladder etc." (Lehr
col. 1, 11. 3-7). A person of ordinary skill in the art would have recognized
that energy utilization devices such as pacemakers would have been suitable
for utilizing the energy generated from the described medical energy
converter.
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Appellants argue the Examiner has not established how one of ordinary
skill in the art would have modified or combined Lehr and Schroeppel in an
attempt to achieve Appellants' claimed invention. (App. Br. 32-34).
Lehr and Schroeppel each identify different techniques for use of
intraluminal devices for generating power. Lehr describes a medical energy
converter implanted in a vessel coupled via cable 17 to an energy utilization
device. (Lehr col. 2, 11. 17- 24; Figs. 1-3). Schroeppel describes an
intraluminal piezoelectric generator which generates electric power based on
the contraction/flexing of the catheter/lead body that may be tapped by the
attachment of the appropriate conductors to the piezoelectric film (Schroeppel
col. 2, 11. 43-68). In response to Appellants' argument the Examiner further
states:
Since LEHR teaches the production of electrical energy by
transforming mechanical energy obtained from changes of pressure
within the lumens of a body, using the piezoelectrictype generator
disclosed by SCHROEPPEL in place of the medical energy converter
disclosed by LEHR for the purpose of using a generating means of a
smaller size, with less components, and without magnetic fields that
could interfere with the operation of a pacemaker would have been
obvious to one with ordinary skill in the art at the time the invention
was made.
(Ans. 6).
Appellants have not adequately explained why one skilled in the art
would not have been capable of adapting an intraluminal piezoelectric
generator for supplying the power to the device of Lehr. See In re Sovish, 7 69
F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of
ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Claims 2-3, 21, 22, 41, and 42
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Appellants present the arguments for claims 2-3, 21, 22, 41, and 42
together and argue these claims are patentable for the same reasons as claim 1.
(App. Br. 34--35). Appellants have not provided substantive arguments for
claims 2-3, 21, 22, 41, and 42 that differ from those presented for independent
claim 1. (Id.).
As stated above, we do not find Appellants' arguments regarding the
patentability of claim 1 persuasive. Consequently, we sustain the rejection of
claims 2-3, 21, 22, and 24--43 for the reasons presented by the Examiner and
stated above.
Claim 50
We affirm the rejection of claim 50. Appellants argue the Examiner has
not established that the reference character 9 of Lehr describes or suggests an
"anatomical intraluminal piezoelectric generator" as required by claim 50.
(App. Br. 35-36).
Appellants' arguments are not persuasive of reversible error.
Appellants' initial arguments address Lehr individually and do not address the
rejection as provided by the Examiner.
Appellants argue the Examiner failed to provide any evidence or
explanation as to why it would have been obvious to one of ordinary skill in
the art to combine Lehr and Schroeppel in an attempt to achieve the
recitations of Appellants' claim 50. (App. Br. 37-38).
Appellants' arguments are unavailing for the reasons set forth above
when discussing claim 1. Appellants have not refuted the Examiner's position
that it would have been obvious to utilize a piezoelectrictype generator in
place of the medical energy converter disclosed by Lehr to obtain a generator
having, inter alia, a smaller size and less components. Appellants have not
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adequately explained why one skilled in the art would not have been capable
of adapting an intraluminal piezoelectric generator for supplying power to the
device of Lehr.
Claim 104
We reverse the rejection of claim 104. The subject matter of claim 104
requires "a power utilization device operably coupled to the anatomical
intraluminal piezoelectric generator via at least one of a radiant transmission
coupling, an electromagnetic radiation coupling, an inductive coupling, or an
acoustical coupling." Appellants correctly argue on page 40 of the Appeal
Brief that the Examiner acknowledges in various portions of the Final Action
(e.g., pages 10 and 12)2 that the combination of Lehr and Schroeppel do not
describe the coupling means required by claim 104. Accordingly, we reverse
the rejection of claim 104.
Rejection 3.
We sustain the rejection of claims 4---6, 12, and 103 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of McLean, Schroeppel, and
Tolkoff.
Appellants have failed to provide substantive arguments addressing
claims 4---6, 12, and 103. Appellants rely on the arguments presented for
independent claims 1 and 50. (App. Br. 41--42). Consequently, we sustain the
2 The pages identified by Appellants in response to this rejection include
references to pages 9 and 13 of the final action. These identifed pages
referred to the rejection over the combination of McLean and Schroeppel.
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rejection of claims 4---6, 12, and 103 for the reasons presented by the Examiner
and set forth above.
NEW REJECTION
We also reject claim 104 under 35 U.S.C. § 103(a) as unpatentable over
the combination of McLean, Schroeppel, and Tolkoff. Appellants did not
dispute the Examiner's finding that Tolkoff teaches optically coupling
electromagnetic radiation through a light guide and directionally coupling
electromagnetic radiation from the light guide to a location. (App. Br. 41--42;
Ans. 6-7; Final Act. 9; Tolkoffi-fi-f 14, 145). We agree with the Examiner that
it would have been obvious to one skilled in the art to use the coupling
disclosed by Tolkoff in the system disclosed by McLean in view of
Schroeppel for the purpose of transmitting energy in the form of light energy.
Rejection 4.
We sustain the rejection of claims 4---6, 12, and 103 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Lehr, Schroeppel, and
Tolkoff.
Appellants have failed to provide substantive arguments addressing
claims 4---6, 12, and 103. Appellants rely on the arguments presented for
independent claims 1 and 50. (App. Br. 41--42). Consequently, we sustain the
rejection of claims 4---6, 12, and 103 for the reasons presented by the Examiner
and set forth above.
NEW REJECTION
We also reject claim 104 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Lehr, Schroeppel, and Tolkoff. Appellants did not dispute
the Examiner's finding that Tolkoff teaches optically coupling
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electromagnetic radiation through a light guide and directionally coupling
electromagnetic radiation from the light guide to a location. (App. Br. 42--43;
Ans. 7-8; Final Act. 10; Tolkoffi-fi-f 14, 145). We agree with the Examiner
that it would have been obvious to one skilled in the art to use the coupling
disclosed by Tolkoff in the system disclosed by Lehr in view of Schroeppel
for the purpose of transmitting energy in the form of light energy.
Rejection 5.
We sustain the rejection of claims 5, 9, 13-15, and 103 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of McLean, Schroeppel, and
Gianchandani.
Appellants have failed to provide substantive arguments addressing
claims 5, 9, 13-15, and 103. Appellants rely on the arguments presented for
independent claims 1 and 50. (App. Br. 43--44). Consequently, we sustain the
rejection of claims 5, 9, 13-15, and 103 for the reasons presented by the
Examiner and set forth above.
Rejection 6.
We sustain the rejection of claims 5, 9, 13-15, and 103 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Lehr, Schroeppel, and
Gianchandani.
Appellants have failed to provide substantive arguments addressing
claims 5, 9, 13-15, and 103. Appellants rely on the arguments presented for
independent claims 1 and 50. (App. Br. 44--45). Consequently, we sustain the
rejection of claims 5, 9, 13-15, and 103 for the reasons presented by the
Examiner and set forth above.
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Rejection 7.
We reverse the rejection of claims 16 and 103 under 35 U.S.C. § 103(a)
as unpatentable over the combination of McLean, Schroeppel, and Ayazi.
Claims 16 and 103 require "an acoustical coupling" between the
intraluminal piezoelectric generator and the energy storage apparatus.
The Examiner has failed to direct us to evidence to support the position
that it would have been obvious to modify the teachings of McLean and
Schroeppel in view of Ayazi' s description of "the construction of a capacitive
vertical silicon bulk acoustic resonator, comprising a transmitter/receiver
system providing acoustical coupling of energy." (Final Act. 13). The
Examiner has failed to adequately explain how the teachings of Ayazi would
have been combined with the teachings of McLean and Schroeppel.
Rejection 8.
We reverse the rejection of claims 16 and 103 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Lehr, Schroeppel, and Ayazi.
Claims 16 and 103 require "an acoustical coupling" between the
intraluminal piezoelectric generator and the energy storage apparatus.
The Examiner has failed to direct us to evidence to support the position
that it would have been obvious to modify the teachings of Lehr and
Schroeppel in view of Ayazi' s description of "the construction of a capacitive
vertical silicon bulk acoustic resonator, comprising a transmitter/receiver
system providing acoustical coupling of energy." (Final Act. 13-14). The
Examiner has failed to adequately explain how the teachings of Ayazi would
have been combined with the teachings of Lehr and Schroeppel.
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Rejection 9.
We sustain the rejection of claims 19, 20, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of McLean, Schroeppel, and
Wang.
Appellants argue the combination of McLean, Schroeppel, and Wang
does not render the claimed subject matter obvious. (App. Br. 49-52). Claims
19, 20, and 23 specifically state the power utilization device comprises "an at
least partially intraluminal power utilization device," "an at least partially
extra luminal power utilization device," and "an ex vivo power utilization
device." These claims describe the location of the power utilization device.
As discussed in the present record Lehr and Schroeppel each identify
different techniques for use of intraluminal devices for generating power.
Appellants have not disputed that the power generated by an intraluminal
device is transmitted to a power utilization device such as a pacemaker. (See
Lehr and Schroeppel). A person of ordinary skill in the art would have
reasonably expected that the intraluminal power generating devices of the
cited prior art would have been suitable for powering a variety of devices,
including those which are located partially extraluminal, partially intraluminal
or ex vivo. See In re Sovish, and In re Bozek, supra. Appellants have not
adequately explained that the location of the power utilization device creates a
patentable distinction.
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Rejection 10.
We sustain the rejection of claims 19, 20, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Lehr, Schroeppel, and
Wang.
Appellants argue the combination of Lehr, Schroeppel, and Wang does
not render the claimed subject matter obvious. (App. Br. 52-56). Claims 19,
20, and 23 specifically state the power utilization device comprises "an at
least partially intraluminal power utilization device," "an at least partially
extra luminal power utilization device," and "an ex vivo power utilization
device." These claims describe the location of the power utilization device.
As discussed in the present record Lehr and Schroeppel each identify
different techniques for use of intraluminal devices for generating power.
Appellants have not disputed that the power generated by an intraluminal
device is transmitted to a power utilization device such as a pacemaker. (See
Lehr and Schroeppel). A person of ordinary skill in the art would have
reasonably expected that the intraluminal power generating devices of the
cited prior art would have been suitable for powering a variety of devices,
including those which are located partially extraluminal, partially intraluminal
or ex vivo. See In re Sovish, and In re Bozek, supra. Appellants have not
adequately explained that the location of the power utilization device creates a
patentable distinction.
Rejection 11.
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We sustain the rejection of claim 44 under 35 U.S.C. § 103(a) as
unpatentable over the combination of McLean, Schroeppel, and Hastings.
Appellants have failed to provide substantive arguments addressing
claim 44. Appellants rely on the arguments presented for independent claims
1 and 50. (App. Br. 56). Consequently, we sustain the rejection of claims 44
for the reasons presented by the Examiner and set forth above.
Rejection 12.
We sustain the rejection of claims 43 and 44 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Lehr, Schroeppel, and Hastings.
Appellants have failed to provide substantive arguments addressing
claims 43 and 44. Appellants rely on the arguments presented for independent
claims 1 and 50. (App. Br. 57). Consequently, we sustain the rejection of
claims 43 and 44 for the reasons presented by the Examiner and set forth
above.
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ORDER
The Examiner's prior art rejections are affirmed-in-part. Pursuant to 37
C.F .R. § 41.50(b ), we enter the following NEW GROUNDS OF
REJECTION:
claim 104 under 35 U.S.C. § 103(a) as unpatentable over the
combination of McLean, Schroeppel, and Tolkoff.
claim 104 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Lehr, Schroeppel, and Tolkoff.
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.
TIME PERIOD
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).
AFFIRMED-IN-PART; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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