Ex Parte Jiang et al

Patent Trial and Appeal Board

Mar 23, 2016

12466306 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/466,306 05/14/2009
75589 7590 03/25/2016
Matheson Keys Daffer & Kordzik PLLC
7004 Bee Cave Rd.
Bldg. 1, Suite 110
Austin, TX 78746
FIRST NAMED INVENTOR
Nan Jiang
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.
21545-226001 5581
EXAMINER
CARPENTER, ROBERT K
ART UNIT PAPER NUMBER
2896
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
kkordzik@mathesonkeys.com
claney@mathesonkeys.com
kdaffer@mathesonkeys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAN JIANG and ZVI Y ANIV
Appeal2014-001330
Application 12/466,306
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellants2 appeal the Examiner's decision to reject claims 1-8, 10-
17, and 20-23. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
1 In our opinion below, we refer to the Specification filed May 14, 2009
(Spec.), Non-Final Office Action mailed November 7, 2012 (Non-Final), the
Appeal Brief filed April 8, 2013 (Br.), and the Examiner's Answer mailed
August 30, 2013 (Ans.).
2 Appellants identify the real party of interest as Applied Nanotech
Holdings, Inc. Br. 1.
Appeal2014-001330
Application 12/466,306
We AFFIRM, but modify the Examiner's decision with new grounds
of rejection.
The claims are directed to a method of treating nanowires or whiskers
by photosintering them with a broad spectrum light or xenon lamp. See,
e.g., claims 1, 10, 11, and 23. The nanowires or whiskers may be unwanted
such as those that grow on lead-free tin surfaces. Spec. i-f 10. Or the
nanowires or whiskers may be intentionally grown. For instance, one may
intentionally thermally oxidize a copper substrate to grow copper oxide
nanowires. See, e.g., Spec. i-f 15.
The Specification describes various photosintering methods used to
flatten (melt down or evaporate away) nanowires and whiskers (Spec. i-fi-1 12,
15, 19), to change their morphology (Spec. i-f 16), to bond nanowires or
otherwise modify nanowires or whiskers (Spec. i-f 17), or to plastically
distort, melt or evaporate tin whiskers (Spec. i-fi-1 19-23).
The Specification describes using a light source to perform the
photosintering. In some embodiments, the light source is a laser beam or
focused light. See, e.g., Spec. i-f 30. In other embodiments, the light source
is a high intensity lamp used in high intensity-short time flash mode. Spec.
i-f 24. The high intensity light is absorbed by whiskers and nanowires and
converts to thermal energy thus increasing the temperature of the whiskers
and nanowires. Spec. i-f 25. But the temperature of the substrate remains
low enough to prevent damage to the substrate or electronic components.
Spec. i-f 26. According to the Specification, "[t]he broad spectrum source is
non-damaging even to photo-sensitive materials such as Kevlar or optical
top coats." Spec. ,-r 26.
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Application 12/466,306
Some of the claims include a step of growing nanowires or whiskers
before photosintering them. See, e.g., claims 1 and 10. Claim 1 is
illustrative:
1. A method comprising:
growing nanowires or whiskers on a substrate; and
photosintering the nanowires or whiskers with a broad
spectrum light.
Claims Appendix, Br. 21.
Other claims do not require the growing step and are confined to
treating whiskers. See, e.g., claims 11 and 23. Claim 11 is illustrative:
11. A method for reducing or eliminating whiskers by
photosintering the whiskers using broad spectrum light.
Claims Appendix, Br. 22.
The Examiner maintains seventeen rejections on various grounds. See
Appellants' listing of the rejections in the Brief. Br. 5. The first ground of
rejection is a rejection of all the pending claims under 35 U.S.C. § 112 i12.
The other sixteen rejections are rejections over various prior art references
and combinations of references. Of the prior art rejections presented by the
Examiner, we confine our discussion to the rejection of claims 1--4, 6-8, 11-
17, and 22 under 35 U.S.C. § 103(a) as obvious over Stumbo3 in view of
Kirkpatrick,4 the rejection of claim 5 over those references further in view of
Tuominen,5 and the rejection of claims 10, 20, 21, and 23 under 35 U.S.C.
3 Stumbo et al., US 7,786,024 B2, issued Aug. 31, 2010 (hereinafter
"Stumbo").
4 Kirkpatrick, US 4, 151,008, issued Apr. 24, 1979.
5 Tuominen et al., US 2002/0158342 Al, published Oct. 31, 2002.
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Application 12/466,306
§ 103(a) as obvious over Stumbo in view of Kirkpatrick, Empedocles,6 and
O'Neill.7,8 The other prior art rejections are, at best, cumulative.
OPINION
Indefiniteness
The Examiner rejects claims 1-8, 11-17, and 20-23 under 35 U.S.C.
§ 112 i-f 2 as indefinite because the term "broad" in "broad spectrum light" is
a relative term.
The test for compliance for 35 U.S.C. § 112 i-f 2 is whether the claims
set out and circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the application disclosure as
they would be interpreted by one of ordinary skill in the art. In re Moore,
439 F.2d 1232, 1235 (CCPA 1971) ("[T]he definiteness of the language
employed must be analyzed-not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art.").
Turning first to the Specification to place the term "broad spectrum"
in the context of the Specification's disclosure, we note that the term is used
only once. It is used to identify a light source. Spec. i-f 26 ("The broad
spectrum source is non-damaging even to photo-sensitive materials such as
Kevlar or optical top coats."). The light source referenced appears to be the
high intensity lamp used in the high intensity-short time flash mode of
paragraph 24. Spec. ,-r 24.
6 Empedocles, US 2004/0026684 Al, published Feb. 12, 2004.
7 O'Neill et al., US 2006/0183055 Al, published Aug. 17, 2006.
8 The Examiner omits Kirkpatrick from the statement of the rejection for
claims 10, 20, 21, and 23, but as pointed out by Appellants, the Examiner
appears to rely upon Kirkpatrick in the rejection. Br. 15.
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Next we tum to evidence of the meaning to those of ordinary skill in
the prior art. Appellants introduce Exhibits A-E9 to support their contention
that "broad spectrum light" had a well-known meaning in the art. Br. 6-9.
Appellants also discuss the use of the term in a number of U.S. Patents. Br.
9. Appellants' evidence supports a determination that broad spectrum light
was considered to refer to light having wavelengths substantially across the
entire visible light spectrum. In fact, definitions of "broad-spectrum" and
"spectrum" support Appellants' argument. The meaning of "broad-
spectrum" most consistent with the way the term is used in the Specification
is: "[ c ]overing a wide scope." Thefreedictionary.com/broad-spectrum
(accessed Mar. 10, 2016). The relevant meaning of "spectrum" in physics is
"[t]he entire range over which some measurable property of a physical
system or phenomenon can vary, such as the frequency of sound, the
wavelength of electromagnetic radiation, or the mass of specific kinds of
particles." The spectrum of light is its entire range. The word "broad" is
merely another way of identifying the visible light spectrum.
A preponderance of the evidence supports Appellants' argument that
"broad spectrum light" had a well-known and reasonably precise meaning in
the prior art. Appellants have identified a reversible error in the Examiner's
determination that the use of "broad" rendered the claims indefinite.
The Examiner further rejects claims 11-17 as indefinite. According
to the Examiner the phrase "using broad spectrum light" is unclear because
it can be interpreted in several different ways, including as encompassing
using sunlight or ambient light to help a person see while photosintering.
Non-Final 6. It is not reasonable to interpret claim 11 as encompassing
9 See Evidence Appendix listing of the evidence and the Exhibit A-E
attached to the Brief.
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using sunlight or ambient light to see while photosintering. Claim 11
requires photosintering using broad spectrum light. Simply using sunlight
or ambient light to see does not meet the requirements of the claim.
Although the claim is broad in scope given that it encompasses using
sunlight or ambient light to reduce or eliminate whiskers by photosintering,
"[b ]readth is not indefiniteness." In re Gardner, 427 F.2d 786, 788 (CCPA
1970).
Turning to claim 22, the Examiner determines that "it is unclear how
claim 22 limits claim 1 (unless the broad spectrum light of claim 1 does not
comprise multiple wavelengths of light)." Non-Final 6.
Claim 22 reads: "The method as recited in claim 1, wherein the broad
spectrum light comprises multiple wavelengths of light."
We agree with the Examiner that on its face, the two claims (claims 1
and 22) give rise to a question as to the meaning of "broad spectrum" versus
"multiple wavelengths of light." Given the evidence submitted by
Appellants we determine that claim 1, which required "broad spectrum
light," by definition comprises multiple wavelengths of light. Based on this
conclusion, we determine that claim 22, rather than being indefinite, does
not further limit claim 1. Thus, we reject claim 22 under 35 U.S.C. § 112 i-f
4 as improperly dependent for not further limiting the claim from which it
depends. See 35 U.S.C. § 112 i-f 4 ("a claim in dependent form shall contain
a reference to a claim previously set forth and then specify a further
limitation of the subject matter claimed."). This is a new ground of
rejection.
Turning to claim 23, the Examiner determines that "it is unclear how
claim 23 is different from claim 20." Non-Final 6. Claim 23 reads:
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23. A method for reducing or eliminating whiskers by
photosintering the whiskers with a Xenon lamp having an
energy range from 0.1-15 J/cm2 with a treatment time between
20-900 microseconds.
Claims Appendix, Br. 22.
Claims 11 and 20 read:
11. A method for reducing or eliminating whiskers by
photosintering the whiskers using broad spectrum light.
20. The method as recited in claim 11, wherein the
photosintering is performed with a Xenon lamp having an
energy range from 0.1-15 J/cm2 with a treatment time between
20-900 microseconds.
Claims Appendix, Br. 22 (emphasis added).
Claims 20 and 23 differ in scope. Claim 20, by virtue of its
dependence from claim 11, requires the xenon lamp produce broad spectrum
light. Claim 23 is independent and does not recite the use of broad spectrum
light. In any case, the mere fact that a claim is a duplicate does not render it
indefinite. 10
We do not sustain the Examiner's rejection of claims 1-8, 11-17, and
20-23 under 35 U.S.C. § 112 i-f 2. However, we enter a new ground of
rejection for claim 22 under 35 U.S.C. § 112 i-f 4.
Obviousness
The Examiner rejects claims 1--4, 6-8, 11-17, and 22 under 35 U.S.C.
§ 103(a) as obvious11 over Stumbo in view of Kirkpatrick. Non-Final 17-
18.
10 See MPEP § 706.03(k) for procedures for addressing duplicate claims.
11 The Examiner uses the word "anticipated," in the statement of the
rejection, but the grounds are under 35 U.S.C. § 103(a) and the analysis
conducted is an obviousness analysis. Non-Final 17-19. Appellants
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Appellants focus their arguments on the rejection of claim 1. Br. 13-
14. We select claim 1 as representative.
According to Stumbo, controlled nanowire growth methods were
known for rapidly synthesizing nanowires of varying composition and size.
Stumbo, col. 1, 11. 25-27. Stumbo describes methods for processing
semiconductor nanowires by laser annealing, enabling nanowire processing
in place on temperature sensitive substrates. Stumbo, col. 2, 11. 15-23. In
one aspect, a polarized laser annealing is performed to melt or ablate
particular nanowires. Stumbo, col. 2, 11. 52-58. For instance, those
nanowires aligned in a non-perpendicular direction to the polarized laser
beam, such as in a parallel direction, may be removed by melting or ablating
while retaining the perpendicularly aligned nanowires. Id.; see also col. 10,
11. 30-44 and col. 19, 11. 39-59. Such melting or ablating is a form of
photosintering within the meaning of that term in Appellants' claims. See
Spec. i-fi-f 12, 15, and 19 (describing various photosintering methods as
methods of melting or evaporating away nanowires and whiskers).
The Examiner acknowledges that Stumbo does not teach using a
broad spectrum source to accomplish the nanowire treatment, and turns to
Kirkpatrick. Non-Final 17.
Like Stumbo, Kirkpatrick is directed to thermal processing of
semiconductor devices and mentions annealing as a common thermal
processing technique. Kirkpatrick, col. 1, 11. 13-30. Like Stumbo,
Kirkpatrick desires to limit the heat to the regions to be treated and avoid
deleterious effects in other regions, such as non-surface regions.
Kirkpatrick, col. 1, 11. 31-50. Like Stumbo, Kirkpatrick suggests using a
respond to the Examiner's obviousness analysis. Br. 13-14. The error was
harmless.
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Application 12/466,306
pulsed laser beam. Compare Kirkpatrick, col. 1, 53-55 with Stumbo, col.
1 7, 11. 14--19. But Kirkpatrick also suggests that the pulse of high intensity
light can come from a flash lamp rather than a laser. Kirkpatrick, col. 1, 11.
53-55.
The Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art
to substitute the flash lamp of Kirkpatrick for the laser of
Stumbo with predictable results, as the substitution of one
known element for another that yields predictable results to one
of ordinary skill in the art would have been obvious.
Non-Final 17-18.
Appellants contend that "[ o ]ne of ordinary skill in the art would not
have substituted the flash lamp of Kirkpatrick for the laser in Stumbo to
arrive at the claimed invention, because Stumbo does not even suggest the
use of a broad spectrum light," and "a broad spectrum light such as a flash
lamp is not equivalent to a laser." Br. 13. Appellants also fault the
Examiner for not providing any objective evidence or technical reasoning as
to why the substitution would have led to predictable results. Id.
Appellants have not persuaded us of a reversible error in the
Examiner's rejection. Kirkpatrick provides the objective evidence
Appellants argue is missing. One of ordinary skill in the art reading
Kirkpatrick would understand that it is the energy delivered by the light that
is key to the process. In both Stumbo' s and Kirkpatrick's methods, the light
is used to raise the temperature in a way to prevent damage to parts of the
device where heating is not desired such as the non-surface or bulk areas.
Kirkpatrick provides evidence that it was known in the art to deliver the
energy by means other than a laser, such as with a flash lamp. When a claim
is to a combination that "'simply arranges old elements with each
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performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), quoting
Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976).
A preponderance of the evidence supports the Examiner's conclusion
of obviousness.
Further evidence supports the Examiner's finding. For instance,
Huang, 12 a reference the Examiner relied upon in a different rejection,
discloses flash welding of conducting polymer nanofibers using a camera
flash. The energy from the camera flash generates heat that melts the
nanofibers to form a smooth and continuous film from an originally random
network ofnanofibers. Huang, p. 783, col. 1; p. 785, col. 2. The camera
flash generates a relatively high intensity light within a short pulse. Huang,
pp. 785-86. A camera flash is a broad spectrum light source given that its
primary application is to mimic natural light when taking photographs in low
.. • .. ' ... '. r7 ..... 11. " .. • ' '.. • '. .. ngm conamons. Lano111, iJ a rererence usea m yet anomer reJecuon, a1so
supports the finding. Zanolli uses localized energy sources to focus energy
on a target area of a metal plated section of a conductive tin contact to
reflow it and mitigate or eliminate tin whiskers. Zanolli i-f 11. Zanolli
teaches that "[ s ]uitable localized energy sources include but are not limited
to a laser, focused IR, xenon light (focused UV) or any other type of
apparatus that can produce a focused source of energy that can be directed
on a target area without adversely impacting and heating adjacent areas."
12 Jiaxing Huang & Richard B. Kaner, Flash Welding of Conducting
Polymer Nanofibres, 3 Nature Mat'ls 783-786 (2004).
13 Zanolli et al., US 2006/0091121 Al, pub. May 4, 2006.
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Zanolli ,-r 13. 14 There were a range of energy sources known in the art for
accomplishing localized heating. Using any one of the known energy
sources would have been obvious for its predictable effect of generating the
high intensity pulses needed to melt or ablate Stumbo' s nano wires.
We sustain the Examiner's rejection of claims 1--4, 6-8, 11-17, and
22 as obvious over Stumbo in view of Kirkpatrick, adding Huang and
Zanolli as further evidence of obviousness. We denominate the rejection as
a new ground of rejection.
The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as obvious
over Stumbo in view of Kirkpatrick, and further in view of Tuominen.
Claim 5 depends from claim 1 and further requires the substrate be
produced by electro-deposition.
Appellants contend that there is no teaching or suggestion in
Tuominen to perform photosintering, but the Examiner did not rely upon
Tuominen for a teaching of photosintering. The Examiner relies upon
Stumbo and Kirkpatrick for the teachings regarding photosintering.
Appellants contend that Tuominen is not reasonably pertinent to the
particular problem with which the inventors were involved, stating that
Tuominen does not deal with growing nanowires or whiskers and then
photosintering them. Br. 15. For these reasons Appellants contend
Tuominen is non-analogous art and cannot be combined with Stumbo. Id.
But Tuominen is concerned with growing nanowires. See Tuominen ,-r 105.
Tuominen is related to the particular problems confronting those growing
nanowires and forming devices having nanowires.
14 Because we rely upon Huang and Zanolli, we denominate our affirmance
as involving a new ground of rejection.
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Appellants have not identified a reversible error in the Examiner's
rejection of claim 5. Because we modified the underlying rejection of claim
1 from which claim 5 depends to add Huang and Zanolli as evidence of
obvious, we also modify the rejection of claim 5 to include Huang and
Zanolli. We denominate the rejection as a new ground of rejection.
This leaves claims 10, 20, 21, and 23. The Examiner rejects these
claims under 35 U.S.C. § 103(a) as obvious over Stumbo in view of
Empedocles and further in view of O'Neill. Appellants traverse this
rejection because the Examiner "apparently incorporates Kirkpatrick into
[the] body of his arguments, but does not officially include Kirkpatrick in
the rejection." Br. 15. Appellants then incorporate the arguments they
presented against the rejection of claim 1 over Stumbo and Kirkpatrick. Id.
Appellants also contend the Examiner reversibly erred in the findings
regarding Empedocles and O'Neill. Br. 15-16.
We agree with Appellants that the Examiner appears to be relying
upon Kirkpatrick in this rejection. The Examiner mentions Kirkpatrick
when explaining the rejection of claims 20 and 21. Non-Final 22-23.
Claim 21 depends from claim 1 and requires the broad spectrum light
be generated by a xenon lamp. Although we agree with Appellants that
Empedocles discloses using the light source for a different purpose than
Stumbo and Kirkpatrick, Empedocles provides evidence that white light
generating xenon lamps were known in the art. Empedocles i-f 114. As we
stated above, numerous prior art references (Kirkpatrick, Huang, and
Zanolli) provide evidence that it was known in the art to select one of a
number of different light energy sources including pulse lasers, UV xenon
lamps, camera flashes, etc. to provide high intensity pulsed light to thermally
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treat nanowires and whiskers. One of ordinary skill in the art would have
had a reasonable expectation that a white light generating xenon lamp would
perform the heat generating function required.
We sustain the rejection of claim 21, relying upon the combination of
Stumbo, Kirkpatrick, Huang, Zanolli, and Empedocles. We denominate the
rejection as new ground of rejection.
Claims 10, 20, and 23 require performing the photosintering "with a
Xenon lamp having an energy range from 0.1-15 J/cm2 with a treatment
time between 20-900 microseconds."
The energy and treatment time are a matter of routine optimization
that one of ordinary skill would have arrived at depending upon the
materials being treated and their dimensions. Stumbo discloses forming the
nanowires and substrates from a broad range of materials. Stumbo discloses
that the absorption of laser light in nanowires depends on the light
wavelength, polarization, and nanowire diameter. Stumbo, col. 10, 11. 1-2.
The fiuence (energy) of the light source as well as the duration and number
of pulses is also understood to be important as evidenced by Stumbo' s
discussion of the graphs of Figures 15-17. Stumbo, col. 1 7, 1. 14---col. 19, 1.
59. This would be true of other light sources including other well-known
sources such as white light generating xenon lamps. Kirkpatrick discloses
energy and photon energy as parameters to be set for a flash tube. See also
Kirkpatrick, col. 4, 11. 64---68 (parameters for flash tube 12 for thermal
processing semiconductor material, although with no mention of nanowire
or whisker treatment). Because the energy and treatment time are the type
of variables that would have been routinely optimized for the melting or
ablating (photosintering) process, arriving at the claimed ranges appears to
have been obvious in the absence of evidence of unexpected results for the
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claimed ranges. Optimization of a variable recognized in the prior art to be a
result effective variable would ordinarily be within the skill in the art. In re
Boesch, 617 F.2d 272, 276 (CCPA 1980); see also In re Aller, 220 F.2d 454,
456 (CCPA 1955) ("where the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.").
Claims 10 and 23 do not require the xenon lamp produce broad
spectrum light. We reject claims 10 and 23 under 35 U.S.C. § 103(a) as
obvious over Stumbo in view of Kirkpatrick, Huang, and Zanolli. This is a
new ground of rejection.
Claim 20, by virtue of its dependence from claim 11, requires the
photosintering with the xenon lamp occur using broad spectrum light. We
reject claim 20 under 35 U.S.C. §103(a) as obvious over Stumbo in view of
Kirkpatrick, Huang, Zanolli, and Empedocles. This is a new ground of
rejection.
CONCLUSION
We do not sustain the rejection of claims 1-8, 11-17, and 20-23
under 35 U.S.C. § 112 i-f 2, but we newly reject claim 22 under 35 U.S.C.
§ 112 i-f 4 as improperly dependent.
We sustain the rejection of claims 1--4, 6-8, 11-17, and 22 under
35 U.S.C. § 103(a) as obvious over Stumbo in view of Kirkpatrick. Because
we present new reasoning and further rely upon Huang and Zanolli, we
denominate the rejection a new ground of rejection.
We sustain the rejection of claim 5 as obvious over Stumbo in view of
Kirkpatrick and add Huang and Zanolli. We denominate the rejection a new
ground of rejection.
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We sustain the rejection of claims 10, 20, 21, and 23 under 35 U.S.C.
§ 103(a) as obvious over Stumbo in view of Kirkpatrick, Empedocles and
O'Neill, but do not rely upon O'Neill and rely upon Empedocles only for the
rejection of claims 2 0 and 21, and in a different manner than the Examiner.
Thus, we present the following new grounds: (1) we reject claim 21 as
obvious over Stumbo in view of Kirkpatrick, Huang, Zanolli, and
Empedocles; and (2) we reject claims 10 and 23 as obvious over Stumbo in
view of Kirkpatrick, Huang, and Zanolli; and (3) we reject claim 20 as
obvious over Stumbo in view of Kirkpatrick, Huang, Zanolli, and
Empedocles.
We do not reach the Examiner's other prior art rejections, those
rejections being, at best, cumulative.
DECISION
The Examiner's decision is affirmed as modified by the new grounds
of rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that 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 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
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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 the appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection(s), 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 the 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 Patent Trial and Appeal Board for final
action on the affirmed rejection; including any timely request for rehearing
thereof.
TIME PERIOD FOR RESPONSE
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; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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