Ex parte LORENZANA et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08578248 (B.P.A.I. Jun. 29, 1998)

Application for patent filed December 26, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MOISES B. LORENZANA
and VANCE A. LORENZANA
_____________
Appeal No. 97-4042
Application 08/578,2481
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
COHEN and MEISTER, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Moises B. Lorenzana and Vance A. Lorenzana (the
appellants) appeal from the final rejection of claims 1-20,
the only claims present in the application.
We AFFIRM-IN-PART.
Appeal No. 97-4042
Application 08/578,248
2
The appellants’ invention pertains to a lap tray for
serving food and beverage items. Independent claim 1 is
further
illustrative of the appealed subject matter and a copy thereof
may be found in the appendix to the appellants’ brief.
The references relied on by the examiner are:
Hintze 2,652,702 Sep. 22, 1953
Mackey 3,244,125 Apr. 5, 1966
Gregg 3,804,233 Apr. 16, 1974
Mazzotti 5,421,459 Jun. 6, 1995
Anderson Des. 316,359 Apr. 23, 1991
Claims 1, 2, 3, 9 and 13 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Mackey.
Claims 4, 5, 10, 12 and 17 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Mackey.
Claims 2 and 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Mackey in view of Anderson.
Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Mackey in view of Mazzotti.
Claims 6-8, 11 and 15 stand rejected under 35 U.S.C. §
Appeal No. 97-4042
Application 08/578,248
3
103 as being unpatentable over Mackey in view of Gregg.
Claims 18-20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Mackey in view of Hintze.
The examiner’s rejections are explained on pages 3-6 of
the answer. The arguments of the appellants and examiner in
support of their respective positions may be found on pages 7-
24 of the brief and pages 6-9 of the answer.
OPINION
We have carefully reviewed the appellants’ invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellants in the brief and by the examiner in
the answer. As a consequence of this review, we will (1)
affirm the rejection of claims 1 and 9 under 35 U.S.C. §
102(b), (2) reverse the rejection of claims 2, 3 and 13 under
35 U.S.C. § 102(b), (3) affirm the rejections of claims 6-8,
11, 12, 16 and 18-20 under 35 U.S.C. § 103 and (4) reverse the
rejections of claims 2, 4, 5, 10, 14, 15 and 17 under 35
U.S.C. § 103. Additionally, pursuant to our authority under
Appeal No. 97-4042
Application 08/578,248
4
the provisions of 37 CFR § 1.196(b), we will enter new
rejections of claims 13, 15 and 17 under 35 U.S.C. § 103. Our
reasons for these determinations follow.
Considering first the rejection of claims 1 and 9 under
35 U.S.C. § 102(b), we initially note that the terminology in
a pending application's claims is to be given its broadest
reasonable interpretation (In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989)) and limitations from a
pending application's specification will not be read into the
claims (Sjolund v. Musland, 847 F.2d 1573, 1581-82, 6 USPQ2d
2020, 2027 (Fed. Cir. 1988)). Moreover, anticipation by a
prior art reference does not require either the inventive
concept of the claimed subject matter or the recognition of
inherent properties that may be possessed by the prior art
reference. See Verdegaal Bros., Inc. v. Union Oil Co., 814
F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987), cert.
denied, 484 U.S. 827 (1987). A prior art reference
anticipates the subject matter of a claim when that reference
discloses every feature of the claimed invention, either
explicitly or inherently (Hazani v. Int’l Trade Comm’n, 126
Appeal No. 97-4042
Application 08/578,248
5
F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997)) and
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)); however, the
law of anticipation does not require that the reference teach
what the appellants are claiming, but only that the claims on
appeal "read on" something disclosed in the reference (Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984)).
Here, the examiner has taken the position that the tray
of Mackey discloses all the structure set forth in independent
claim 1 and is ?inherently capable of use in the intended
manner depending upon the size of the user’s legs? (answer,
page 3). The appellants disagree, contending that ?Mackey had
no contemplation or suggestion that his tray might be adapted
for use as a lap tray? (brief, page 11). We must point out,
however, it is well settled that if a prior art device
inherently possesses the capability of functioning in the
manner claimed, anticipation exists regardless of whether
there was a recognition that it could be used to perform the
claimed function. See, e.g., In re Schreiber, 128 F.3d 1473,
Appeal No. 97-4042
Application 08/578,248
6
1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). See also
LaBounty Mfg., Inc. v. Int’l Trade Comm’n, 958 F.2d 1066,
1075, 22 USPQ2d 1025, 1032 (Fed. Cir. 1992) (in quoting with
approval from Dwight & Lloyd Sintering Co. v. Greenawalt, 27
F.2d 823, 828 (2d Cir. N.Y. 1928)):
The use for which the [anticipatory]
apparatus was intended is irrelevant, if it
could be employed without change for the
purposes of the patent; the statute
authorizes the patenting of machines, not
of their uses. So far as we can see, the
disclosed apparatus could be used for
"sintering" without any change whatever,
except to reverse the fans, a matter of
operation.
Mackey discloses a tray for serving food and beverage
items
to a user in an automobile including an elongated body portion
(i.e., the entire lateral extent of the tray as depicted in
Figs. 1 and 2), food receiving recesses 25, 26 disposed along
a lengthwise extending center line, a first downwardly
extending projection (the frusto-conical depression 16
depicted on the right in Fig. 1), and a second downwardly
extending projection (the frusto-conical depression 16
Appeal No. 97-4042
Application 08/578,248
As used throughout the claims, we interpret ?upper legs? to be --upper portion2
of the legs--.
7
depicted on the left in Fig. 1). The side edges of Mackey’s
tray are clearly symmetrical with respect to the center line
(see Fig. 1). Particularly in view of the size of Mackey’s
tray relative to a car seat as depicted Fig. 2, we share the
examiner’s view that there is a sound basis to conclude that
Mackey’s tray is inherently capable of being used as a lap
tray with the elongated body portion thereof spanning the
upper portion of the legs of a user and the projections 162
extending downwardly “beyond” the outermost portion of the
upper portion of the user’s legs in the claimed manner.
Whether Mackey’s tray actually is or might be used in such a
manner depends upon the performance or non-performance of a
future act of use, rather than upon a structural distinction
in the claims. Stated differently, the tray of Mackey would
not undergo a metamorphosis to a new tray simply because it
was used as a lap tray in the claimed manner. See In re
Pearson, 494 F.2d 1399,
1403, 181 USPQ 641, 644 (CCPA 1974) and Ex parte Masham, 2
Appeal No. 97-4042
Application 08/578,248
8
USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987).
Page 8 of the brief also states that:
If one decided to use the Mackey tray
as a lap tray in spite of its being
designed for seat support and its being
provided a number of food and beverage
pockets and compartments for two
individuals, the tray might be positioned
with the frusto-conical depressions 15, 16
and 17 along the outside of the legs if it
were suitably sized with respect to the
person using it. As so positioned, the
users legs would have to extend down the
narrow passage between the tissue box or
compartment and the frusto- conical
depressions. Considering that the
passageway is about the same width as the
tissue box, the users leg would have to be
so small that the length that the leg 14
would engage the seat and prevent the tray
from lying flat or horizontal across the
legs. If the legs were in the horizontal
position as shown in Fig. 2, leg 13 might
not have any effect while leg 14 would
apparently raise the right side of the tray
with respect to the legs and limit amount
that the right hand frusto-conical
depressions would extend downwardly along
the outside of the upper leg.
These contentions are unpersuasive. As to the
appellants’ contention that a user’s legs would have to extend
down the narrow passage between the “tissue box” and the
frusto-conical depressions 16, we must point out that (1) the
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Application 08/578,248
9
“tissue box” does not form a part of Mackey’s tray (any more
than the large beverage container depicted by the appellants
in Fig. 2 forms a part of their tray) and (2) Mackey’s tray
clearly has the capability of being used without the tissue
box. Moreover, even if Mackey’s tray was used in conjunction
with a tissue box, it still has the capability of being used
by a person having small legs (such as a child). As to the
appellants’ contention concerning the leg 14 engaging the seat
when it is in the extended position, Mackey’s tray clearly has
the capability of being used in the claimed manner by a person
sitting on seat which did not extend laterally as far as the
leg 14. As to the appellants’ contention concerning the legs
13 and 14 being in the horizontal position, even if the “right
side” were raised a slight amount as the appellants contend,
there is no reasonable basis for concluding that this would
prevent Mackey’s tray from being used in the claimed manner.
In any event, as we have noted above, Mackey’s tray still has
the capability of being used in the claimed manner with the
legs extended.
It is also the appellants’ contention that the body of
the tray of Mackey cannot be considered to be elongated. This
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Application 08/578,248
10
view, however, appears to be bottomed upon the appellants’
belief that only the portion of Mackey's tray which is bounded
flange 18 can be considered to be the body portion. We do not
agree. As we have noted above, it is our view that the entire
lateral extent of the Mackey’s tray as depicted in Figs. 1 and
2 can be considered to form the body portion as broadly set
forth. When viewed in this context, it is readily apparent
that this body portion is “elongated.”
The appellants in the paragraph bridging pages 15 and 16
of the brief appear to be contending that the wall of Mackey’s
projections cannot be considered to be “substantially
vertical” since they are somewhat tapered. However, the
appellants have used this term to describe their own walls,
which likewise have a significant taper. This being the case,
we are of the opinion that the wall defining each of Mackey’s
projections can be considered to be “substantially vertical”
as claimed.
On page 16 of the brief, the appellants argue that under
the sixth paragraph of § 112 the functional limitations in the
claims must “be construed as covering corresponding structure
described in the specification.” We are at a complete loss to
Appeal No. 97-4042
Application 08/578,248
11
understand such a contention inasmuch as the claims under
consideration are not drafted in means or step plus function
format.
In view of the foregoing, we will sustain the rejection
of claims 1 and 9 under 35 U.S.C. § 102(b) as being
anticipated by Mackey.
Turning to the rejections of claim 2 under 35 U.S.C.
§ 102(b) as being anticipated by Mackey and under 35 U.S.C. §
103 as being unpatentable over Mackey in view of Anderson,
claim 2 expressly requires that the body portion be
symmetrical about a lengthwise extending center line. Viewing
Figs. 1 of Mackey and Anderson, it is readily apparent that
neither of these references either teach or suggest such an
arrangement. This being the case, we will not sustain the
rejections of claim 2 under 35 U.S.C. § 102(b) and 35 U.S.C. §
103.
Considering next the rejections of claim 3 under 35
U.S.C.
Appeal No. 97-4042
Application 08/578,248
12
§ 102(b) as being anticipated by Mackey and claims 4 and 5
under 35 U.S.C. § 103 as being unpatentable over Mackey, claim
3 (and claims 4 and 5 by virtue of their dependency thereon)
expressly requires “lengthwise extending edges which are
concave to conform to the contour of the person’s torso . . .”
(emphasis ours). In Mackey, however, the edges are straight
rather than “concave” as claimed. Accordingly, we will not
sustain the rejections of claim 3 under 35 U.S.C. § 102(b) and
claims 4 and 5 under 35 U.S.C. § 103.
We now turn to the rejections under 35 U.S.C. § 103 of
claims 6-8 and 11 as being unpatentable over Mackey in view of
Gregg and claim 12 as being unpatentable over Mackey alone.
With respect to claims 6-8 and 11, the examiner has taken the
position that it would have been obvious to provide the tray
of Mackey with a central well in view of the teachings in
Gregg. The examiner also is of the opinion that the
particular configuration of the central well (claim 7) and the
parameters set forth in claims 8 and 12 would have been
obvious.
The appellants disagree, contending that “it is difficult
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13
to see any relevance in the Gregg patent” (brief, page 21).
As to the particular configuration and parameters of the well,
the appellants contend there is no express teachings of these
limitations in the prior art applied by the examiner.
We are unpersuaded by the appellants’ arguments. While
the obviousness of an invention cannot be established by
combining the teachings of the prior art absent some teaching,
suggestion or incentive supporting the combination (see ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984)), this does not mean
that the cited references or prior art must specifically
suggest making the combination (B.F. Goodrich Co. v. Aircraft
Braking Systems Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314,
1318 (Fed. Cir. 1996) and In re Nilssen, 851 F.2d 1401, 1403,
7 USPQ2d 1500, 1502 (Fed. Cir. 1988)). Rather, the test for
obviousness is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.
In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed.
Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). Moreover, in evaluating such references it
Appeal No. 97-4042
Application 08/578,248
14
is proper to take into account not only the specific teachings
of the references but also the inferences which one skilled in
the art would reasonably be expected to draw therefrom (In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)), and
all of the disclosures in a reference must be evaluated for
what they fairly teach one having ordinary skill in the art
(In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966)).
Here, Mackey teaches a tray having various recesses and
beverage receiving wells including a food receiving recess 24
which is “centrally disposed” with respect to the lateral
edges of the tray. Gregg teaches a tray having various
recesses and beverage receiving wells including a beverage
receiving well 15 which is “centrally disposed” with respect
to the lateral edges of the tray. Taken together, Mackey and
Gregg establish that it is known in the art to vary the
location of recesses and beverage receiving wells on a tray as
desired. In our view, a combined consideration of Mackey and
Gregg would have fairly suggested to the artisan to replace
the centrally disposed food receiving recess 24 of Mackey with
a centrally disposed beverage receiving
Appeal No. 97-4042
Application 08/578,248
15
well, if for no other reason, than to achieve the self-evident
advantage of accommodating additional beverage containers.
As to (1) the shoulder set forth in claim 7, (2) the
particular degree of taper set forth in claim 8 and (3) the
particular length of the downward projection (i.e., the
particular depth of the beverage receiving well) set forth in
claim 12, we observe that Mackey expressly states that the
beverage receiving wells may “hold different sized cups or
tumblers” (column 1, line 45). Noting that artisans must be
presumed to know something about the art apart from what the
references disclose (In re Jacoby, 309 F.2d 513, 516, 135 USPQ
317, 319 (CCPA 1962)) and the conclusion of obviousness may be
made from "common knowledge and common sense" of the person of
ordinary skill in the art (In re Bozek, 416 F.2d 1385, 1390,
163 USPQ 545, 549 (CCPA 1969)), we are of the opinion that one
of ordinary skill in this art would have found it obvious to
provide the centrally beverage receiving well in the tray of
Mackey, as modified by Gregg, with a shoulder in order to
accommodate a beverage container having a complementary
stepped shoulder and to vary the depth and taper of the
Appeal No. 97-4042
Application 08/578,248
16
beverage receiving recess in order to accommodate various
sized commonly used beverage containers (including a large
size container such as depicted by the appellants on the
right-hand side of the tray in Fig. 2).
As to the particular distance between the downward
projections set forth in claim 12, in comparing the size of
Mackey’s tray relative to the car seat as depicted in Fig. 2,
it appears that the distance between the downward projections
16 is in fact “on the order of 14 inches” as claimed. In any
event, the artisan as a matter of “common sense” (In re Bozek,
supra) would have found it obvious to vary the size of
Mackey’s tray as desired.
In view of the foregoing, we will sustain the rejections
of 6-8, 11 and 12 under 35 U.S.C. § 103.
Turning next to the rejection of claim 10 under 35 U.S.C.
§ 103 as being over Mackey, the examiner has taken the
position that the provision of “roughened surfaces” on the
walls Mackey’s projections 16 would have been obvious.
However, there appears to be neither reason nor need for such
surfaces in Mackey, and the examiner has not provided any
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Application 08/578,248
17
evidence which would support a conclusion of obviousness.
This being the case, we will not sustain the rejection of
claim 10 under 35 U.S.C. § 103.
Considering the rejections of (1) claim 13 under 35
U.S.C.
§ 102(b) as being anticipated by Mackey, (2) claim 14 under 35
U.S.C. § 103 as being unpatentable over Mackey in view of
Mazzotti, (3) claim 15 under 35 U.S.C. § 103 as being
unpatentable over Mackey in view of Gregg, and (4) claim 17
under 35 U.S.C. § 103 as being unpatentable Mackey, each of
these rejections is based on the examiner’s view that Mackey
teaches first and second pockets which are “of different size
and shape” as set forth in claim 13. We cannot agree. While
the pockets 15, 16 and 17 of Mackey are of different size,
they are of the same shape, rather than of a “different” shape
as claimed. For this reason, we will not sustain the
rejection of claim 13 under 35 U.S.C. § 102(b) and the
rejections of claims 14, 15 and 17 under 35 U.S.C. § 103.
Considering now the rejection of claim 16 as being
unpatentable over Mackey in view of Anderson under 35 U.S.C.
Appeal No. 97-4042
Application 08/578,248
The test for obviousness is not whether the features of a secondary reference3
may be bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have suggested
18
§ 103, the examiner is of the opinion that it would have been
obvious to make the first pocket of Mackey (i.e., the right-
hand beverage receiving recess 16 as depicted in Fig. 1) of
oval cross-section (thus providing a different “shape” as set
forth in parent claim 13) in view of the teachings of
Anderson. In argument, the appellant on page 20 of the brief
notes the deficiencies of the references individually and
contends that “the only teachings for such modifications comes
from applicants’ specification.” As to the appellants’
criticisms of the references individually, nonobviousness
cannot be established by attacking the references individually
when the rejection is predicated upon a combination of prior
art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091,
1097, 231 USPQ 375, 380 (Fed. Cir. 1986). As to the
examiner’s combination of the references, Anderson clearly
teaches an “oval” shaped pocket along one edge of the tray for
the self-evident purpose of accommodating elongated articles.
Applying the test for obviousness as set forth in In re3
Appeal No. 97-4042
Application 08/578,248
to those of ordinary skill in the art.
19
Keller at 642 F.2d 425, 208 USPQ 881, we are of the opinion
that one of ordinary skill in this art would have found it
obvious to make the first pocket of Mackey oval in shape in
order to achieve Anderson’s self-evident advantage of
accommodating elongated articles. Therefore, we will sustain
the rejection of claim 16 under 35 U.S.C. § 103.
Turning last the rejection of claims 18-20 under 35
U.S.C.
§ 103 as being unpatentable over Mackey in view of Hintze, the
examiner is of the opinion that it would have been obvious to
provide the body portion of Mackey with first and second flat
members surrounded by peripheral rims to define shallow food
receiving recesses in view of the teachings of Hintze. The
appellants, however, contend that ?there is no hint or
suggestion in either of the references as [to] how the
teaching of Hintze might be combined with Mackey to meet the
elements of the claimed combination.? We are unpersuaded by
the appellants’ arguments. Mackey teaches providing food
Appeal No. 97-4042
Application 08/578,248
20
receiving recesses by providing a flat bottom and thin ridges
which project upwardly from the flat bottom. Anderson teaches
providing food recesses by providing a flat top portion which
define ?peripheral rims? and shallow food receiving recesses
projecting downwardly therefrom. Taken as a whole, these
references establish that the structure utilized by each of
these references for providing for food receiving recesses are
art-recognized alternatives which are well known, and the
respective advantages and disadvantages of each would have
been apparent to one of ordinary skill in the art. See In re
Heinrich, 268 F.2d 753, 756, 122 USPQ 388, 390 (CCPA 1959).
With respect to claim 20, Hintze at 10 clearly teaches a cup-
shaped well ?between? the recesses.
In view of the above, we will sustain the rejection of
claims 18-20 under 35 U.S.C. § 103.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections.
Claims 13 and 17 are rejected under 35 U.S.C. § 103 as
being unpatentable over Mackey in view of Anderson. As we
have noted above with respect to the rejection of claim 16,
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21
Anderson clearly teaches an “oval” shaped pocket along one
edge of the tray for the self-evident purpose of accommodating
elongated articles. One of ordinary skill in this art would
have found it obvious to make the first pocket of Mackey
(i.e., the right-hand beverage receiving recess 16 as depicted
in Fig. 1) oval or ?different? in shape in order to achieve
Anderson’s self-evident advantage of accommodating elongated
articles. With respect to claim 17, Mackey expressly states
that the beverage receiving wells may “hold different sized
cups or tumblers” (column 1, line 45). Particularly in view
of this teaching, one of ordinary skill in this art would have
found it obvious to vary the depth of the beverage receiving
recesses as desired (e.g., to between 3 and
3½ inches) in order to accommodate various sized commonly used
beverage containers (including a large size container such as
depicted by the appellants on the right-hand side of the tray
in Fig. 2). As to the particular distance between the
downward projections, in comparing the size of Mackey’s tray
relative to the car seat as depicted in Fig. 2, it appears
that the distance between the downward projections 16 is in
fact “on the order of 14 inches” as claimed. In any event,
Appeal No. 97-4042
Application 08/578,248
22
the artisan as a matter of “common sense” (In re Bozek, supra)
to vary the size of Mackey’s tray as desired.
Claim 15 is rejected under 35 U.S.C. § 103 as being
unpatentable over Mackey in view of Anderson as applied in the
rejection of claim 13 above, and in further view of Gregg.
Mackey teaches a tray having various recesses and beverage
receiving wells including a food receiving recess 24 which is
“centrally disposed” with respect to the lateral edges of the
tray. Gregg teaches a tray having various recesses and
beverage receiving wells including a beverage receiving well
15 which is “centrally disposed” with respect to the lateral
edges of the tray. Taken together, Mackey and Gregg establish
that it is known in the art to vary the location of recesses
and beverage receiving wells on a tray as desired. In our
view, one of ordinary skill in this art would have found it
obvious to replace the centrally disposed food receiving
recess 24 in the tray of Mackey, as modified by Anderson, with
a centrally disposed beverage receiving well, if for no other
reason, than to achieve the self-evident advantage of
accommodating additional beverage containers.
Appeal No. 97-4042
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23
In summary:
The rejection of claims 1 and 9 under 35 U.S.C. § 102(b)
is affirmed.
The rejection of claims 2, 3 and 13 under 35 U.S.C. §
102(b) is reversed.
The rejections of claims 6-8, 11, 12, 16 and 18-20 under
35 U.S.C. § 103 are affirmed.
The rejections of claims 2, 4, 5, 10, 14, 15 and 17 under
35 U.S.C. § 103 are reversed.
New rejections of claims 13, 15 and 17 under 35 U.S.C. §
103 have been made.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
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24
(b) Appellant may file a single request for
rehearing within two months from the date
of the original decision . . . .
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
Should the appellants elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(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
Appeal No. 97-4042
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25
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 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 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
Appeal No. 97-4042
Application 08/578,248
26
)
) INTERFERENCES
)
JAMES M. MEISTER )
Administrative Patent Judge )
Neil M. Rose
441 North Park Boulevard
Unit 1-M
Glen Ellyn, IL 60137