Ex Parte Lundberg

Patent Trial and Appeal Board

Sep 8, 2017

13408917 (P.T.A.B. Sep. 8, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/408,917 02/29/2012 Steven W. Lundberg 3431.026US1 7344
21186 7590 09/12/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
DANZIG, REVA R
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
09/12/2017 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@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. LUNDBERG
Appeal 2017-000280
Application 13/408,9171
Technology Center 3600
Before JOHN A. JEFFERY, JUSTIN BUSCH, and DANIEL N. FISHMAN
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—18, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm, but designate our affirmance as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b) (2015).
1 According to Appellant, the real party in interest is Black Hills IP
Holdings, LLC. App. Br. 2.
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STATEMENT OF THE CASE
Appellant’s invention is directed to patent registry architecture that
allows an external annuity payment service provider to tag patent matters on
behalf of its clients. Spec. Abstract. Claim 1 is representative and
reproduced below:
1. A computer-implemented method of managing patent annuity
fee payments, the method comprising using one or more
processors to:
provide a universal registry of patent matters comprising,
at least, a listing of patent matters representing a totality of all
patent matters registered at a national patent office in the names
of a plurality of applicants or assignees and for which respective
patent annuity fees are payable;
register customers of the registry as registered users of the
universal registry;
allow at least one registered user of the registry to search
the full registry and tag one or more patent matters in the registry
listing for payment of patent annuity fees;
provide a universal registry portal to allow an external
annuity payment service provider to communicate electronically
with the universal registry and tag patent matters on behalf of its
clients; and
display one or more user interface elements to the
registered user in a single user interface, wherein the user
interface elements include a patent claim map.
RELATED APPEALS
Appellant did not identify any related appeals. See App. Br. 3.
However, there are at least twenty-eight (28) related appeals, which are:
Appeal No. Application No. Decided/Status
2009-005709 10/128,141 Decision mailed Mar. 23,2010
2009-006404 10/874,486 Decision mailed Aug. 2,2010
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2011-009966 11/061,383
2012-004166 11/061,312
2015-000321 13/309,127
2015-003180 13/309,039
2015-007422 13/309,146
2016-000319 13/309,080
2016-000912 13/309,060
2016-001687 11/888,632
2016-002121 13/309,200
2016-002680 13/310,279
2016-002792 12/605,030
2016-006797 13/310,368
2016-007186 13/573,803
2016-007415 13/464,598
2016-007623 13/408,877
2016-007787 13/310,322
2016-008030 13/253,936
2017-000386 11/098,761
2017-002337 14/010,376
2017-003702 14/483,903
2017-003815 14/094,542
2017-004158 14/010,391
2017-004159 14/010,380
2017-004188 14/010,400
2017-006390 13/409,189
Decision mailed Jan. 31, 2014
Decision mailed Nov. 4, 2014
Decision mailed July 26, 2017
Decision mailed Sept. 23, 2016
Decision mailed June 1, 2016
Decision mailed May 27, 2016
Decision mailed Aug. 25, 2017
Decision mailed Jan. 19, 2017
Decision mailed Aug. 28, 2017
Decision mailed Aug. 30, 2017
Decision mailed Sept. 1, 2017
Decision mailed Aug. 30, 2017
Decision mailed July 28, 2017
Decision mailed July 31, 2017
Decision mailed Sept. 6, 2017
Pending
Decision mailed Aug. 3, 2017
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
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2017-006642 13/310,452 Pending
REJECTIONS2 * 4
Claims 1—18 stand rejected under 35 U.S.C. § 101, as being directed
to non-statutory subject matter. See Final Act. 3.
Claims 1—6, 10, and 14—18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lundberg (US 2002/0091541 Al; July 11, 2002)
and Dennes (US 8,275,708 Bl; Sept. 25, 2012). See Final Act. 4—11.
Claims 7 and 11—13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lundberg, Dennes, and Reiss (US 2010/0191622 Al;
July 29, 2010). See Final Act. 12—15.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lundberg, Dennes, and Hahn-Carlson (US 2009/0265274
Al; Oct. 22, 2009). See Final Act. 16-17.
THE § 101 REJECTION
The Examiner finds that the claims are “directed to the abstract idea of
managing patent annuity fee payments.” Final Act. 3. More particularly,
the Examiner finds the claims “describe[] using a database to identify patent
matters for payment of patent annuity fees which is an economic practice
found by the courts to be an abstract idea” and are, therefore, ineligible
under 35 U.S.C. § 101. Id. at 18. The Examiner adds the remainder of the
claims do not include significantly more than the abstract idea because the
generically-recited computer elements are well-understood, routine, and
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011.
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conventional, and therefore do not add a meaningful limitation to the
abstract idea. Final Act. 3; Ans. 23.
Appellant argues the Examiner has failed to establish a prima facie
case of subject matter eligibility because no court decision has found
managing annuity fee payments to be an economic practice, and the
Examiner provides no support that the additional limitations of the claims
are well-understood, routine, or conventional. App. Br. 11.
ISSUE
Based on Appellant’s arguments at page 11 of the Appeal Brief and
pages 2 through 3 of the Reply Brief, the issue presented is:
Does the Examiner err in concluding claims 1—18 are directed to
ineligible subject matter under § 101?
ANALYSIS
In Mayo Collaborative Services v. Prometheus Laboratories., Inc.,
566 U.S. 66, 71—73 (2012), the Supreme Court established an analytical
framework under § 101 to distinguish patents that claim patent-ineligible
laws of nature, natural phenomena, and abstract ideas—or add too little to
such underlying ineligible subject matter—from those that claim patent-
eligible applications of those concepts. To determine whether claims are
patent eligible under § 101, we apply the Supreme Court’s two-step test
articulated in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014).
Prima Facie Case
Appellant’s contention that the Examiner has failed to make a prima
facie case of unpatentability is unavailing. See App. Br. 11. Appellant’s
argument effectively asks this panel to turn the July 2015 Update on Subject
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Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015) (“the 2015
Guidelines”) into a requirement that the Examiner must rely on case law
precedent. See id. We decline to do so because the 2015 Guidelines set
forth no such requirement. Rather, the 2015 Guidelines (emphasis added)
set forth the steps as “the examiner’s burden is met... for example by
providing a reasoned rationale that identifies the judicial exception recited in
the claim. . . . This rationale may rely, where appropriate,... on the case law
precedent.”
As the Federal Circuit has clarified,
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notifying] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
Here, we find the Examiner’s rejection satisfies the initial burden of
production by identifying that the claims describe an economic practice
(part 1 of the Alice analysis) and that the remainder of the claims do not
include significantly more than the abstract idea because the generically-
recited computer elements are well-understood, routine, and conventional,
and therefore do not add a meaningful limitation to the abstract idea (part 2
of the Alice analysis). Final Act. 3, 18. Accordingly, the Examiner has set
forth the statutory basis for the rejection (a judicial exception to 35 U.S.C.
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§ 101) and explained the rejection in sufficient detail to permit Appellant to
respond meaningfully. Thus, we find that the Examiner set forth a prima
facie case of ineligibility.
Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. Abstract ideas include, but are not
limited to, fundamental economic practices, methods of organizing human
activities, an idea of itself, and mathematical formulas or relationships.
Id. at 2355—57. The “directed to” inquiry cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and actions
involves a law of nature and/or natural phenomenon. See Mayo, 566 U.S. at
71 (“For all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”). Rather, the
“directed to” inquiry applies a stage-one filter to claims, considered in light
of the Specification, to determine whether “their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Appellant argues the claims as a group. See App. Br. 11. We select
independent claim 1 as representative of this group, and the remaining
claims 2—18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Here,
claim 1 essentially requires providing a universal registry of patent matters,
registering users of the universal registry, allowing the registered users to
search and tag patent matters in the universal registry, and allowing an
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external annuity payment service provider to communicate with the
universal registry and tag patent matters on behalf of its clients. According
to the Specification, the invention is an improvement to the current handling
of patent annuity fee payments. Spec. 13. Appellant’s Specification
proposes, in a section titled “Patent Office Payment Registry,” that instead
of having “various different annuity payment services keep track of various
different clients to handle payments for those clients and their matters[,]. . .
a single payment registry is provided, where there is just one representation
of each matter in any particular patent office.” Id. In that context, we find
the claims are directed to allowing an external annuity payment service, on
behalf of its clients, to interact with a single universal payment registry.
In this regard, the subject matter of claim 1, as a whole, and as further
considered in light of the Specification, is about an implied contractual
relationship between the single universal payment registry (e.g., a national
patent office) and the external annuity payment service on behalf of its
clients—i.e., managing a patent annuity fee payment between the external
annuity payment service on behalf of clients and the single universal
payment registry (e.g., a national patent office), which is merely managing a
specific type of financial obligation. Here, when reading claim 1 as a whole
in light of the Specification, we agree with the Examiner that the claimed
invention is directed to a fundamental economic practice. See Final Act. 18;
see also Ans. 22. Similar to Bilski v. Kappos, 561 U.S. 593 (2010), which
involved a method of entering into contracts to hedge risk in commodity
prices, and Alice, 134 S. Ct. at 2356, which involved methods and systems
for “exchanging financial obligations between two parties using a third-party
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intermediary to mitigate settlement risk,” the concept of managing a
payment between a payment service on behalf of its clients and a payment
registry at issue constitutes “a fundamental economic practice long prevalent
in our system of commerce.” Bilski, 561 U.S. at 611; see Alice, 134 S. Ct. at
2356—57. Therefore, the claims are directed to a fundamental economic
practice, that is, the activities associated with managing a payment
transaction involving an implied contract, which is an abstract idea under the
first step of the analysis.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, we “consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 78). The Supreme Court describes the second step of this analysis as
“a search for an inventive concept—i.e., an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.” Id.
(brackets in original) (internal quotations omitted).
Appellant’s argument that the Examiner has not provided an adequate
analysis that the additional limitations of the claims are well-understood,
routine, or conventional is unpersuasive. App. Br. 11; Reply Br. 2—3. The
Examiner finds the claimed functions are similar to various types of
computer functions that the courts have recognized as well-understood,
routine, or conventional. Ans. 23. Therefore, the Examiner’s finding in this
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regard has a rational basis that has not been persuasively rebutted. On this
record, then, the weight of the evidence favors the Examiner’s position.
Appellant nominally argues the Examiner fails to provide a discussion
of the claims as an ordered combination, which BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)
suggests is necessary for a proper analysis under step two of the Alice/Mayo
test. Reply Br. 2-3. We disagree.
In BASCOM, the Federal Circuit found “the limitations of the claims,
taken individually, recite generic computer, network and Internet
components, none of which is inventive by itself,” but “an inventive concept
can be found in the non-conventional and non-generic arrangement of
known, conventional pieces.” BASCOM, 827 F.3d at 1349-50. Claim 1
recites generic components, such as one or more processors, and Appellant
does not provide any persuasive explanation of how or why the recited
ordered combination of these elements amounts to “significantly more,”
rendering the claimed abstract idea patent-eligible subject matter.
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71).
Accordingly, we are not persuaded the Examiner erred in rejecting the
claims as directed to ineligible subject matter under 35 U.S.C. § 101.
THE OBVIOUSNESS REJECTION OVER LUNDBERG AND DENNES
The Examiner finds Lundberg teaches many recited elements of
independent claim 1 including, among other things, allowing a registered
user to tag patent matters in a registry listing for payment of patent annuity
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fees. Final Act. 5. The Examiner also finds Lundberg teaches providing a
registry portal to tag patent matters on behalf of clients. Id. The Examiner
cites Dennes for teaching providing a registry portal to allow an external
annuity payment service provider to communicate electronically with the
registry. Id. at 6. Lastly, although the Examiner acknowledges that
Lundberg does not explicitly disclose a patent claim map, the Examiner
asserts patent claim maps are well known in the art, and because Lundberg’s
user portfolio database maintains basic asset information, it would have been
obvious to one of ordinary skill in the art at the time the invention was made
for the basic asset information to include patent claim maps. Id. at 5.
Appellant argues the Examiner provides no evidence or explanation
that patent claim maps are well known in the art. App. Br. 8. Appellant
further argues Lundberg’s basic asset information, such as a filing date
found on the face of a patent, is not a patent claim map, as claimed. Id. at 8—
9.
Appellant adds that the Examiner unreasonably maps a same cited
portion of Lundberg to two separate and distinct method steps of claim 1
directed to (a) allowing at least one registered user of a registry to search the
full registry and tag one or more patent matters in a registry listing for
payment of patent annuity fees (the “allowing step”), and (b) providing a
universal registry portal to allow an external annuity payment service
provider to communicate electronically with the universal registry and tag
patent matters on behalf of its clients (the “providing a universal registry
portal step”). App. Br. 9-10. Appellant further argues Lundberg does not
discuss tagging. Id. at 9.
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ISSUES
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that (1) Lundberg’s basic asset information includes a patent claim map; and
(2) Lundberg and Dennes collectively would have taught or suggested the
allowing step and the providing a universal registry portal step?
ANALYSIS
Appellant’s argument that the Examiner improperly maps paragraphs
7 and 18 of Lundberg to both the allowing step and the providing a universal
registry portal step (App. Br. 9-10) is unpersuasive and not responsive to the
Examiner’s rejection.
When a claim requires two separate elements, one element construed
as having two separate functions does not meet the claim’s terms. See
Lantech, Inc. v. Keip Mack Co., 32 F.3d 542, 547 (Fed. Cir. 1994). The
allowing step and the providing a universal registry portal step of claim 1 are
two separate functions. But the Examiner does not construe paragraphs 7
and 18 of Lundberg as having the two separate functions (the allowing step
and the providing a universal registry portal step) as argued by Appellant,
see App. Br. 9, but rather finds (1) paragraphs 7 and 18 of Lundberg teach
the allowing step; and (2) paragraphs 7 and 18 of Lundberg in combination
with column 2, lines 51 through 67 and column 3, lines 1 through 39 of
Dennes, teach the providing a universal registry portal step.
Appellant’s argument that paragraph 18 of Lundberg does not teach
tagging one or more patent matters, App. Br. 9, is unpersuasive and not
responsive to the Examiner’s rejection that finds paragraphs 7 and 18 of
Lundberg teach tagging, Final Act. 5; Ans. 19—21. We agree with the
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Examiner’s findings and adopt them as our own. Moreover, Lundberg is
generally directed to creating a user portfolio of intellectual property (IP)
asset records. Lundberg, Abstract. Lundberg’s user builds a user portfolio
database by retrieving a set of patents from a source database of patents
issued by a national patent office. Lundberg 17. Appellant’s Specification
does not define “tag.” We, therefore, construe the term “tag” in accordance
with its plain meaning, namely “to provide or mark with.” Merriam-
Webster’s Collegiate Dictionary 1196 (10th ed. 1999) (verb def. la).
Thus, by placing the patent in the user’s portfolio database, the patent is
marked, and thereby “tagged.”
Lastly, Appellant disputes the Examiner’s reliance on Lundberg for
teaching the recited “patent claim map.” App. Br. 7—9. Therefore, we begin
by construing the term. Notably, Appellant’s Specification does not define
this term, but does note “claim maps” are a feature of a patent registry
system among other features including cost projections, analytics, and title
verification. Spec. H 4, 91. Appellant’s Specification also notes that “claim
mappings” are collected along with other data (e.g., prior art references or
office actions) from external sources (e.g., public Patent Application
Information Retrieval (PAIR) or patent docketing systems). Id. | 63.
Lastly, Appellant’s Specification notes that claims are “mapped” to scope
concepts. Id. | 56. Although these descriptions inform our construction of
the term “patent claim maps,” they do not limit our interpretation. We,
therefore, construe the term “map” in accordance with its plain meaning,
namely “[t]he correspondence of one or more elements in one set to one or
more elements in the same set or another set.” The American Heritage
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Dictionary of the English Language 1096 (3rd College ed. 1992) (noun
def. 2). Thus, under a broadest reasonable interpretation consistent with the
Specification, a “patent claim map” is a correspondence of at least one
element of a patent claim to at least one other element. Appellant’s
Specification discloses a scope concept is one non-limiting example of an
element to which the elements of a patent claim may correspond. See Spec.
156.
The Examiner finds (see Final Act. 5; Ans. 19) Lundberg’s user
portfolio database, as discussed above, “maintains bibliographic data for
each asset such as the filing date, application or serial number, the inventor
or applicant, the owner, an abstract, or other such basic asset information.”
Lundberg 112. Lundberg’s assets include patents. Id. 17.
“‘[A] reference must be considered not only for what it expressly
teaches, but also for what it fairly suggests.’” In re Baird, 16 F.3d 380, 383
(Fed. Cir. 1994) (quoting In reBurckel, 592 F.2d 1175, 1179 (CCPA 1979)).
Lundberg discloses maintaining bibliographic data, including a patent’s
filing date, application or serial number, inventor or applicant, owner, an
abstract, and other such basic asset information. This disclosure at least
suggests to one of ordinary skill in the art that the bibliographic data
includes a patent’s classification.
“Patent application publications are given a primary classification
(equivalent to an original classification). . . . The selection of a primary
classification of a patent application publication is based on the application’s
main inventive concept using the claims as a guide. A primary classification
could be any U.S. class/subclass.” Manual of Patent Examining
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Procedure (MPEP) § 903.04 (9th ed. Rev. 07.2015, Nov. 2015). See also
MPEP § 903.08(e)(G) (“[W]hen an application which had been assigned for
examination in accordance with this subsection ultimately is allowed, it will
be classified according to the controlling claim.”).
The classification, as suggested by Lundberg’s bibliographic data, is
assigned by the patent’s controlling claim. Accordingly, paragraph 28 of
Lundberg at least suggests that the bibliographic data includes a
correspondence of a controlling claim in the patent’s set of claims to a U.S.
class/subclass, and thereby Lundberg’s bibliographic data is a “patent claim
map,” as claimed. Because the Examiner did not explicitly rely on
Lundberg’s bibliographic data as at least suggesting a classification to which
the patent is assigned, we designate our affirmance as a new ground of
rejection in light of our emphasis on these additional facts.
Therefore, we are not persuaded the Examiner erred in rejecting claim
1, as well as claims 2 6, 10, and 14 18, not argued separately with
particularity. To the extent our analysis may supplement or augment the
Examiner’s reasoning, and in the interests of giving Appellant a full and fair
opportunity to respond, we designate our affirmance as a new ground of
rejection.
THE OBVIOUSNESS REJECTION OVER LUNDBERG, DENNES, AND
REISS
We also sustain the Examiner’s obviousness rejection of claims 7 and
11—13. Final Act. 12—15. Because this rejection is not argued separately
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with particularity, we are not persuaded of error for the reasons previously
discussed.
THE OBVIOUSNESS REJECTION OVER LUNDBERG, DENNES, AND
HAHN-CARLSON
We also sustain the Examiner’s obviousness rejection of claims 8 and
9. Final Act. 16—17. Because this rejection is not argued separately with
particularity, we are not persuaded of error for the reasons previously
discussed.
DECISION* 1 2 3
We affirm the Examiner’s decision to reject claims 1—18 under 35
U.S.C. § 101.
We affirm the Examiner’s decision to reject claims 1—18 under
35 U.S.C. § 103, but designate our affirmance as a new ground of rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
3 We leave it to the Examiner to determine whether independent claim 17
meets the requirements of 35 U.S.C. § 112, first and sixth paragraphs. In
particular, we leave the following questions to the Examiner:
(1) Whether or not the phrase “one or more processors to” is a generic
placeholder for “means for” and invokes 35 U.S.C. § 112, sixth
paragraph. See MPEP § 2181(1).
(2) If the Examiner determines claim 17 does invoke 35 U.S.C. § 112,
sixth paragraph, whether claim 17 is a single means claim and subject
to an enablement rejection under 35 U.S.C. § 112, first paragraph.
See MPEP § 2164.08(a).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
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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.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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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.
§ 41.50(f).
AFFIRMED
37 C.F.R, $ 41.50(b)
18