Ex Parte Lundberg et al

Patent Trial and Appeal Board

Sep 21, 2017

14483903 (P.T.A.B. Sep. 21, 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.
14/483,903 09/11/2014 Steven W. Lundberg 3431.002US7 5265
21186 7590 09/25/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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, LARS OLOF HUGO SVENSSON,
PETER W. REBUFFONI, TYLER L. NASIEDLAK, JILL D. YOUNG,
PIERS A. BLEWETT, and JOSEPH R. WILLIAMS
Appeal 2017-003702
Application 14/483,903
Technology Center 3600
Before JOHN A. JEFFERY, JUSTIN BUSCH, and DANIEL N. FISHMAN,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm, and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b) (2015).
STATEMENT OF THE CASE
Appellants’ invention is a patent management system that includes
tools to help the parties involved in the patenting process make decisions.
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Application 14/483,903
Spec. 114. In a disclosed embodiment, “a tool. . . may track owners of
patents so that when it is time to pay annuity, they can be found.” Id. 1110.
Claim 1 is illustrative:
1. A method comprising:
monitoring, using at least one processor, at least one
patent requiring an annuity payment to remain in force;
maintaining a database including patent owner contact
details for a patent owner of the at least one patent, the patent
owner contact details including at least one of the following
elements with respect to the patent owner: owner name,
employer details, physical address, postal address, email
address, text message address, mobile number, land line
number, or social security number;
including in the database, back-up contact details for at
least one back-up contact for the patent owner, the back-up
contact details including at least one of the following elements
with respect to the at least one back-up contact: name, postal
address, email address, text message address, mobile number,
land line number, or social security number;
using one or more of the patent owner contact details,
automatically pinging, using at least one processor, the patent
owner on a periodic basis by sending a communication via at
least one of an email, telephone call, or text message and
monitoring for receipt of a reply to the communication within a
first predetermined time period; and
in response to not receiving a reply to the communication
from the patent owner within the first predetermined time
period, using one or more of the back-up contact details of at
least one back-up contact to automatically ping, using at least
one processor, at least one of the back-up contacts by sending at
least one of an email, telephone call, or text message to the at
least one back-up.
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RELATED APPEALS
Appellants did not identify any related appeals. See App. Br. 3.
However, there are at least twenty-nine (29) related appeals, which are:
Anneal No. Annlication No.
2009-005709 10/128,141
2009-006404 10/874,486
2011-009966 11/061,383
2012-004166 11/061,312
2015-000319 13/309,080
2015-000321 13/309,127
2015-003180 13/309,039
2015-007422 13/309,146
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
2017-000280 13/408,917
2017-000386 11/098,761
2017-002337 14/010,376
Decided/Status
Decision mailed Mar. 23, 2010
Decision mailed Aug. 2, 2010
Decision mailed Jan. 31, 2014
Decision mailed Nov. 4, 2014
Decision mailed May 27, 2016
Decision mailed July 26, 2017
Decision mailed Sept. 23, 2016
Decision mailed June 1, 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
Decision mailed Sept. 12, 2017
Pending
Decision mailed Sept. 8, 2017
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2017-003815 14/094,542 Decision mailed Sept. 18, 2017
2017-004158 14/010,391 Pending
2017-004159 14/010,380 Pending
2017-004188 14/010,400 Pending
2017-006390 13/409,189 Pending
2017-006642 13/310,452 Pending
2017-011247 13/253,811 Pending
THE REJECTIONS
The Examiner rejected claims 1—12 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Act. 2—3.1
The Examiner rejected claims 1—12 under 35 U.S.C. § 103(a) as
unpatentable over Horn (US 2011/0099084 Al; Apr. 28, 2011) and Geary
(US 2001/0007977 Al; July 12, 2001). Id. at 3-7.
THE § 101 REJECTION
The Examiner finds that the claims constitute a fundamental economic
practice and a method of organizing human activity and, therefore, are
directed to an abstract idea. Final Act. 2—3; Ans. 2—5. The Examiner further
finds that the recited additional elements, other than the abstract, idea
amount to no more than generic computer functions to implement the
abstract idea on a computer. Final Act. 3; Ans. 4. Given these findings, the
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 10, 2016 (“Final Act.”); (2) the Appeal Brief filed October 11,
2016 (“App. Br.”); (3) the Examiner’s Answer mailed November 9, 2016
(“Ans.”); and (4) the Reply Brief filed January 9, 2017 (“Reply Br.”).
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Examiner concludes that the claims are ineligible under § 101. Final Act. 2—
3.
Appellants argue that the Examiner fails to meet the basic
requirements for establishing a prima facie case of subject matter
ineligibility under § 101. App. Br. 8—11, 16; Reply Br. 2^4. According to
Appellants, the Examiner’s “mere conclusory statements” fail to establish
that (1) the claims are directed to an abstract idea (App. Br. 8—10); and (2)
the additional elements of the claims do not amount to significantly more
than an abstract idea {id. 10-11). Appellants add that the claims are directed
to eligible subject matter because they represent a particular improvement to
electronic communication in computerized patent portfolio management. Id.
ISSUES
I. Has the Examiner met the basic requirements for establishing a
prima facie case of subject matter ineligibility under § 101?
II. Has the Examiner erred in rejecting claim 1 as 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
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articulated in Alice Corp. Pty. v. CLS Bank International, 134 S. Ct. 2347
(2014).
ISSUE I
Prima Facie Case
Appellants’ contention that the Examiner has failed to make a prima
facie case of unpatentability is unavailing. See App. Br. 8—11, 16;
Reply Br. 2—A. Appellants’ argument effectively asks this panel to transform
the (1) July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429
(July 30, 2015); and (2) Recent Subject Matter Eligibility Decisions,
Memorandum, (Nov. 2, 2016) into a requirement that the Examiner must
rely on case law precedent. See id. We decline to do so. Even as stated in
the United States Patent and Trademark Office’s (USPTO) guidance
materials, “[fjailure of Office personnel to follow the USPTO’s guidance
materials is not, in itself, a proper basis for either an appeal or a petition.”
May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27,381, 27,382
(May 6, 2016). Rather, “[^ejections will continue to be based upon the
substantive law, and it is these rejections that are appealable.” Id.
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).
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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 are a fundamental economic
practice and a method of organizing human activity (part 1 of the Alice
analysis), and that the remainder of the recited limitations do not add
significantly more to the abstract idea (part 2 of the Alice analysis). Final
Act. 2—3. As the Examiner explains, the generically-recited computer
elements are well-understood, routine, and conventional and, therefore, do
not add meaningful limitations to the abstract idea (part 2 of the Alice
analysis). See Id. Accordingly, the Examiner has set forth the statutory
basis for the rejection, established that the claims are directed to a judicial
exception to 35 U.S.C. § 101, and explained the rejection in sufficient detail
to permit Appellants to respond meaningfully. Thus, we find that the
Examiner established a prima facie case of ineligibility.
ISSUE II
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 (emphasis added). “[T]he ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
[Specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
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1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
The record supports the Examiner’s finding that the claims are
directed to an abstract idea. That is, when reading the claims as a whole in
light of the Specification, the invention ensures payment of patent annuities
using maintained contact information. According to Appellants’
Specification, the invention proposes a patent management system. Spec.
114. The Specification provides a tool to “track owners of patents so that
when it is time to pay annuity, they can be found.” Id. 1110. Paragraph 203
describes an illustrative embodiment pertaining to the subject matter of
claim 1. See id. 1203; Fig. 8.
At a high level of abstraction, claim 1 as a whole is directed to
ensuring payment using maintained contact information, albeit described
more narrowly by limiting its practical application to (1) a required annuity
payment for a patent to remain in force; and (2) the contact information
including details such as a name, postal address, or social security number.
Using maintained contact information to ensure payment is a method of
organizing human activity, and as such, an abstract idea. Ensuring payment
using the maintained contact information is also a fundamental economic
practice, and as such, an abstract idea. See Alice at 2356—57. As for the
more specific application of the abstract idea discussed above, this is
insufficient to change the abstract character of the claimed subject matter as
a whole. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371 (Fed. Cir. 2011) (“The Court [Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.”).
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Therefore, the recited steps are directed to (1) a method of organizing
human activities; and (2) a fundamental economic practice, that is, the
activities and practice associated with using maintained contact information
to ensure payment, which is an abstract idea under the first step of the
analysis.
Therefore, claim 1 is directed to 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—/. 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).
That claim 1 adds “using at least one processor” to perform various
operations in claim 1 does not change our conclusion. Nor does the claimed
invention improve the computer’s functionality or efficiency, or otherwise
change the way the computer functions. Cf. Enflsh, 822 F.3d at 1335.
Rather, claim 1 recites nothing more than using a generic computer to
monitor a patent requiring an annuity payment, and ping a patent owner
using contact information and at least one back-up contact. But merely
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reciting a generic computer cannot transform a patent-ineligible abstract idea
into a patent-eligible invention. See Alice, 134 S. Ct. at 2358. In other
words, merely reciting an abstract idea and adding the words “apply it with a
computer” does not render an abstract idea non-abstract: there must be more.
See id. at 2358. “[A]fter Alice, there can remain no doubt: reciting generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted).
We reach the same conclusion despite claim 1 reciting a “database”
that includes the maintained patent owner and back-up contact details.
“Purely ‘conventional or obvious’ ‘[pre]-solution activity’ is normally not
sufficient to transform an unpatentable law of nature into a patent-eligible
application of such a law.” Mayo, 566 U.S. at 79 (brackets in original)
(citing Parker, 437 U.S. at 590). Such a data gathering step is insignificant
extra-solution activity that is insufficient to render the claim patent-eligible.
See In re Bilski, 545 F.3d 943, 962—63 (Fed. Cir. 2008), affd on other
grounds, 561 U.S. 593 (2010).
Appellants nominally argue the Examiner fails to discuss the claims as
an ordered combination, as B as com 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. App. Br. 10;
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
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“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 a database and at least one
processor, and Appellants do not provide any persuasive explanation of how
the recited ordered combination of these elements amounts to an inventive
concept that converts an abstract idea into 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 agree with the Examiner that the claims are directed to
ineligible subject matter under 35 U.S.C. § 101.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2—12 not argued separately with particularity.
THE OBVIOUSNESS REJECTION
The Examiner finds that Horn discloses many recited elements of
independent claim 1 including, among other things, maintaining a database
including (1) patent owner contact details for a patent owner of a patent, and
(2) back-up contact details for a back-up contact for the patent owner.
Final Act. 4—5 (citing Horn Abstract; || 27, 40, 48, 51, 74; Figs. 1—7). The
Examiner also finds that Geary automatically pings the patent owner on a
periodic basis, and in response to not receiving a reply from the patent
owner within a predetermined time period, automatically pings the at least
one back-up contact. Id. 5 (citing Geary Abstract; || 39 42; Figs. 1—7).
According to the Examiner, it would have been obvious for Horn’s patent
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licensing database to include Geary’s reminder program to set up reminders
for eliminating expired patents. Id. 6.
Appellants argue that Geary does not teach or suggest pinging a back­
up contact in response to not receiving a reply to a communication from a
patent owner within a predetermined time period. App. Br. 12—14.
According to Appellants, Geary may send an email to multiple email
addresses of a contact, but does not disclose sending an email to a back-up
contact. Id. 13—14 (citing Geary 142).
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Horn and Geary collectively would have taught or suggested in response
to not receiving a reply to a communication from a patent owner, using a
back-up contact detail of a back-up contact to automatically ping the back­
up contact?
ANALYSIS
We begin by construing the term “back-up contact” in claim 1.
According to Appellants’ Specification, a “back-up contact” possesses
similar types of contact information as a patent owner, including at least a
postal address, an email address, and a social security number. Spec. 1203.
Although this passage from the Specification does not define explicitly the
term “back-up contact,” it nevertheless informs our construction of the term
as at least relating to an entity, other than the patent owner, that also
possesses contact information. We, therefore, construe the term back-up
“contact” in accordance with its plain meaning consistent with the
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Specification, namely “a person serving as a go-between, messenger,
connection, or source of special information .” Merriam-
Webster’s Collegiate Dictionary 248 (10th ed. 1999).
The Examiner finds that Geary teaches a backup contact. Final
Act. 5—6. But given the above construction, the Examiner’s findings are
problematic. Geary’s registration process includes a client entity submitting
the “client entity’s . . . email addresses” and details of an intellectual
property (IP) portfolio. Geary 139. Upon the client entity successfully
completing Geary’s registration process, Geary’s Common Gateway
Interface (CGI) program determines and stores the client entity’s next
renewal fee due date in a diary table. Id. Tffl 8, 40-41. Geary’s reminder
program retrieves, at regular intervals (e.g., weekly), the email addresses of
client entities for whom there are renewal due dates within the following
three months from the date of retrieval. Id. 142. Geary’s reminder program
further sends an email to each of the retrieved addresses. Id.
Despite these reminders, the Examiner has not sufficiently explained
how Geary teaches or suggests a back-up contact for the client entity, let
alone that such a back-up contact would be pinged automatically when no
reply is received from the primary contact, namely the client entity, within a
predetermined time period. The Examiner’s determination that it would
have ostensibly been obvious for Geary’s operator to automatically redirect
the reminder email to an alternate email address if no payment confirmation
is received within a given time period (Ans. 6) is, at best, speculative and
unsubstantiated. Nothing in Geary reasonably supports this purported back­
up procedure apart from the Examiner’s mere conclusory statements. That
the Examiner surmises the original email could be redirected to an alternate
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email address if a client’s confirmation is not received after a week (Ans. 6—
7)—despite Geary’s silence regarding such a redirection—only underscores
the inadequate evidentiary basis for the Examiner’s findings and conclusions
in this regard.
Therefore, we agree with Appellants that Geary does not teach or
suggest a back-up contact, let alone automatically pinging the back-up
contact in response to not receiving a reply to a communication from the
client entity. App. Br. 11—15; Reply Br. 4.
Accordingly, we are persuaded that the Examiner erred in rejecting
(1) independent claim 1; (2) independent claims 5 and 9, which recite
commensurate limitations; and (3) dependent claims 2—4, 6—8, and 10-12 for
similar reasons. Because this issue is dispositive regarding our reversing the
Examiner’s rejection of these claims, we need not address Appellants’ other
associated arguments.
NEW GROUND OF REJECTION
Under 37 C.F.R. § 41.50(b), we enter the following new ground of
rejection. Claims 1, 5, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Horn, Geary, and Palahnuk (US 2009/0157717 Al;
June 18, 2009). We adopt as our own the Examiner’s findings regarding
claims 1, 5, and 9 except, as discussed above, the finding that Geary teaches
or suggests a back-up contact and automatically pinging the back-up contact
in response to not receiving a reply to a communication from a client entity.
Palahnuk is generally directed to maintaining a user’s contacts.
Palahnuk 12. Palahnuk recognizes the need to simplify and organize a
user’s contacts (e.g., work, family, and friends) that may be stored at many
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different locations. Id. 14. Palahnuk’s contact harvester periodically
examines a contact database to determine whether contact information of the
user’s contacts is incomplete, out of date, or in error. Id. 147. Figure 6 of
Palahnuk illustrates that upon receiving incomplete contact information
(610) of the user’s contact, the process sends an email to the user’s contact
with a link to a website for the user’s contact to visit and provide any
missing or updated information (620). Id. Tflf 58—60; Fig. 6. If the user’s
contact has not visited the website over a specified time period (635), and no
other contact information of the user’s contact is attainable (640), then the
process notifies the user that the contact information of the user’s contact is
bad or incomplete (660) by sending an email or message to the user. Id.
1 63. Palahnuk’s process also inquires if the user has additional contact
information of the user’s contact. Id.
In summary, Palahnuk’s harvesting process contacts a user’s contact
to update the contact information of the user’s contact, and then contacts the
user if the user’s contact does not reply. Accordingly, we find Palahnuk at
least suggests that, in response to not receiving a reply to a communication
from the user’s contact (a primary contact analogous to the claimed “patent
owner”) within a first predetermined time period, using the user’s details to
automatically ping, using at least one processor, the user who is effectively a
“back-up contact”) by sending at least one of an email, telephone call, or text
message to the user.
Palahnuk’s process, then, effectively ensures that some back-up
entity, namely the user, is contacted in the event that a primary contact
cannot be reached after a certain time period. Given this known back-up
contact procedure, contacting a back-up contact after receiving no response
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to weekly reminder emails in Geary’s paragraph 42 would have been
obvious to ensure that some responsible entity would be reached in
connection with these emails despite the primary contact’s unavailability—a
predictable result.
Accordingly, we conclude the combination of Horn, Geary, and
Palahnuk would have taught or suggested the subject matter recited in
independent claim 1. Independent claims 5 and 9 are rejected for similar
reasons because they recite commensurate limitations. Although we decline
to reject every claim under our discretionary authority under 37 C.F.R.
§ 41.50(b), we emphasize that our decision does not mean that the remaining
claims are patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner in light of our new ground of
rejection. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02 (9th ed. Rev. 07.2015, Nov. 2015).
CONCLUSION
The Examiner erred in rejecting claims 1—12 under § 103, but did not
err in rejecting those claims under § 101.
We newly reject claims 1, 5, and 9 under § 103.
DECISION
The Examiner’s decision in rejecting claims 1—12 is affirmed.
37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for
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rehearing within two months from the date of the original decision of the
Board.”
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection for claims 1, 5, and
9 pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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)
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