Ex Parte Saxe et al

Board of Patent Appeals and Interferences

Apr 6, 2010

10440988 (B.P.A.I. Apr. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUCAS SAXE and PATRICK DOUGLAS
____________

Appeal 2005-002600
Application 10/440,988
Technology Center 3600
____________

Decided: April 6, 2010
____________

Before JAMES T. MOORE and ALLEN R. MacDONALD, Vice Chief
Administrative Patent Judges and MICHAEL W. O’NEILL, Administrative
Patent Judge.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2005-002600
Application 10/440,988

2
STATEMENT OF THE CASE
Lucas Saxe and Patrick Douglas (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 18-33. Appellants canceled
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claimed invention is to stackable pet shelters. Spec. 1, para.
[0002].
Claim 18, reproduced below, is illustrative of the subject matter on
appeal.
Claim 18. A stable stack of nested pet shelter sections
which facilitates acquisition of a single pet shelter from one end
of the stable stack without causing instability within the stable
stack, the stable stack comprising:
a first pet shelter comprising a first group of pet shelter
sections including:
a first bottom comprising sloped sidewalls and
including at least one opening, and
a first top grouped with the first bottom within the
stable stack and comprising sloped sidewalls and a roof
including a peaked center ridge; and
a second pet shelter comprising a second group of pet
shelter sections including:
a second bottom comprising sloped sidewalls and
including at least one opening, and
a second top grouped with the second bottom
within the stable stack and comprising sloped sidewalls
and a roof including a peaked center ridge,
wherein the second pet shelter is above the first pet
shelter in the stable stack and the sloped sidewalls of at least
one of the first top and first bottom provide lateral support for
the sloped sidewalls of at least one of the second top and
second bottom, thereby ensuring stability within the stable stack
Appeal 2005-002600
Application 10/440,988

3
even during removal of the second pet shelter from one end of
the stable stack.
Evidence
The Examiner relies upon the following as evidence of
unpatentability:
Northrop US Des. 349,980 Aug. 23, 1994
Bradburn US 5,575,239 Nov. 19, 1996

Appellants rely upon the following as evidence of patentability:
Declaration of Lucas Saxe filed under 37 C.F.R. § 1.132 (hereinafter “Saxe
Declaration”).
The Rejections
The following Examiner’s rejections are before us for review:
Claim 33 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. In particular, the
Examiner has found that the terms “retail display” and “shipping crate” are
not adequately described in the originally filed Specification. Ans. 3.
Claims 18-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Northrop and Bradburn. The Examiner concluded that the teachings of
Northrop and Bradburn rendered obvious the claimed subject matter. Ans.
4-6.
Contentions
Appellants contend that the terms “retail display” and “shipping crate”
are adequately described. App. Br. 5-6. Appellants quote passages of the
originally filed Specification as the basis for concluding that Appellants
described the claimed invention in such sufficient detail that a person of
Appeal 2005-002600
Application 10/440,988

4
ordinary skill in the art could reasonably conclude that the inventors had
possession of the claimed invention. Id.
Appellants contend that the Examiner’s conclusion of obviousness is
based on a misguided view of legal authority and examination procedure.
App. Br. 6-7. Further, Appellants contend that these misguided views have
caused the Examiner to improperly apply a teaching found in the pet carrier
art of identical tops and bottoms that can be “nested” together to form a
stable stack because of their symmetry, as a bridge to conclude that
“nesting” non-identical tops and bottoms in the pet shelter art would be
obvious to a person of ordinary skill in the art. App. Br. 9-10. Moreover,
Appellants contend that the Examiner has ignored the Saxe Declaration
which highlights the nonanalogous nature of the pet carrier art to the pet
shelter art and traditional secondary considerations of nonobviousness. App.
Br. 10 and Reply Br. 2.

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.

OPINION
Issues
In light of Appellants’ contentions and the Examiner’s positions, the
issues before us are as follows:
(1) Has the Examiner erred in finding the terms “retail display” and
“shipping crate” in the preamble of claim 33 are inadequately described in
the originally filed Specification?
Appeal 2005-002600
Application 10/440,988

5
(2) Has the Examiner’s erred in the determination of obviousness
based on the record before the Examiner?
Issue (1)
Pertinent Facts
Appellants’ originally filed Specification provides the following
disclosures concerning pet shelters, retail, and shipping:
1. The invention relates to pet enclosures that are readily stackable so
as to occupy as little retail space as possible. Spec. 1, para. [0002].
2. Two-piece pet shelters that are available for purchase at retail pet
stores are well known. Spec. 1, para. [0003].
3. At retail outlets, where pet shelters are sold, display space is at a
premium. As such, two-piece shelters are broken down into their
separate sections in order to maximize the number of shelters per
unit area of shelf space. Spec. 3, para. [0009].
4. The disclosed pet shelter has multiple features that contribute to its
stackability in an efficient and stable manner. Spec. 4-5, paras.
[0013]-[0015].
5. The disclosed pet shelter advantageously reduces the amount of
warehouse space needed to store multiple shelters. In addition, the
disclosed pet shelter reduces transportation costs, because of its
efficient stackability, as more shelters fit within a standard
shipping container. Spec. 9, para. [0038].
Principles of Law
Recently, the Court of Appeals for the Federal Circuit decided en banc
the scope and purpose of the written description requirement within the first
paragraph of 35 U.S.C. § 112. The court reaffirmed that the written
Appeal 2005-002600
Application 10/440,988

6
description requirement found in the first paragraph of 35 U.S.C. § 112 is
separate and distinct from the enablement requirement of that provision.
Ariad Pharms., Inc. v. Eli Lilly and Co., --- F.3d ----, 2010 WL 1007369, at
*12 (Fed. Cir. 2010) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1562-1563 (Fed. Cir. 1991)). Further, the purpose of the written description
requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons
of ordinary skill in the art to recognize that [the inventor] invented what is
claimed.” Ariad, 2010 WL 1007369, at *12.
Accordingly, “the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citing Ralston Purina Co. v. FarMar-Co, Inc., 772 F.2d 1570, 1575
(Fed. Cir. 1985)). The hallmark of the written description is disclosure.
Ariad, 2010 WL 1007369, at *12. As such, not just possession, but
“‘possession as shown in the disclosure’ is a more complete formulation.”
Id. Thus, the test for whether the claims are adequately described “requires
an objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art.” Id. “Based on that
inquiry, the specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the invention
claimed.” Id. This inquiry is a question of fact. Id. (citing Ralston Purina,
772 F.2d at 1575). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Ariad, 2010 WL 1007369, at *12 (citing Capon v. Eshhar, 418 F.3d 1349,
1357-58 (Fed. Cir. 2005)).
Appeal 2005-002600
Application 10/440,988

7
Analysis
Pet shelter technology is neither complex nor unpredictable. A person
of ordinary skill in the art would be familiar with the requirements for
displaying and shipping pet shelters for retail sale and storage. A person of
ordinary skill in the art would be familiar with the basic concepts of
marketing pet shelters, the premium of retail space for selling pet enclosures,
and the costs of transportation and storage of pet shelters. A person of
ordinary skill in the art would understand that the above concepts factor into
the profitability of a particular pet shelter at the retail sale level.
Accordingly, a person of ordinary skill in the art would be familiar with the
placement of a stack of pet shelters in a retail space for display, and shipping
and storing the stack of pet shelters with the least amount of costs related to
space, storage, and transportation in order to maximize the profits for the
manufacturer, distributor, and retail outlet.
As such, the amount of disclosure required in Appellants’ originally
filed Specification for the terms “retail display” and “shipping crate” as set
forth in claim 33 is relatively minimal since persons of ordinary skill in the
art are quite familiar with pet shelter business concepts and the pet shelter
technology is neither complex nor unpredictable. Appellants’ Specification
contains a number of instances where stackable pet shelters are within retail
space and shipping crates. Facts 1-5. Accordingly, when viewing the four
corners of Appellants’ Specification from the perspective of a person of
ordinary skill in the art, the Specification contains a sufficient disclosure in
order for the terms “retail display” and “shipping crate,” as set forth in claim
33, to be adequately described by the Specification.

Appeal 2005-002600
Application 10/440,988

8
Issue (2)
Pertinent Facts
6. The Examiner concluded that the combined teachings of Northrop
and Bradburn render obvious the claimed subject matter set forth
in claims 18-32. Ans. 4-6.
7. Appellants filed the Saxe Declaration to provide evidence of
secondary considerations and noted the secondary considerations.
App. Br. 10 (n. 1). Appellants argued that the Examiner did not
consider the evidence of secondary considerations set forth in the
Saxe Declaration. Reply Br. 2 (n. 2).
8. The prosecution history does not demonstrate that the Examiner
considered the contents of the Saxe Declaration.
Principles of Law
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).
Appeal 2005-002600
Application 10/440,988

9
Regardless of whether the case for obviousness could be characterized
as strong or weak, the Examiner must consider all of the evidence anew
when secondary considerations have been presented into evidence. In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
Analysis
The Examiner concluded that the claimed subject matter was obvious.
Fact 6. Appellants, in rebutting the Examiner’s conclusion of obviousness,
submitted the Saxe Declaration. Fact 7. The Examiner appears not to have
considered the contents of the Saxe Declaration. Fact 8. As stated above,
the Examiner must consider all of the evidence anew regardless of whether
the Examiner perceives the case for obviousness as strong or weak. From a
review of this record, it appears that the Examiner did not consider the
contents of the Saxe Declaration and thus any potential evidence for
nonobviousness submitted by Appellants. As such, by not considering the
potential evidence of nonobviousness presented in the Saxe Declaration, the
Examiner erred in concluding the claimed subject matter was obvious in
light of all of the evidence.

NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b). By rule, this panel has discretion to add one or more new
grounds of rejection:
Should the Board have knowledge of any grounds
not involved in the appeal for rejecting any
pending claim, it may include in its opinion a
statement to that effect with its reasons for so
holding, which statement constitutes a new ground
of rejection of the claim.
Appeal 2005-002600
Application 10/440,988

10
37 C.F.R. § 41.50(b) (emphasis added).
The rule is permissive and merely provides the Board panel with the
option of making a new ground of rejection.
In the analysis that follows, we have chosen to enter a new ground of
rejection under 35 U.S.C. § 103(a) only for independent claim 18.
Pertinent Facts
9. Claim 18 requires that at least a bottom of a first pet shelter
provides lateral support for the sidewalls of a top of a second pet
shelter.
10. Northrop depicts a pet shelter having a top and bottom with an
opening. Figs. 1-7. This shelter resembles Appellants’ disclosed
pet shelter. See Appellants’ Fig. 1. Northrop does not describe the
pet shelter as capable of having the bottom of the pet shelter
provide lateral support for the sidewalls of the top.
11. Bradburn describes an analogous pet shelter. Shelter 10
comprises bottom 100 (hollow base portion, Bradburn
nomenclature) and top 200 (hollow top portion, Bradburn
nomenclature). Col. 4, ll. 34-38, fig. 1.
12. Bradburn describes that top 200 ends at closed end 202. Col. 6, ll.
37-39.
13. Bradburn describes that base portion 100 defines chamber 101.
Col. 9, ll. 19-20, fig. 2.
14. Bradburn describes that chamber 101 receives “a substantial
portion of the top portion 200, at least 70% by volume, when the
top portion 200 is inverted so that the closed end 202 of top portion
200 enters the chamber 101 first.” Col. 9, ll. 20-24.
Appeal 2005-002600
Application 10/440,988

11
Issue
Based on the above findings concerning the scope and content of the
prior art, the difference between the prior art and the claimed invention
within claim 18, and the level of ordinary skill in the pet shelter art, the
dispositive issue concerning the claimed invention relative to the prior art is:
whether the disclosure of Bradburn’s bottom portion of the pet shelter
receiving at least 70% by volume of the top portion when the top portion is
inverted would lead to a conclusion that a bottom of a first pet shelter
provides lateral support for the sidewalls of a top of a second pet shelter
when a plurality of shelters are stacked together, based on the combined
teachings of Northrop and Bradburn.
Principles of Law
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). “Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 415, and discussed
circumstances in which a patent claim might be determined to be obvious.
One of these circumstances is when the claim is directed to a simple
arrangement of old elements with each element performing the same
function as the element had been known to perform before and the
arrangement yields no more than a person of ordinary skill in the art would
Appeal 2005-002600
Application 10/440,988

12
expect from such an arrangement. Id. at 416 (citing to Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976)).
Analysis
Claim 18 functionally claims how the stack of pet shelters is able to
be stable (Fact 9) rather than structurally, viz., the roof of the shelter having
a gradual slope and the sidewalls of both the top and bottom having
complementary sloping angles so that when a top is inverted and placed
inside the bottom the sidewalls remain flush.
Northrop depicts a pet shelter that resembles one of Appellants’
disclosed shelters. The difference between the claimed invention and
Northrop is that Northrop lacks describing the shelter as capable of having
the top portion laterally supported by the sidewalls of the bottom portion
when the top is inverted and placed into the bottom. Fact 10. In an
analogous pet shelter, Bradburn describes that the bottom of the shelter is of
a size and shape such that when the top portion of the shelter is inverted, the
bottom is capable of containing at least 70% by volume of the top. Facts 11-
14. A person of ordinary skill in the art would understand that one structure
accommodating 70% by volume of another structure would in effect provide
lateral support to the other structure being accommodated since a substantial
amount of the other structure is within the one structure. As such,
Bradburn’s description satisfies the claimed functional feature of the
sidewalls of a bottom providing lateral support to the top.
Regarding claim 18 being directed to a stack of pet shelters stacked in
such a manner that a bottom of a first shelter laterally supports the top of a
second shelter, claim 18 is directed to an arrangement of old elements with
each element performing the same function as the element had been known
Appeal 2005-002600
Application 10/440,988

13
to perform. Unless the arrangement yields more than a person of ordinary
skill in the art would expect from such an arrangement, the arrangement is
obvious. KSR, 550 U.S. at 416. Appellants’ arguments both in the Appeal
Brief and Reply Brief are not directed to demonstrating that the claimed
arrangement of old elements yields more than a person of ordinary skill in
the art would expect from such an arrangement and thus are unconvincing.
Accordingly, the arrangement set forth in claim 18 is rendered obvious by
the combined teachings of Northrop and Bradburn.
Secondary Considerations
Whenever obviousness is found with respect to the subject matter on
appeal, and Appellants furnish evidence of secondary considerations, it is
then our duty to reconsider the issue of obviousness anew, carefully
weighing the evidence for obviousness with respect to the evidence against
obviousness. See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir.
1990). We are also mindful that the objective evidence of nonobviousness
in any given case may be entitled to more or less weight depending on its
nature and its relationship with the merits of the invention. See Stratoflex
Inc. v. Aeroquip, 713 F.2d 1530, 1538 (Fed. Cir. 1983). To be given
substantial weight in the determination of obviousness or nonobviousness,
evidence of secondary considerations must be relevant to the subject matter
as claimed, and therefore we must determine whether there is a nexus
between the merits of the claimed invention and the evidence of secondary
considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 306 n.42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986).

Appeal 2005-002600
Application 10/440,988

14
Saxe Declaration
Turning to Appellants’ evidence of secondary considerations, the
Saxe Declaration, paragraphs 1 and 2, are directed to identifying the
Declarant. Paragraphs 3 through 5 declare there is a difference between pet
carriers and pet shelters. Paragraphs 6 through 9 declare the state of the
prior art. The aforementioned paragraphs fail to establish a nexus to the
merits of the claimed invention. Instead, these paragraphs identify the
Declarant and state the Declarant’s opinion with respect to the differences in
pet enclosures and the status of the pet enclosure art.
Paragraphs 10-12 declare that the claimed invention has been
commercially successful. Essentially, these paragraphs state gross sales
figures for 18 months. However, evidence of number of units sold, volumes
of dollar sales, or proof of existing market share quite simply does not
indicate anything with regard to the reasons for commercial success. Such
evidence must be placed in perspective by demonstrating the subject
invention displaces prior art devices or surpasses the volume sales of prior
art devices. See, e.g., Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1026-1027 (Fed. Cir. 1985) (number of units sold and profit per unit
not enough); or Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151(Fed. Cir.
1983) (number of units sold not enough). The sales figures provided in the
Declaration are not placed in perspective by demonstrating that Appellants’
invention displaces prior art pet shelters or surpasses the volume of sales of
prior art pet shelters.
Even if we were to find a sufficient nexus between this evidence of
commercial success and the claimed invention, Appellants have failed to
provide persuasive evidence as to market share so as to put the evidence of
Appeal 2005-002600
Application 10/440,988

15
gross sales figures into perspective in the context of the particular market at
hand. See In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996) (without
evidence that the sales are a substantial quantity in the relevant market, “bare
sales numbers” are a “weak showing” of commercial success, if any); In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[I]nformation
solely on numbers of units sold is insufficient to establish commercial
success”); Kansas Jack, Inc. v. Kuhn, 719 F.2d at 1151 (Fed. Cir. 1983)
(“The evidence of commercial success consisted solely of the number of
units sold. There was no evidence of market share, of growth in market
share, of replacing earlier units sold by others or of dollar amounts, and no
evidence of a nexus between sales and the merits of the invention. Under
such circumstances, consideration of the totality of the evidence, including
that relating to commercial success, does not require a holding that the
invention would have been nonobvious at the time it was made to one skilled
in the art.”)
In paragraph 13, the Declarant attributes “a significant portion of the
commercial success of the stackable pet shelters of the claimed invention
over competing products to the ability to nest the top and bottom of each pet
shelter with the next pet shelter.” This statement connects an aspect of the
claimed invention to commercial sales. The Declarant continues that
retailers benefit from selling the stackable pet shelters of the claimed
invention because the retailers can dedicate less retail display space to the
pet shelter and “can conveniently combine other add-on type purchases, such
as padding, doors, or the like, in-between each top and bottom.” Decl., para.
13. While the dedication of less retail display space connects to an aspect of
the claimed invention, the convenience of combining other add-on type
Appeal 2005-002600
Application 10/440,988

16
purchases undercuts the argument that Appellants’ invention was
commercial success only because of the aspects of the claimed invention and
cannot be attributed to other factors. See In re Paulsen, 30 F.3d 1475, 1482
(Fed. Cir. 1994) (Evidence of commercial success of articles not covered by
the claims subject to the obviousness rejection was not probative of non-
obviousness). Objective evidence of non-obviousness, including
commercial success, must be commensurate in scope with the claims. See In
re Tiffin, 448 F.2d 791, 792 (CCPA 1971) (evidence showing commercial
success of thermoplastic foam “cups” used in vending machines was not
commensurate in scope with claims directed to thermoplastic foam
“containers” broadly). In order to be commensurate in scope with the
claims, the commercial success must be due to claimed features, and not due
to unclaimed features. See Joy Techs. Inc. v. Manbeck, 751 F. Supp. 225,
230 (D.D.C. 1990), aff'd, 959 F.2d 226, 228 (Fed. Cir. 1992) (Features
responsible for commercial success were recited only in allowed dependent
claims, and therefore the evidence of commercial success was not
commensurate in scope with the broad claims at issue.).
Accordingly, Appellants have offered insufficient facts to show that
the commercial success is due to the nature of the claimed invention, as
opposed to other economic and commercial factors unrelated to the technical
quality of the claimed subject matter.
As to the evidence of purported competitor copying declared in
paragraphs 14 and 15, since the alleged competitors’ pet shelters, shown in
Bradburn, do not appear to include a depiction of stacking the pet shelters,
the evidence of copying has no nexus to the invention of claim 18. As such,
the evidence is not commensurate with the claimed invention. Even if we
Appeal 2005-002600
Application 10/440,988

17
were to find a nexus, the evidence submitted is insubstantial evidence of
nonobviousness because Appellants have not adequately shown that the
competitors copied Firstrax’s product despite the failure of protracted efforts
by the copyists to design a similar device, or that the competitors’ decision
to copy was not simply out of a general lack of concern for patent property
on the part of the competitor companies. See Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d at 1028 (Fed. Cir. 1985).
After reviewing all of the evidence before us, including the totality of
Appellants’ evidence, it is our conclusion that, on balance, the evidence of
nonobviousness fails to outweigh the evidence of obviousness discussed
above and, accordingly, the subject matter of claim 18 would have been
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103(a) at the time Appellants’ invention was made.
The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have made the rejection above
under 37 C.F.R. § 41.50(b). However, we have not reviewed claims 19
through 33 to the extent necessary to determine whether these claims are
unpatentable over Northrop, Bradburn, and other patents cited in the record
when weighted against the Saxe Declaration. We leave it to the Examiner to
determine the appropriateness of any further rejections.

CONCLUSIONS
The Examiner erred in finding claim 33 lacks an adequate written
description within the originally filed Specification.
Appeal 2005-002600
Application 10/440,988

18
The Examiner erred in concluding the claimed invention is obvious
without weighing Appellants’ purported evidence of secondary
considerations set forth in the Saxe Declaration.
Concerning claim 18, when we balance the evidence for obviousness
with respect to Appellants’ evidence against obviousness, it is our
conclusion that the evidence for obviousness outweighs the evidence against
obviousness.
DECISION
The decision of the Examiner to reject claim 33 under 35 U.S.C.
§ 112, first paragraph, is reversed.
The decision of the Examiner to reject claims 18-32 under 35 U.S.C.
§ 103(a) is reversed.
This decision contains new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2009). 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 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 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. . . .

Appeal 2005-002600
Application 10/440,988

19
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.
§ 1.136(a)(1)(iv) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

mls

KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614