Ex Parte Theresa et al

Patent Trial and Appeal Board

Aug 31, 2016

12570827 (P.T.A.B. Aug. 31, 2016)

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.
12/570,827 09/30/2009 Dominick Theresa 1900
88857 7590 08/31/2016
DOMINICK THERESA
214 RIVENDELL WAY
EDISON, NJ 08817
EXAMINER
KIM, SHIN H
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
08/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte DOMINICK THERESA, MICHELE KRAMER,
and NICK THERESA
____________________
Appeal 2014-005835
Application 12/570,827
Technology Center 3600
____________________
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Non-
Final rejection of claims 1, 3–6, 8, and 19–25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).

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CLAIMED SUBJECT MATTER
The claims are directed to a color coded marking system. Spec. 1
(Title). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An identification system comprising:
a plurality of first labels removably carried on at least one
substrate, each of the plurality of first labels including a first
color thereon, each of the first labels further including a marking
selected from either pre-set words or pre-set symbols to identify
a content category, the first color being associated with the
content category by being placed in juxtaposition with the
marking;
a plurality of attachment members, each of the attachment
members including the first color thereon and being associated
with the content category by matching the first color of plurality
of the first labels; and
a plurality of wrist bands configured to be wearable on the
wrist of a wearer, each of the wrist bands being substantially of
the first color and being associated with the content category by
matching the color of the plurality of first label;
wherein one of the plurality of first labels is selectable for
removable application to a flash memory device to identify the
content category of data stored on flash memory device by the
marking and the first color, wherein one of the attachment
members is configured for removable attachment with an
attachment feature of the flash memory device and one of the
wristbands is selectable for attachment with the attachment
member, the attachment member and the wrist band further
identifying the content category of the flash memory device by
matching the first color the selected label.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dompier
Yu
US 3,124,286
US 6,763,410 B2
Mar. 10, 1964
July 13, 2004
Erickson
Slater
US 2002/0180588 A1
US 2006/0026878 A1
Dec. 5, 2002
Feb. 9, 2006

REJECTIONS
(I) Claim 25 is rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
(II) Claims 1, 3–6, 8, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Slater, Dompier, and Erickson.
(III) Claims 21–25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yu, Slater, Dompier, and Erickson.

OPINION
Rejection (I)
Claim 21 recites, in part, “a first label removably applied on the
surface of the flash memory device, the label including a marking thereon.”
Appeal Br. 43. Claim 25 recites, in part, “[t]he assembly of claim 21,
wherein the label is a first label, the assembly further including a second
label.” Appeal Br. 44.
In rejecting claim 25 as indefinite, the Examiner states, “[c]laim 25
recites the limitation ‘a first label’ in line 2. It is unclear if another first label
is being claimed since a first label is claimed in claim 21.” Non-Final Act.
3.
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Appellants contend that the above-noted language in claim 25 “has
been the same the last 4 times,”1 and assert “[i]t should also be mentioned,
that the Examiner now for the first time upon reopening prosecution raised
the argument about ‘a first label’ which all previous times, the Examiner
stayed silent.” Appeal Br. 21. Appellants also state, “[a]fter a very careful
review of the Appellant wording in claim 25 that someone in the arts would
also agree, that the wording is correctly written in claim 25 and it makes
clear sense.” Appeal Br. 21.
We are not persuaded by Appellants’ arguments regarding the clarity
of claim 25. As is apparent from the portion of claim 21 reproduced above,
claim 21 introduces “a first label,” and then refers to the first label as “the
label.” Dependent claim 25 recites “the label” and specifies that this label is
“a first label.” We agree with the Examiner that such circular terminology is
unclear, and we sustain the Examiner’s rejection of claim 25 as indefinite.
Rejections (II) and (III)
Appellants present substantially the same arguments for independent
claim 1 as those made for independent claim 21. See Appeal Br. 12–38. As
such, aside from sections with headings for dependent claims, the following
analysis applies equally to Rejections (II) and (III).
The Examiner finds that Slater discloses many of the features recited
in claim 1, but “Slater does not directly disclose the identification system to
further comprise attachment members.” Non-Final Act. 4. Nonetheless, the
Examiner finds that Dompier teaches “an attachment member (Figure 1

1 Claim 25 was added by amendment on February 7, 2012, after which,
further prosecution on the merits occurred before the filing of the present
Appeal.
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Element 12); and a wrist band configured to be wearable on the wrist of a
wearer (Element 6), wherein the attachment member is configured for
removable attachment with an attachment feature of the device and
wristband is selectable for attachment with the attachment member.” Id.
The Examiner reasons that it would have been obvious to a person of
ordinary skill in the art to modify the device taught in Slater to include an
attachment member and wristband because “[s]uch a modification would
provide a means to secure the device on one’s wrist.” Id. The Examiner
also states:
Slater in view of Dompier does not directly disclose a
plurality of attachment members and wristbands and a plurality
of substrates. Duplication of parts is common and well known
in the part to provide a plurality of parts for a system. Erickson
discloses a system of labeling memory devices wherein the labels
comprise color coded indicators to assist viewers in recognizing
the content of the memory devices ([0032]).
Id.

Appellants contend:
(1) Erickson invention is not about color and/or color is
not within Erickson invention to function and/or work, (2)
Erickson invention does not disclose, teach and suggest any part
of the Appellant’s claimed elements, (3) Erickson in [0032] in
not speaking about color of his invention as Erickson in [0032]
is just mentioning color on behalf of a third party, (4) Erickson
invention also can not have been about a “system of labeling
memory devices” stated by the Examiner, because “memory
devices” was not invented until after Erickson art because
abandoned in 2002 as Yu on July 13, 2004 received patent
#6763410 for USB Memory Devices and (5) The Examiner re-
opening prosecution using mainly Erickson invention to argue
“COLOR” as Erickson reference should be moot within
Appellant appeal.
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Appeal Br. 13–14. Regarding Appellants’ contention that Erickson
discusses color “on behalf of a third party,” Appellants state, “[s]peaking on
behalf of a third party does not make [the] Erickson invention about COLOR
whatsoever.” Id. at 14. Appellants also argue that Examiner teaches an
RFID tag, which “has NOTHING TO DO WITH COLOR.” Id.
Appellants’ arguments regarding Erickson are not persuasive.
Erickson teaches marking the source of an item with an RFID tag. Erickson
¶ 31. Erickson states:
In many file rooms, color-coded file folders are used to
help users organize records. Colors may be used for categories
or sorting. An RFID element could be embedded or added to the
color-coded label. A separate color could, for example, be used
to indicate that a file has been converted, meaning that an RFID
tag or label has been attached to it, so that a user can quickly
determine which files are still awaiting conversion and which
have already been converted. If a folder were sold with
embedded RFID capability, the memory on the RFID tag could
be pre-programmed to include the color-coding information.
Id. ¶ 32 (emphasis added). Thus, Erickson identifies the file folders with
both RFID tags and via color-coded labels. Accordingly, the color-coded
labels and RFID tags bear a correlation to each other. Consequently,
although color-coding may not be the focus of the disclosure in Erickson,
because Erickson identifies file folders with both RFID tags and color-coded
labels, we do not agree with Appellants’ contention that “Erickson[‘s]
invention is not about color[,] and/or color is not within Erickson invention
to function and/or work [sic]” and thus, “Erickson[’s] invention does not
disclose, teach and suggest any part of the Appellant’s claimed elements.”
Appeal Br. 13.
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As for Appellants’ contention that the discussion in paragraph 32 of
Erickson relates to a third party, assuming for the purposes of argument that
this contention is correct, Appellants do not explain persuasively why such
disclosure should not be available to the Examiner in analyzing Appellants’
claims. See In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (Explaining
that “[t]he use of patents as references is not limited to what the patentees
describe as their own inventions”).
Regarding Appellants’ assertion that Erickson cannot have been
related to memory devices “because ‘memory devices’ was not invented
until after Erickson art [was] abandoned in 2002 as Yu on July 13, 2004
received patent #6763410 for USB Memory Devices [sic]” (Appeal Br. 14),
this argument is unpersuasive because both Yu and Erickson are prior art to
Appellants’ Application. Whether Erickson (which was published on
December 5, 2002) was abandoned before Yu’s patent issued is not relevant
to the question of whether these references qualify as prior art. See 35
U.S.C. § 102.
As for whether “Erickson . . . should be moot within Appellant[s’]
appeal” (Appeal Br. 14), Appellants’ make no persuasive argument as to
why the above-noted teaching in Erickson regarding color-coded folders and
RFID tags is not properly applied by the Examiner or should be unavailable
to the Examiner.
Appellants state, “[i]n further view, as discussed in claim 21 with
respect to claim 1 as nothing within the cited arts specifically associates a
color with an associated marking by juxtaposition of the color thereon.” Id.
at 18. Appellants’ assertion is not persuasive because Slater teaches that the
labels may be color-coded based on a device’s function. See Slater ¶ 15.
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Additionally, Erickson identifies the file folders with both RFID tags and via
color-coded labels. See Erickson ¶ 32; see also Ans. 2–3.
Appellants next argue that the Examiner relies solely on Erickson in
the rejection of claim 1 (as well as claims 5 and 21), and Erickson does not
disclose any portion of claim 1. Appeal Br. 19–21. In this regard,
Appellants state, “[t]he Examiner addressing solely Erickson to claim 1, 5
and 21 which the claims is about color, the color coded marking system,
attachments, symbols, words on labels and etc.” Id. We do not agree with
Appellants on this issue because the Examiner’s rejection of claims 1 and 5
is based on a combination of Slater, Dompier, and Erickson (see Non-Final
Act. 3–6), and the Examiner’s rejection of claim 21 is based on a
combination of Yu, Slater, Dompier, and Erickson (see id. at 6–8).
Claims 5, 20, and 24
Aside from the arguments made for independent claim 1, Appellants
assert that claims 5, 20, and 24 require the recited markings to include
symbols (Appeal Br. 20), and that none of the cited references teach
markings including symbols (id. at 22–26).
Claim 5 does not require symbols. Claim 5 depends from claim 1,
which requires “a marking selected from either pre-set words or pre-set
symbols.” Id. at 40 (emphasis added). When a claim contains alternatives,
the claim is met if any of the alternatives is known in the prior art. See
Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (citing Titanium Metals
Corp. of America v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985). Thus, in
claim 1, the marking is not required to be a pre-set symbol because symbols
are merely one of two alternatives for the marking, i.e., the marking may be
a pre-set word instead. Claim 5 further limits what the symbols (one of the
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recited alternatives recited in claim 1) may be, but does not require the
marking to be a symbol. Accordingly, even assuming for the purposes of
argument that Appellants’ assertion regarding a failure of the cited
references to disclose markings that are symbols is correct, this argument is
not commensurate with the scope of claim 5. Thus, we sustain the
Examiner’s rejection of claim 5. As our interpretation of claim 5 differs
significantly from the Examiner’s, we designate our affirmance of the
Examiner’s rejection of claim 5 a NEW GROUND OF REJECTION.
Unlike claim 5, claim 20 recites a marking including a symbol. See
Appeal Br. 42. Further, claim 24 recites, “[t]he assembly of claim 21,
wherein the marking includes a symbol.” Appeal Br. 43.
The Examiner finds that Slater discloses “each of the first and second
labels further including a marking selected from either pre-set words or pre-
set symbols to identify a content category.” Non-Final Act. 3–4 (citing
Slater, Fig. 1); see also Non-Final Act. 8. In the Answer, the Examiner
elaborates on this finding, stating the Examiner “identifies the word
‘symbols’ as described on Webster dictionary, ‘: an arbitrary or conventional
sign used in writing or printing relating to a particular field to represent
operations, quantities, elements, relations, or qualities’” and “Slater
discloses a label set having symbols and color variation for a color coding
system of label objects (keys).” Ans. 4.
We reproduce Figure 1 of Slater below.
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Figure 1 of Slater depicts a sheet of labels, each displaying a word, number,
or combination thereof. Slater ¶ 22.
Appellants’ claim 1 lists words and symbols as alternatives.
Specifically, claim 1 recites “each of the first labels further including a
marking selected from either pre-set words or pre-set symbols.” Appellants’
Specification identifies numbers, words, and graphical markings separately,
with graphical markings identified as “symbols.” See Spec. ¶¶ 20–24; Fig.
1. Original claim 1 also differentiates between words, numbers, and
symbols, reciting in part, “one or more items selected from the list of colored
write-on, colored pre-set words, colored pre-set symbols, colored pre-set
numbers and colored multi-mixed decorative design labels.” In light of
Appellants’ Specification, we interpret the term “symbols” as recited in the
claims to exclude text and numbers.
The Examiner does not identify any disclosure in Slater corresponding
to a “symbol” as we interpret this term. Rather, Figure 1 of Slater depicts
labels carrying only text and/or numbers. However, Appellants’ attempt to
distinguish Slater based on what is depicted on the recited labels (symbols
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instead of text or numbers), that is, the content of recited labels, is not
persuasive.
Our reviewing court has held that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted). See also In re Xiao, 462 Fed. Appx. 947
(Fed. Cir. 2011) (Non-precedential) (Non-functional descriptive material,
being useful and intelligible only to the human mind, is given no patentable
weight).
In Xiao, the Examiner rejected a claim to a combination lock with
tumbler rings each having multiple alphabetical letters and a single wildcard
position label. Id. at 949. The wildcard position label was defined as
different from any of the alphabetical letters. Id. The Examiner found that
one prior art reference, Gray, disclosed all the features recited in the claim
except a wildcard position label different from and configured for
representing any letter. Id. The Examiner considered the wildcard position
labels to be printed matter unrelated to the function of the claimed lock, and
therefore, not entitled to patentable weight.2 Id. Xiao argued that the

2 As an alternative ground of rejection, the Examiner found that a second
prior art reference, Fiegener, disclosed position labels, and implementing
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wildcard position labels exhibited a synergistic functional relationship with
the claimed lock and should thus be accorded patentable weight. Id. at 950.
Rejecting this argument and denying patentable weight to the claimed use of
the wildcard position labels, the Federal Circuit held, “the presence or
identity of a given position label has no bearing on the lock’s ultimate
function, and the claimed device can be used in the same way and for the
same purposes with or without wild-card position labels.” Id. at 951.
The symbols recited in claims 20 and 24 are similar to the wildcard
position labels discussed in Xiao. The particular language of the message on
the label, whether via text or non-textual symbol, does not functionally relate
to the label upon which the message is carried. Rather, the label performs its
intended function when the message is conveyed via text the same way the
label performs its intended function when the message is conveyed via a
symbol. Accepting Appellants’ argument would permit the patentability of
labels on items based on the particular types of characters (alphabetical,
numerical, or symbolic) used to convey the same information. Accordingly,
we construe claims 20 and 24 more broadly than did the Examiner inasmuch
as it was not necessary for the Examiner to find labels including the symbols
recited in claims 20 and 24 because, in this case, the particular form of the
message displayed on the recited labels does not carry patentable weight.
Rather, finding labels as recited, but with text instead of symbols, would
have been sufficient.

them in the lock of Gray would have been a matter of design choice. Xiao,
462 Fed. Appx. at 949. The Court did not reach this argument in light of
affirming the rejection based on denying the recitation of the wildcard
position label patentable weight. Id. at 952.
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Slater discloses labels for placement on a variety of items, wherein the
labels are related to the content of the item. See Slater ¶ 16 (stating “[t]he
need for such a product can be found in a number of places where people
carry multiple objects that appear the same. Keys are just one example of an
object that appear similar. Other examples include pill bottles that could
include markings for morning pill and evening pill”); see also Slater, Fig. 1.
Thus, in light of the lack of patentable weight given to the particular form of
markings recited in claims 20 and 24, Slater meets the requirement that the
labels have a marking including a symbol. Regarding the recitation in claim
20 that “ones of the first labels having a marking including words are on a
first substrate and ones of the first labels having a marking including a
symbol are on a second substrate,” because the depiction of symbols rather
than text carries no patentable weight in the context of claim 20, this
recitation merely requires a plurality of substrates. Providing a plurality of
substrates carrying labels would have been obvious because Slater suggests
providing substrates including all the same label as well as substrates
including various labels. See id. ¶ 25. Further, Slater discloses hanger hole
70 on packaging 20, which suggests hanging multiple substrates for display
at a retail location. See id. ¶¶ 22–24; Fig. 1. Accordingly, based on our
claim construction above, we enter a NEW GROUND OF REJECTION of
claim 20 as unpatentable over Slater, Dompier, and Erickson and of claim 24
as unpatentable over Yu, Slater, Dompier, and Erickson.
Appellants next argue “[c]laims 1, 3–6, 8, 19–25 are not obvious
under 35 U.S.C. §103(a) over Slater in view of Dompier in view of Erickson
in view of Yu and all fails to teach all components/elements, no suggestion
to combine references and no reasonable expectation of success.” Appeal
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Br. 27 (emphasis omitted). Appellants then list various features disclosed in
Appellants’ Specification, without identifying which claim recites any
particular feature, and Appellants assert that certain features are disclosed in
one or more of Slater, Dompier, Erickson, and Yu, and others are not.
Appeal Br. 27–32. See also Appeal Br. 34 ([S]tating: “Slater shows color
but is very limited to other color levels and color symbols. Slater also does
not teach any attachments, Dampier and Yu has attachments but no color, no
marking system and Erickson is moot fails to teach any component of the
Appellant invention”).
We do not find persuasive this unsupported assertion that elements are
missing from the art. Rejections (II) and (III) are based on the Examiner’s
proposed combinations of references, and merely listing elements allegedly
missing from individual references is insufficient to apprise us of Examiner
error. See In re Lovin, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011) ([H]olding
that the Board had reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as
requiring “more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art”). Moreover, 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 (Fed. Cir. 1986). Appellants assert
“[t]he only place that teaches the advantage of a color coded marking system
is the Appellant’s [S]pecification and claims.” Appeal Br. 33. We do not
agree. Slater teaches that the labels may be color-coded to associate a color
with a function of the device upon which the label is placed. See Slater ¶ 15
([S]tating that “[a]nother feature of the invention is to provide the labels in a
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variety of colors so a user can associate each color with a function”).
Further, as discussed above, Erickson identifies the file folders with both
RFID tags and via color-coded labels. See Erickson ¶ 32; see also Ans. 2–3.
Appellants also contend that “color, symbols and attac[h]ments as
suggested by the Examiner would change the principle of operation of
Slater, Dampier, Erickson and Yu inventions.” Appeal Br. 33.
We are not persuaded by this argument because Appellants do not
explain what principle of operation would be changed in Slater (the
reference modified in the rejections based on § 103). Further, in the
Examiner’s proposed combination, the labels in Slater would perform the
same function Slater explicitly discloses, namely, labeling objects according
to their purpose. See Slater Abst. (stating “[t]he invention is used to provide
identification to items that may have a similar appearance”); see also Slater
¶¶ 9, 15–16.
Appellants next argue that “nothing within Slater and Dampier
teaches or suggests matching the color of an attachment feature to further
identify the category of the USB memory device by the predetermined
association of the category with the color.” Appeal Br. 34.
We disagree because, as discussed above, both Slater and Erickson
disclose color-coding. See Slater ¶ 15; see also Erickson ¶ 32. Moreover,
Slater explicitly discloses that his labels may be applied to any items that
appear similar to each other. See Slater Abstract, ¶ 16.
Appellants also assert that nothing in the cited references teaches or
describes the “identification system [recited in claim 1] in which the color of
the attachment member and the wrist band match that of the label, which is a
pre-associated with a category-identifying marking, serving to further
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ascribe such an identifying characteristic to the attachment member and the
wrist band.” Appeal Br. 34–35.
This argument addresses the references individually and fails because
the Examiner’s rejection of claim 1 is based on a combination of Slater,
Dompier, and Erickson, and the Examiner’s rejection of claim 21 is based on
a combination of Yu, Slater, Dompier, and Erickson. See Non-Final Act. 3–
5.
Appellants next assert that there would have been no reasonable
expectation of success in combining Slater, Dompier, Erickson, and Yu; a
person of skill in the art would not have had a reason to combine these
references; and “Slater, Dompier, Erickson, and Yu all teach against such
combinations.” Appeal Br. 36. Appellants also argue “Slater art is not
intended to be integrated onto USB Memory Device as a COLOR CODED
MARKING SYSTEM with ATTACHMENTS as it’s only for a key and the
key is only for one particular thing (example: bike, shed, mail, garage and
etc).” Id. at 37.
We do not find these assertions to be persuasive inasmuch as they
amount to unsupported allegations without adequate explanation.
Appellants’ provide no persuasive evidence or technical reasoning
explaining why, in the art of labeling items, there would be any difficulty in
implementing the Examiner’s proposed combination. Nor do Appellants
persuasively explain why any of the references teach away from the
Examiner’s proposed combination. Indeed, as discussed above, Slater
explicitly states that his labels may be used for items (objects that appear
similar, such as pill bottles) other than keys. See Slater ¶ 16, Abstract.
Appellants’ assertion that there is no reason to combine the cited references
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as proposed by the Examiner suffers from the same deficiency. The
Examiner set forth specific rationales for the proposed combinations of
references (see Non-Final Act. 3–9), and Appellants’ contentions do not
adequately address these.
We have reviewed all of Appellants’ arguments, but we find them to
be unpersuasive. Accordingly, we sustain Rejections (I)–(III).

DECISION

(I) The Examiner’s rejection of claim 25 as indefinite is affirmed.
(II) The Examiner’s rejection of claims 1, 3–6, 8, 19, and 20 as
unpatentable over Slater, Dompier, and Erickson is affirmed, and we
designate our affirmance of the rejection of claims 5 and 20 as a NEW
GROUND OF REJECTION.
(III) The Examiner’s rejection of Claims 21–25 as unpatentable over
Yu, Slater, Dompier, and Erickson is affirmed, and we designate our
affirmance of the rejection of claim 24 as a NEW GROUND OF
REJECTION.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of 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:
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(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 Manual of Patent Examining Procedure § 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.
§ 1.136(a)(1)(iv).
AFFIRMED