Ex Parte Young

Patent Trial and Appeal Board

Jul 31, 2018

13508522 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/508,522 06/29/2012
6980 7590 08/02/2018
TROUTMANSANDERSLLP
600 Peachtree St., NE, Suite 5200
Atlanta, GA 30308
FIRST NAMED INVENTOR
Daniel L. Young
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
FYI12 1191
EXAMINER
STANIS, TIMOTHY A
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
j im. schutz@troutmansanders.com
ryan. schneider@troutmansanders.com
patents@troutmansanders.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL L. YOUNG
Appeal2017-009777
Application 13/508,522
Technology Center 3700
Before STEVEN D.A. McCARTHY, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection2 of claims 13-16, 18-26, 29, and 30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance of claim 21 as a new
ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies the real party in interest as Forever Young
International, Inc. Br. 2.
2 Appeal is taken from the Final Office Action dated July 8, 2016, as
supplemented by the Advisory Action dated Nov. 1, 2016.
Appeal2017-009777
Application 13/508,522
STATEMENT OF THE CASE
Claims 13 and 22 are the independent claims on appeal. Claim 13,
reproduced below, is exemplary of the subject matter on appeal.
13. An exothermic natural massage shell, comprising:
a natural bivalve shell comprising a first half and a second
half adhered together with an adhesive to form a hollow
chamber;
an aperture formed in the first half to provide a portal to
the hollow chamber of the bivalve shell;
an exothermic reactant disposed inside the hollow
chamber of the bivalve shell, the reactant being removably
inserted through portal;
wherein the reactant is combined with an activator inside
the hollow chamber of the bivalve shell which causes an
exothermic reaction that heats the bivalve shell and maintains the
bivalve shell at substantially constant elevated temperature for a
duration of time, the hollow chamber and the portal being
reusable for repeated exothermic reactions; and
wherein the adhesive adhering the first half of the bivalve
shell to the second half of the bivalve shell comprises a first
elastomeric polymer bonding agent with coefficient of expansion
properties operable to maintain first and second halves securely
adhered through repeated heating and cooling cycles and a
second flexible resin sealant that makes the adhesive moisture-
proof
THE REJECTIONS
I. Claims 13, 16, 18-22, 24, 25, and 29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Roman (US 2007 /0032751 Al;
published Feb. 8, 2007), Linden (US 1,380,986; issued June 7, 1921), Abe
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(US 4,366,804; issued Jan. 4, 1983), and Kutch et al. (US 4,169,822; issued
Oct. 2, 1979) (hereinafter "Kutch").
II. Claims 14, 26, and 30 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Roman, Linden, Abe, Kutch, and French et al. (US
4,844,072; issued July 4, 1989) (hereinafter "French"). 3
III. Claim 15 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Roman, Linden, Abe, Kutch, and Dunshee et al. (US
4,462,224; issued July 31, 1984) (hereinafter "Dunshee").
IV. Claim 23 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Roman, Linden, Abe, Kutch, and Payen et al. (US
2013/0047974 Al, publication February 28, 2013) (hereinafter "Payen").
ANALYSIS
Rejection I
Regarding independent claim 13, the Examiner finds, inter alia, that
Roman discloses a natural bivalve massage shell having first and second
halves adhered together to form a hollow chamber, with an aperture formed
in the first half to provide a portal to the chamber, as claimed. Final Act. 2
(citing Roman ,r,r 4, 13, Figs. 1, 2).
Although Roman discloses that "[a] heat-retentive material can ... be
inserted into the cavity through the hole," Roman teaches that "[t]he hole
can be closed with glue or another material that can serve as a filler."
Roman ,r 13. The Examiner determines that Roman does not disclose that
3 In the Examiner's Answer, the Examiner modifies the rejection of claim
26, as stated in the Final Office Action, to further include the French
reference as applied to claims 14 and 30. Ans. 17.
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the reactant (here, alternatively, the heat-retentive material) is "removably
inserted through the portal," as claimed, or that "the hollow chamber and the
portal [are] reusable," as claimed. Final Act. 3. The Examiner relies on
Linden for teaching "a heating massage device that includes a removable cap
located within an aperture of the device shell that allows the user to replace
the heating material within the device for multiple uses." Id. (citing Linden,
Fig. 2, plug 5). The Examiner reasons that it would have been obvious "to
modify the aperture of Roman to be replaced by an opening and removable
cap as taught by Linden in order to allow the heated filling material within
the device to be replaced, thereby allowing the device to be reused multiple
times on short notice." Id.
The Examiner relies on Abe for teaching an exothermic reactant (i.e.,
mixture 1) within a hollow chamber (i.e., outer cover 4) for generating heat,
as claimed, rather than a heat-retentive material within a hollow chamber as
disclosed in Roman. Final Act. 3--4 (citing Abe 2:45-51, 63, Fig. 1). The
Examiner reasons that it would have been obvious
to modify the heat retentive material of the modified device of
Roman to be an iron powder reactant with a water activator to
create an exothermic reaction as taught by Abe, as such a
modification would provide longer lasting heat generation that
would avoid the need to re-heat the massage shell as frequently.
Id. at 4.
The Examiner also determines that the modified device of Roman
does not have an adhesive comprising a first elastomeric polymer bonding
agent with a coefficient of expansion properties operable to maintain the
halves securely through repeated heating and cooling cycles, and a second
flexible resin sealant that make the adhesive moisture proof, as claimed.
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Final Act. 4. The Examiner relies on Kutch for teaching "hot melt sealants
that comprise a first elastomeric polymer bonding agent with balanced
coefficient of expansion properties," which "provide stability over a wide
range of temperatures, wherein such ... adhesive[ s] would be expected to be
stable over repeated heating and cooling cycles." Id. at 4--5 (citing Kutch
Abstract, 2: 1-16, 29--40). The Examiner reasons that it would have been
obvious "to design the modified device of Roman to have an adhesive
sealant," as claimed, "to provide an adhesive that has good stability over a
wide range of temperatures." Id. at 5.
Appellant argues that the Examiner's proposed combination "would
result in an inoperable ... device." Br. 18. In support, Appellant submits
that Roman teaches that "exemplary materials in its massage device are
stable at temperatures ofup to 200QF," whereby Appellant presumes "200QF
is the optimal temperature for the device ... in the normal practice of
massage." Id. (citing Roman ,r 20). Appellant also submits that Kutch
teaches that "polymer compositions are ... hard at room temperature and
fluid at 150QF,"which "ismuchlowerthan200QF." Id. (citing Kutch 1:51).
Appellant contends that substituting Kutch's polymer bonding agents for
Roman's adhesive would result in the adhesive becoming "'fluid' when
heated within a significant portion of the stability range indicated by
Roman," such that the Examiner's proposed modification results in a device
"incapable of being used in the manner taught by Roman, nor through the
claimed 'repeated heating and cooling cycles." Id. at 18-19.
The Examiner responds that "Roman discloses making the device
with materials that are stable at the lower temperatures of 100-140QF, all of
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which fall[] below the 150QF stability temperature of the adhesive of Kutch."
Ans. 12 (citing Roman ,r 20).
Indeed, Roman discloses that
[ u] seful temperatures for massage include temperatures from
about lOOQ F. (37.7Q C.) and higher, or about 105Q F. (40.6Q C.)
and higher, or about 1 lOQ F. (43.3Q C.). Useful temperatures can
be to about 120Q F. (48.9Q C.) and lower, or about 115Q F. (46.lQ
C.) and lower. These temperatures can be achieved with a
warmer, such as a water-bathed warmer or a warming oven. The
materials used to form the implement can be selected to be stable
at temperatures of about lOOQ F., or 1 lOQ F., or 120Q F. or 140Q F.
or 160Q F., or 180Q F., or 200Q F.
Roman ,r 20. Thus, Roman discloses an operating temperature range for the
massage implement of between about lOOQ F and about 120Q F, and not 200Q
Fas argued by Appellant. Notably, this range is also below the temperature
at which Kutch's adhesive is soft (i.e., about 150Q F). See, e.g., Kutch,
Abstract ("[s]olvent-free hot melt compositions for use as ... adhesives ...
are produced by intimately blending elastomeric polymers with tackifying
resins and plasticizers to obtain products having a hardness at room
temperature of at least about 5 [Shore A] while being sufficiently soft at
temperatures of about 150 and higher to permit them to be easily extruded");
see also id., col. 1, 11. 62---68. Thus, Appellant's argument does not apprise
us of error in the Examiner's finding with respect to Roman. 4
4 Thus, Appellant's argument "g," which relies on Appellant's assumption
that Roman must be operated at an optimal temperature of 200Q F, is not
persuasive. See Br. 19-20. Additionally, Appellant's argument that Kutch's
adhesive does not result in the claimed subject matter (i.e., an elastomeric
polymer bonding agent with coefficient of expansion properties operable to
maintain the halves securely adhered through repeated heating cycles)
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Appellant also argues that substituting Roman's heat-retentive
material with Abe's exothermic reactant fundamentally changes the method
of operation of Roman's massage implement, and results in a device that
"would not actually generate heat." Br. 20. In support, Appellant submits
that one of ordinary skill in the art would appreciate that Linden's "massage
device opening ... is sealed using a plug and a gasket to create a watertight
seal," which one of ordinary skill in the art would appreciate is "also
"airtight," (id. (citing Linden 11. 39--44, 59---63, Figs. 1-3)); whereas Abe
"teaches a reactant requiring access to air, and absent air flow 'heat cannot
be generated"' ( id. at 21 ( citing Abe 5: 11-13)). Appellant concludes,
therefore, that "using Linden's portal and Abe's reactant would yield an
inoperable device absent further adaptations not taught in any of the cited
art," as "Roman similarly teaches a sealed and filled device and Kutch
teaches an exemplary fill material for the Roman device." Id. at 21.
We are not persuaded by Appellant's argument. Abe's warming
device includes an outer cover 4 (i.e., a water-proof bag) having
thermoregulating holes 5 in one wall thereof and in which both a durable
inner pouch 2 containing reactants and a water carrying member 3 are
housed. See Abe 2:26-29, Fig. 1. Abe discloses that
a given amount of water is added to the water-carrying member
3, the water-carrying member 3 is placed or stacked on the inner
pouch 2, and the water-carrying member and the inner pouch are
housed in the outer cover 4. In this case, the water-carrying
member 3 faces the inner surface of the wall of the outer cover 4
in which holes are not provided. The water contained in the
water-carrying member 3 passes through the material of the inner
because Kutch' s adhesive "becomes fluid in the operable temperatures
taught by Roman," is also unpersuasive. Br. 22.
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pouch 2 and further permeates inside of the inner pouch 2
together with the air which enters through the thermoregulating
holes 5, whereby iron powders are oxidized and heat is
generated.
The outer cover 4 has an opening 7 through which the
inner pouch 2 and the water-carrying member 3 are inserted, and
which can be sealed by closure 8 during use of the device. It is
most desirable to use an outer cover 4, for example, which has
only a small number of holes in only one wall. Cover 4 is of a
water-proof material which does not allow the passage of water
and it can include the water-carrying member 3 therein on the
side of the wall in which the holes are not provided.
Abe 2:40-60; see also Abe 3:25-26 ("water is supplied only at the time of
use of the device").
Claim 13 does not require a cap, and as set forth supra, the Examiner
relies on Linden for teaching an open portal that allows the reusability of
Roman's modified device. See Adv. Act. 2 ("Linden is only being applied
for Linden's teaching of a hollow chamber and a portal that can be reusable
for repeatedly placing heating material within the hollow chamber, whereby
the heating material is removably inserted through the portal"); cf Roman
,r 13 (disclosing that "[t]he hole can be closed with glue or another material
that can serve as a filler."). Thus, Appellant's argument does not apprise us
of error in the Examiner's determination that substituting Roman's heat-
retentive material with Abe's exothermic reactant (i.e., mixture 1 within an
inner pouch 2 and water-carrying member 3), within Roman's hollow
chamber having Linden's open portal, would generate heat as taught in Abe.
Further, Abe suggests that Linden's open portal is desirable for performing
the function of Abe's thermoregulating holes 5. See, e.g., Abe 4:38--44 ("the
present invention is not limited to the case where holes 5 are positively
provided in the outer cover 4. For example, when a zipper, magic fastener
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and the like are employed for closing the opening, the gap formed between
the elements of the zipper, magic fastener, and the like can be utilized as the
holes for thermoregulation."). Notwithstanding, Appellant's argument does
not apprise us of error in the Examiner's determination that because
Roman's hollow chamber is "not evacuated of all air before the cap of
Linden is placed on the device[,] [a]ir will remain in the chamber, and can
be used during the exothermic reaction." Ans. 13.
Appellant also submits that "the Linden portal is formed in a man-
made glass body, not a natural bivalve shell," which is "closed and
watertight when in use during a massage to maintain structural and fluid
integrity of the device." Br. 21. Appellant argues that "[t]he Examiner has
not addressed the clear concerns a [person of ordinary skill in the art] would
have had in creating an opening in a natural bivalve shell that maintains
structural integrity sufficient to withstand the rigors of massage use." Id.
However, Roman teaches that the selection of the placement of the hole may
take into account physical strength of the shell. See, e.g., Roman ,r 13
(discussing that "[t]he base can be selected as a location having good
physical strength to accommodate one or both of the drilling or the removal
of shell material to form a hole," while recognizing that "[t]o construct the
massage implement, one can, in one embodiment, drill a hole in one or both
of a paired set of shells").
Appellant further argues that one of ordinary skill in the art would be
motivated to "use Abe's reactants to heat Roman from the outside as the
simplest solution ( e.g., as a heating wrap for the filled Roman shell), rather
than indulging in a variety of experimental adaptions to Roman's perfectly
effective massage device." Br. 21-22. We disagree. As determined by the
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Examiner, Abe suggests to one skilled in the art that an exothermic reactant
may be used to generate heat within a warming device; Abe does not suggest
using the exothermic reactant to warm another warming device, for example,
as a replacement for Roman's water-bath or warming oven, as discussed
supra. See Abe 5: 14--16 ("The present invention can be utilized in wide
applications as a device such as a body warmer, waist band, foot-warming
device, cushion and so on.")
Finally, Appellant argues that the Examiner has failed to explain the
motivation to combine the references, and Appellant proposes alternative
modifications, for example, using Kutch' s adhesive polymer compositions
for heat-retentive fill material in Roman's shell rather than substituting
Roman's heat-retentive fill material with the exothermic reactants of Abe.
Br. 23. We disagree. The Examiner, in every instance as set forth supra,
has articulated rationale with sufficient factual support for combining the
references, and Appellant's arguments do not apprise us of error in the
Examiner's reasoning. See also Ans. 15.
Accordingly, we sustain the Examiner's rejection of independent
claim 13. Appellant chose not to present separate arguments for the
patentability of claims 16 and 18-20, which depend from claim 13, and
independent claim 22 and claims 24, 25, and 29 depending therefrom. Br.
24--27. Therefore, for essentially the same reasons as discussed supra, we
also sustain the Examiner's rejection of claims 16, 18-20, 22, 24, 25, and 29.
Dependent claim 18
Claim 18, which depends from independent claim 13, recites "wherein
at least a portion of an outer surface of the bivalve shell has an abrasive
texture." Br. 35 (Claims App.). The Examiner relies on Roman for
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disclosing that "the device can have surfaces that feel 'rasp-like.'" Final
Act. 5 ( citing Roman ,r 2).
Appellant argues that "Roman teaches a device that is coated with a
polymer to 'reduce rasping texture on the exterior surfaces"' and that
"Roman discusses sea shells in general - without being modified according
to Roman," such that"[ n ]othing in Roman suggests only making part of its
adaptations, but yet keep the rasp-like feel of its devices." Br. 24--25.
Roman discloses that "unprocessed shells can have very small,
subsidiary surface structures (in addition to larger, desired ridge structures)
that can provide a rasp-like feel for the massage recipient." Roman ,r 2.
Roman also discloses that
[b ]ecause shells generally have a systematic pattern of ridges, the
degree of friction provided by the implement can be adjusted in
a number of ways. For example, the orientation of the ridges to
the massage movement will adjust the friction. Also, the shell
implement can be selected for its ability to provide friction
(higher or lower ridges, wider or narrower ridge spacing,
differing pattern of ridges or the like). Further, the amount of
polymer coating on the exterior of the shell can adjust the degree
of friction provided.
Id. ,r 12. Thus, we are not apprised of error in the Examiner's finding that
Roman teaches one skilled in the art that, if desirable, at least a portion of an
outer surface of the bivalve shell may have an abrasive texture. Although a
prior art reference may indicate that a particular combination is undesirable
for its own purposes (i.e., here, a surface with a rasp-like feel), the reference
can nevertheless teach that combination if it remains suitable for the claimed
invention. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) ("[T]he
teaching of [a reference] is not limited to the specific invention disclosed.").
Accordingly, we sustain the Examiner's rejection of claim 18.
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Dependent claim 21
Claim 21, which depends from independent claim 13, recites "wherein
the outer surface of the bivalve shell includes at least two portions, each with
a different texture." Br. 35 (Claims App.). The Examiner relies on Roman
for disclosing that "both rough and smooth texture[] portions of the shell."
Final Act. 6 ( citing Roman ,r,r 2, 17).
Appellant argues that Roman teaches that sea shells can have "a rasp-
like feel" (Roman ,r 2) and that Roman's invention involves a shell texture
with a soothing feel (id. at ,r 3) produced by a polymer coating (id. at ,r 4) or
by grinding rough spots from the shell or coating (id. at ,r 17).
Although we agree with Appellant's characterization of the teachings
of Roman, we determine that it would have been obvious to one skilled in
the art at the time of the invention to provide an outer surface of Roman's
bivalve shell with two portions, each having a different texture, to provide
alternative massaging actions. In support, we refer to Roman's teaching
supra, which discloses the desirability of adjusting the textures of the
massage device in a number of ways, and also to Linden, which specifically
teaches a "corrugated side or surface 9 of the body 1 ... to reach deeper into
the underlying tissues ... and [a] smooth side or surface 10 ... for
massaging the skin where a smoother action is desired." Linden 11. 64--70;
see also id. 11. 48-53.
Accordingly, we sustain the Examiner's rejection of claim 21.
However, because we rely on Linden in a manner in which the Examiner did
not, we designate our affirmance of this rejection as a new ground of
rejection pursuant to 37 C.F.R. § 4I.50(b), to give Appellant an opportunity
to respond thereto.
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Rejection II
Regarding dependent claims 14, 26, and 30, the Examiner relies on
Linden for disclosing a cap (i.e., removable plug 5) that "sequesters the
reactant and activator inside" the modified bivalve shell of Roman; and on
French for teaching a thermal therapy system having a removable cap 70
with a valve (i.e., vent 74) that "helps to avoid an excessive buildup of
pressure within the system." Final Act. 8-9; see also Ans. 17 ( citing French
5:52-56, Fig. 2). The Examiner reasons that it would have been obvious "to
design the cap of the modified device of Roman to have a vent valve as
taught by French in order to allow heated gas to flow out of the device
during the exothermic reaction to prevent excessive buildup of pressure
within the bivalve shell." Id. at 8.
Appellant argues that, in French, cap 70 has a valve 74 to avoid an
excessive buildup of pressure "unique to the French fluid circulating and
pump-based system 18." Br. 29. Appellant submits that
Abe contemplates being used in open-air, not closed, places so it
provides not teaching whatsoever of pressure buildup if it was
used in a confined space. Quite to the contrary, actually a
[person of ordinary skill in the art] would have been more likely
to read that one way to stop the Abe heating reaction completely
would be to put it in a confined space lacking airflow. Without
an Abe reaction, the pressure buildup alleged by the Examiner
would not occur, thus obviating a need for French cap with a
valve.
Id. ( emphasis added).
The Examiner correctly responds that Appellant's argument does not
address the rejection as articulated by the Examiner, wherein Abe's
exothermic reactant (i.e., mixture 1 ), along with water-carrying member 3, is
substituted in place of Roman's heat-retaining material within the hollow
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cavity of Roman's shell, and, as applied to claims 14, 26, and 30, Linden's
cap is used to close Roman's aperture. Ans. 18. Appellant does not dispute
that it is known for exothermic reactions to produce a pressure build-up in an
enclosed space, and thus, we agree with the Examiner that it would have
been obvious to include a valve in the cap, as taught by French,
notwithstanding that French teaches the use of a valve in a cap to relieve
pressure in a system that does not involve an exothermic reaction. Thus,
Appellant's argument does not apprise us of error in the Examiner's findings
or reasonmg.
Accordingly, we sustain the Examiner's rejection of claims 14, 26,
and 30.
Re} ection III
Regarding claim 15, which depends from independent claim 13, the
Examiner finds that Abe discloses "adding water to a reactant to transfer
heat to the wall of a hollow chamber." Final Act. 9 (citing Abe 2:47-51).
The Examiner determines that the modified device of Roman "does not
disclose that the addition of water creates an exothermic gel that transfers
heat to the wall." Id. The Examiner relies on Dunshee for teaching "a
reusable hot pack that uses gelling agents within the exothermic mixture to
allow the pack to be reused." Id. (citing Dunshee 5:49---67, 6: 1-17). The
Examiner reasons that it would have been obvious "to design the modified
device of Roman to include a gelling agent as taught by Dunshee in order to
allow the heating pack to be reused." Id.
Appellant argues that claim 15 requires the addition of water to the
reactant inside the hollow chamber to create an exothermic gel that transfers
heat to the walls of the shell, and that "Dunshee, by clear contrast, teaches a
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gelling agent that is used after its exothermic reaction is complete and the
first and second reactants are at 'ambient temperature.'" Br. 31-32 (citing
Dunshee 2:39-32, 5:48-55). Appellant concludes that rather than teach an
exothermic gel, as claimed, "Dunshee teaches a gel pack that can be heated
or cooled." Id. at 32.
The Examiner responds that at least in one embodiment, Dunshee
teaches that "gelling occurs automatically and at the same time as the
heating reaction." Ans. 19 (citing Dunshee 5:56-60, Figs. 4--5).
Dunshee discloses that
[i]n each embodiment, the three compartments separate the
reactants .... Generally, upon the mixing of the contents of two
compartments, heat is liberated or absorbed and a heating or
cooling effect immediately produced. Upon the mixing of the
contents of the third compartment with the product of the mixture
of the other two compartments, a gel is formed. The resultant gel
is comparatively soft and moldable when cooled to temperatures
generally attainable in normal household refrigerators.
Dunshee 4:49-59. Thus, although Dunshee discloses, for example, a
compartment 18 containing a water-based solvent and a compartment 20
"filled with an amount of water soluble solute 21 capable of exothermally or
endothermally dissolving in the water," Dunshee fails to disclose that adding
the water to the solute creates an exothermic gel, as claimed. Dunshee 5:4--
7. Rather, as argued by Appellant, the cited passage of Dunshee discloses
that a gel is formed separately, by the addition of a third component, after
the exothermic reaction between the water and solute is over. Dunshee
5:56-60. The Examiner's finding fails to give any weight to the claim term
"exothermic" as an adjective that describes the gel.
Accordingly, we do not sustain the Examiner's rejection of claim 15.
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Rejection IV
Appellants chose not to present separate arguments for the
patentability of claim 23 apart from the arguments presented supra for the
patentability of claim 22 from which claim 23 depends. Accordingly, for
essentially the same reasons stated supra, we sustain the Examiner's
rejection of claim 23.
DECISION
The Examiner's rejection of claims 13-14, 16, 18-26, 29, and 30 is
AFFIRMED, and our affirmance of claim 21 is designated a new ground of
rejection pursuant to 37 C.F.R. § 4I.50(b).
The Examiner's rejection of claim 15 is REVERSED.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.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
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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)(l)(iv).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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