2019006674 (P.T.A.B. Jul. 21, 2020)

SEW-EURODRIVE GMBH & CO. KG

Patent Trials and Appeals BoardJul 21, 2020

2019006674 (P.T.A.B. Jul. 21, 2020)

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. 15/035,396 05/09/2016 Zili WU 116218.0246337 (144) 3107 26646 7590 07/21/2020 Hunton Andrews Kurth LLP/HAK NY 2200 Pennsylvania Avenue NW Washington, DC 20037 EXAMINER ROGERS, ADAM D ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 07/21/2020 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): uuspto@hunton.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ZILI WU Appeal 2019-006674 Application 15/035,396 Technology Center 3600 ____________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 16, 18–21, 23–25, and 30–42, which constitute all the claims pending in this application. See Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “SEW- EURODRIVE GmbH & Co. KG of Bruchsal, Federal Republic of Germany.” Appeal Br. 1. Appeal 2019-006674 Application 15/035,396 2 We AFFIRM IN PART the Examiner’s rejections of these claims and we also issue a new ground of rejection. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a gear unit having a housing.” Spec. 1:2. Apparatus claims 16 and 30 are independent. They are both illustrative of the claims on appeal and are both reproduced below. 16. A gear unit, comprising: a housing including a housing top part and a housing bottom part on which the housing top part is mounted, the housing top part being disposed on a first side of a plane and the housing bottom part being disposed on a second side of the plane, the housing top part having at least a first groove formed on an inner side and extending in a longitudinal direction, the first groove formed (a) in one piece and/or integrally on the housing top part, the housing top part having at least one further groove formed on the inner side and extending in a transverse direction, the further groove formed (a) in one piece and/or integrally on the housing top part, the transverse direction being aligned perpendicular to the longitudinal direction; wherein the transverse direction is aligned parallel to an axis of an output shaft of the gear unit and/or the longitudinal direction and the transverse direction are aligned parallel to the plane. 30. A gear unit, comprising: a housing including a housing top part and a housing bottom part on which the housing top part is mounted, the housing top part being disposed on a first side of a plane and the housing bottom part being disposed on a second side of the plane, the housing top part having an oil pocket closed all around and/or a first groove adapted to collect sprayed-around oil being disposed all around. Appeal 2019-006674 Application 15/035,396 3 EVIDENCE Name Reference Date Alquist US 1,220,810 Mar. 27, 1917 Schmitter (“Schmitter ’671”) US 2,676,671 Apr. 27, 1954 Schmitter (“Schmitter ’661”) US 3,029,661 Apr. 17, 1962 Lafer et al. (“Lafer”) US 8,650,980 B2 Feb. 18, 2014 REJECTIONS2 Claims 16, 18–21, 23, 25, 30, 32–35, 37, and 39 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Alquist. Claims 30–33 and 39 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Schmitter ’661. Claims 30–33 and 39 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Schmitter ’671. Claims 24 and 38 are rejected under 35 U.S.C. § 103 as unpatentable over Alquist. Claims 34–38 are rejected under 35 U.S.C. § 103 as unpatentable over Schmitter ’661 and Alquist. Claims 40–42 are rejected under 35 U.S.C. § 103 as unpatentable over Schmitter ’661 and Lafer. Claims 34–38 are rejected under 35 U.S.C. § 103 as unpatentable over Schmitter ’671 and Alquist 2 The Examiner indicates that Appellant “has overcome the following rejections(s): The 112(b) rejections disclosed in the Final Rejection.” Advisory Action dated March 25, 2019. Appeal 2019-006674 Application 15/035,396 4 ANALYSIS The rejection of claims 16, 18–21, 23, 25, 30, 32–35, 37, and 39 as anticipated by Alquist Appellant presents separate arguments for claim 16 (see Appeal Br. 3–4) and for claim 30 (see Appeal Br. 4–6). Appellant also argues dependent claims 20, 21, 34, and 35 together. See Appeal Br. 6–7. Regarding dependent claims 18, 19, 23, 25, 32, 33, 37, and 39, Appellant does not separately argue these claims but instead relies on “the reasons more fully set forth above.” Appeal Br. 6. We thus select claims 16, 30, and 20 (in that order) for review, with the remaining claims standing or falling with their respectively grouped or parent claim. See 37 C.F.R. § 41.37(c)(1)(iv). CLAIM 16 Independent claim 16 is directed to a gear housing having a top part and a bottom part separated along a plane. Claim 16 further recites that the top part has “at least a first groove formed on an inner side and extending in a longitudinal direction” and also a “further groove formed on the inner side and extending in a transverse direction.” Claim 16 additionally recites, “the transverse direction is aligned parallel to an axis of an output shaft and/or the longitudinal direction and the transverse direction are aligned parallel to the plane” (emphasis added).3 3 We note this last limitation because the Examiner, in relying on Alquist, identifies two grooves parallel to the corresponding plane in accordance with one option. We further note that the corresponding transverse “further groove” in the cited art is perpendicular to the shaft’s axis, and not parallel as per the other option. See Alquist Figs. 1 and 2. Appeal 2019-006674 Application 15/035,396 5 The Examiner correlates the recited longitudinal “first groove” to “a groove on one side of 21” of Alquist. Final Act. 7. The Examiner also correlates the recited transverse “further groove” to “a side of 21 perpendicular to the first groove.” Final Act. 7. The Examiner additionally annotates Figures 1 and 2 of Alquist (see below) to better identify these corresponding grooves in Alquist’s reservoir 21. See Ans. 5–6. Appeal 2019-006674 Application 15/035,396 6 The Examiner self-identifies these figures as annotated and also identifies, with greater clarity, that which the Examiner deems to be the “Groove” and the “Further Groove” (drawing boxes around each) in reservoir 21. As indicated, the Examiner’s two “grooves” depicted above are the entire sidewall and the entire bottom of Alquist’s reservoir 21. Appellant argues that “a side or a side wall does not reasonably constitute a groove.” Appeal Br. 4. There is merit to Appellant’s argument because the Examiner initially stated that the reservoir’s sides “can be viewed as constituting a groove” and that this finding is buttressed “in light of the definition from Dictionary.com that [defines “groove” as] ‘a long, narrow cut or indentation in a surface.’” Advisory Action dated March 25, 2019. However, this definition clearly expresses the “groove” as being “in a surface,” and the Examiner does not identify the “surface” into which Alquist’s “grooves” are “cut” or “indent[ed]” into. Upon Appellant questioning the Examiner’s “Dictionary.com” definition (see Appeal Br. 4), the Examiner proffers a more generic definition stating, “Merriam-webster.com defines ‘groove’ as ‘a long narrow channel or depression’ which reads on the structure” above. Ans. 4. We note that this new “Merriam-webster.com” definition does not elaborate as to the underlying material into which the groove is channeled or depressed, but, nevertheless, we understand from even this latest definition, a groove must be still be channeled or depressed into some material. Appellant addresses both definitions and argues that even the latest definition does not “reasonably establish that Alquist discloses a ‘groove.’” Reply Br. 2. To further this point, Appellant analogizes the Examiner’s interpretation of Alquist’s walls being a “groove” “to the absurd result that the floor, wall, Appeal 2019-006674 Application 15/035,396 7 and ceiling of an office or bedroom, for example, would also constitute a ‘groove.’” Reply Br. 3. We concur with Appellant’s position in this matter. As Appellant expresses, “under any of the varied and inconsistent interpretations applied in the Final Office Action, Advisory Action, and Examiner's Answer,” a skilled person would not conclude that “the identified structures of Alquist constitute a ‘groove.’” Reply Br. 3. As such, we agree with Appellant that the Examiner “present[ed] ‘groove’ as a moving target” and that “substantial evidence does not support the rejection.” Reply Br. 3. Accordingly, and based on the record presented, we do not sustain the Examiner’s rejection of claim 16, or of claims 18, 19, 23, and 25 which depend directly therefrom. We reverse the Examiner’s rejection of claims 16, 18, 19, 23 and 25 as being anticipated by Alquist. CLAIM 30 Independent claim 30 also recites a housing top part having “a first groove,”, but is silent as to any “further groove” (as recited in claim 16 above).4 Similar to the above discussion, the Examiner finds that Alquist discloses “a first groove (a groove on one side of 21).” Final Act. 9. Appellant again challenges this finding (see Appeal Br. 4, 5) and we concur with Appellant for the reasons expressed above. However, rather than conclude our analysis here, we wish to point out other discrepancies regarding claim 30 so that, should prosecution continue, such discrepancies can be addressed. 4 Claim 31, which depends directly from claim 30, recites “a further groove,” so we understand via claim differentiation that “first groove” and “further groove” are two different grooves. Appeal 2019-006674 Application 15/035,396 8 To begin, claim 30 includes “and/or” language, to wit: “the housing top part having an oil pocket closed all around and/or a first groove adapted to collect sprayed-around oil being disposed all around” (emphasis added).5 Addressing the second option, the parties disagree as to that which is “disposed all around.” The Examiner states this second option means “the sprayed-around oil is disposed all around the housing top part.” Ans. 6–7. Appellant disagrees arguing that “[g]rammatically, the foregoing phrase plainly articulates that a ‘first grove’ is ‘disposed all around.’” Reply Br. 3. As support for Appellant’s position, certain passages in Appellant’s Specification are referenced. See Reply Br. 4 (referencing Spec. 2:18–27, 2:29–32). The first of these referenced locations (i.e., Spec. 2:18–27) discusses the housing top part stating “in each case a groove for collecting sprayed-around oil thus being disposed all the way around.” The second of these (i.e., 2:29–32) discusses an advantage being “the groove going all around on the inner wall of the concave, e.g., shell-like housing top part” and that this “makes it possible to collect oil conducted along the top wall or along the oil-guiding rib structure.” Appellant’s Specification also discusses “oil droplets sprayed up toward the top wall” that “drip off . . . into a groove formed on the inner side of the housing top part.” 6 Spec. 6:2–4. 5 We understand the claim phrase “all around” means encircling or encompassing. This is supported by Appellant’s Specification that, when discussing oil sprayed within the housing and its subsequent collection, states “[t]he collection of oil is thus ensured all around.” Spec. 2:5–15. 6 Appellant also makes the point that “[c]onsidering ‘disposed all around’ to modify ‘sprayed-around oil’” as the Examiner reasons, “is grammatically nonsensical.” Reply Br. 4. This position is compelling because “sprayed- around oil” is already “disposed all around” (see Spec. 6:2–4) and thus such construction by the Examiner appears to be superfluous and redundant. Appeal 2019-006674 Application 15/035,396 9 From the above, we are of the opinion that Appellant has the more reasonable claim interpretation, i.e., that it is the “first groove” that is “disposed all around.” See Reply Br. 3–4. However, this interpretation leads to a quandary. As noted above and as per the limitations of claim 30, it is the “first groove” that is “disposed all around.” As also noted above, claim differentiation mandates a distinction between parent claim 30’s “first groove” and dependent claim 31’s “further groove.” One skilled in the art, aware of this distinction, would investigate Appellant’s Specification for a better understanding regarding the parent’s recitation that the “first groove” itself is “disposed all around” as construed above. In this regard, Appellant’s Specification only addresses the “first groove” as extending longitudinally (i.e., in a parallel direction). See Spec. 1:23–25, 2:7–9. Thus, although we agree with Appellant’s claim construction above, we cannot help but notice that there are apparent underlying 35 U.S.C. § 112 (written description, enablement, and, to some degree, indefiniteness) issues with claim 30 as it is presently interpreted, and which Appellant champions. See Reply Br. 3–4. In such cases, our reviewing court has provided instruction that before an art rejection can be analyzed, “it is essential to know what the claims do in fact cover.” See In re Steele, 305 F.2d 859, 862 (CCPA 1962). Because we are unable to square claim 30 consistent with Appellant’s Specification, it is speculation on our part to further address the Examiner’s anticipation rejection of this claim, and contrast claim 30 with the teachings of Alquist. Thus, claim 30, as a whole, is presented in such a manner that the scope, meaning, and manner of implementing this claim (and hence its dependent Appeal 2019-006674 Application 15/035,396 10 claims as well), is not fully conveyed because it is not in harmony with Appellant’s Specification.7 Accordingly, although we fault the Examiner’s finding that Alquist teaches a “groove,” we nevertheless affirm the Examiner’s rejection of claim 30 (and dependent claims 32, 33, 37, and 39) for the Section 112 reasons expressed above. Because this rejection differs from that proffered by the Examiner, we designate this rejection under 35 U.S.C. § 112 as a New Ground of rejection. CLAIM 20 Claim 20 depends from claim 16, and thus is subject to the same analysis above regarding claim 16’s “groove,” and whether Alquist discloses same. However, Appellant further challenges whether Alquist teaches the additional claim 20 limitation regarding an “oil-guiding rib structure” and whether this structure, extending from the top wall, has a “vanishing slope” that varies along its extension. See Appeal Br. 6; Reply Br. 4. The Examiner equated the recited “oil-guiding rib structure” with Alquist’s webs 13 depicted in the above two figures, but better seen in Figure 2. 7 For example, the requirement of enablement enforces the essential “quid pro quo of the patent bargain” by requiring a patentee to teach the public how “to practice the full scope of the claimed invention.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003). “The essence of the written description requirement is that a patent applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention.” AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014). “The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent.” MPEP § 2173. Appeal 2019-006674 Application 15/035,396 11 Appellant acknowledges “the Final Office Action merely cites to Figure 2 of Alquist” but contends, “there is no indication that Figure 2 is drawn to scale.” Appeal Br. 6. We agree with Appellant that there is no indication that Figure 2 of Alquist is drawn to scale, but that does not detract from that which is clearly shown.8 Appellant does not dispute that Alquist’s webs 13 are plainly illustrated as extending downwardly from the top wall in a tapering manner. As such, Appellant does not explain how Alquist’s tapered webs 13 fail to disclose the “vanishing slope” recited in claim 20. However, as mentioned above, claim 20 depends directly from claim 16, and thus, while Appellant’s “vanishing slope” argument regarding claim 20 is not persuasive of Examiner error, Appellant’s “groove” arguments regarding parent claim 16 are persuasive of Examiner error. We thus reverse the Examiner’s rejection of claim 20 and further dependent claim 21 on this basis. Regarding dependent claims 34 and 35, these claims both depend, either directly or indirectly, from claim 30 discussed above. Claims 34 and 35 also recite the “vanishing slope” limitation, which Appellant contends (as above) that Alquist does not teach. See Appeal Br. 6; Reply Br. 4. We do not find Appellant’s “vanishing slope” arguments persuasive of Examiner error for the same reasons already expressed. However, as also noted above, we entered a new ground of rejection with respect to parent claim 30, and thus, such a rejection of parent claim 30 also extends to its dependent claims 34 and 35. 8 See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (“[W]e did not mean that things patent drawings show clearly are to be disregarded.”). Appeal 2019-006674 Application 15/035,396 12 The rejection of claims 30–33 and 39 as anticipated (a) by Schmitter ’661 and (b) by Schmitter ’671 Both of these anticipation rejections address independent claim 30 and its dependent claims 31–33 and 39. Parent claim 30 has been discussed above and found wanting, and as such, we find no need to replicate that Section 112 analysis here when discussing these additional rejections. However, in addressing these two rejections in view of these references, Appellant additionally focuses on the corresponding troughs relied upon by the Examiner as teaching claim 30’s “disposed all around” limitation. See Appeal Br. 7–9; Reply Br. 5, 6. We elect to address these arguments so that this issue can be resolved. In arguing these rejections, Appellant explains that trough 80 of Schmitter ’661 “appears” to not extend “all around” as claimed. See Appeal Br. 7. But, appearances can be deceiving because, and specifically with respect to Schmitter ’661, there is written disclosure of the “L-shaped oil receiving trough 80 [that is] mounted on each of the respective wall members of the [upper] section 31.” Schmitter ’661 4:66–68 (emphasis added); see also Ans. 9. To be clear, upper section 31 is shown in at least Figures 1, 3, and 4 of Schmitter ’661 as a cover having opposite sidewalls along “each” of which we are informed an oil receiving trough is mounted. Thus, while the other reference, i.e., Schmitter ’671, may be silent as to the mounting locations of its troughs, the same cannot be said with respect to the written description of Schmitter ’661. Hence, with regard to at least Schmitter ’661, Appellant’s reliance on drawing appearance alone is not persuasive that the Examiner incorrectly relied on this reference for teaching this “disposed all around” limitation. See Final Act. 11; Ans. 8–10. Appeal 2019-006674 Application 15/035,396 13 Additionally, Appellant’s contention that neither reference discloses structure “adapted to” collect oil as recited (see Appeal Br. 8, 9; Reply Br. 5, 7) is also not persuasive. This is because the structures identified by the Examiner (item 80 with respect to Schmitter ’661, and items 67 and 68 with respect to Schmitter ’671 (see Final Act. 11, 12)) are described as serving this exact purpose. See Schmitter ’661 4:66 (“oil receiving trough”); Schmitter ’671 4:3–5 (discussing troughs “for receiving such lubricant”); see also Ans. 11, 12. Accordingly, although the Examiner’s rejection is affirmed for other reasons relating to Section 112, Appellant’s above arguments seeking to show Examiner error are unavailing. The rejection of claims 24 and 38 as unpatentable over Alquist Claim 24 depends directly from claim 20, while claim 38 depends, indirectly, from claim 30. In each instance, Appellant relies on arguments “more fully set forth above” as evidence of Examiner error. Appeal Br. 9. In other words, Appellant does not additionally argue the rejection of these claims but, instead, relies on arguments previously presented. As noted above, we have reversed the Examiner’s rejection of claim 20 (and parent claim 16) in view of Alquist’s “grooves,” but affirmed the rejection of claim 30 under Section 112. Thus, with respect to this rejection of claims 24 and 38, we reverse the Examiner’s rejection of claim 24 but affirm the rejection of claim 38. The rejection of claims 34–38 as unpatentable over Schmitter ’661 and Alquist As expressed by Appellant, “[c]laims 34 to 38 ultimately depend from claim 30 and therefore include all of the features included in claim 30.” Appeal 2019-006674 Application 15/035,396 14 Appeal Br. 10. Claim 30 has been discussed above and such discussion involving Section 112 discrepancies with Appellant’s Specification will not be duplicated here. Appellant supplements the arguments made above with respect to claim 30 by additionally addressing the Examiner’s reliance on Alquist’s webs 13 and contending that these webs do not disclose the additionally recited “vanishing slope.” Appellant again relies on (see above) the assertion that “there is no indication that Figure 2 [of Alquist] is drawn to scale.” Appeal Br. 10. Appellant supplements this argument in the present rejection, which also relies on the teachings of Schmitter ’661, stating “Schmitter ’661 does not indicate that its Figures are drawn to scale” either. Appeal Br. 11. Such additional and/or supplemental arguments are not persuasive of Examiner error for the reasons addressed above, and particularly because “things patent drawings show clearly” are not to be disregarded. See Mraz, 455 F.2d at 1072. We thus affirm the rejection of claims 34–38 for the same Section 112 reasons we affirmed the rejection of parent claim 30 above. The rejection of claims 40–42 as unpatentable over Schmitter ’661 and Lafer Appellant states, “[c]laims 40 to 42 ultimately depend from claim 30 and therefore include all of the features included in claim 30.” Appeal Br. 11. Claim 30 has been discussed above and such discussion will not be duplicated here. Appellant also contends that “Lafer does not cure the critical deficiencies noted above” when Lafer was not employed by the Examiner in such capacity. Appeal Br. 11; see also Final Act. 18. Such argument regarding Lafer is not persuasive of Examiner error. Appeal 2019-006674 Application 15/035,396 15 Specific to claim 40, Appellant contends that the additional recitation therein to certain components “being stamped bent parts,” was not properly addressed by the Examiner. See Appeal Br. 11; Reply Br. 8. To be clear, the Examiner found that “the method of forming the device is not germane to the patentability of the device itself” (Final Act. 18 (referencing MPEP § 2113)) and that “the method of forming the bent pieces is not given patentable weight.” Ans. 13. Appellant disagrees contending that this “stamped bent” limitation is similar to other terms (i.e., welded, intermixed, ground in place, press fitted, and etched) which “are capable of construction as structural limitations.” Appeal Br. 12. However, Appellant does not make clear just what “structural” limitations are provided by this “stamped bent” process. Further, we have been instructed that “[t]he patentability of a product does not depend on its method of production.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citing In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969)). Thus, lacking any indication that specific structural features are imparted to the parts by being “stamped bent,” in contrast to other methods of construction, we are not persuaded the Examiner erred on this point.9 9 “Where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). Further, upon a prima facie showing of obviousness regarding this “stamped bent” limitation (see Final Act. 17, 18; Ans. 13) the burden of coming forward with evidence to show otherwise falls on Appellant because, as stated by our reviewing court, the fairness of this shift “is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appeal 2019-006674 Application 15/035,396 16 Specific to claim 42, whose limitations address “a marking” on a side wall where “a bore hole” is to be placed, Appellant contends that the Examiner’s reliance on “Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987), is misplaced.” Appeal Br. 12; see also Reply Br. 9. This is because, “the Masham decision relates to the issue of a statement in the preamble of a claim” whereas the Examiner applies Masham “to a feature recited in the body of claim 42.” Appeal Br. 12; see also Reply Br. 9. The Examiner responds that “Masham is focused on both a preamble limitation and a body limitation.” Ans. 14. The Examiner’s statement is the correct one because even MPEP § 2114 II reproduces excerpts from this case stating that the step of “mixing” is found in both the preamble and the body of the claim. Thus, Appellant’s basis above that the Examiner’s reliance on Masham “is misplaced,” is not persuasive. In Appellant’s Reply Brief, Appellant again addresses Masham, but this time from the perspective of intended use, i.e., the Examiner’s reliance on Masham, “constitutes a statement of intended use” and that “[t]he only statement of intended use discussed in the Masham decision appeared in the preamble.” Reply Br. 9. Even if true, Appellant does not explain how the Examiner erred in relying on Lafer for disclosing “that one of the side walls has a marking (132; Lafer et al).” Final Act. 19; see also Ans. 14. Indeed, Lafer’s items 132 are described as “openings” located “in the side walls.” Lafer 6:1. However, Appellant appears to have misinterpreted the Examiner’s point because Appellant contends that “Lafer’s reference numeral 132 . . . is a reference numeral of the Lafer patent document rather than a marking actually applied to any component.” Reply Br. 9. “There is Appeal 2019-006674 Application 15/035,396 17 no indication that any component of Lafer is actually marked with the patent’s reference numerals.” Reply Br. 9. The Examiner was not saying that Lafer’s commercial product “is actually marked with the patent’s reference numerals,” but that Lafer’s sidewalls have markings thereon, and employed reference numeral 132 to show where and what. Appellant’s argument that Lafer’s reference numeral “132” is not marked on Lafer’s actual product is not persuasive of Examiner error on this point. Thus, as discussed above, although we affirm the rejection of claim 30 on other grounds, Appellant’s arguments above with respect to claims 40–42 are not persuasive of Examiner error. The rejection of claims 34–38 as unpatentable over Schmitter ’671 and Alquist Appellant’s arguments in response to this rejection are duplicative of those previously presented by Appellant, but involving the combination of Schmitter ’667 and Alquist. Compare Appeal Br. 10–11 with Appeal Br. 12–13. Our analysis is also the same. We thus affirm the rejection of claims 34–38 for the same reasons we affirmed the rejection of parent claim 30 above. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 16, 18– 21, 23, 25 102(a)(1) Alquist 16, 18– 21, 23, 25 30–42 112 Written 30–42 30–42 Appeal 2019-006674 Application 15/035,396 18 Description, Enablement, Indefiniteness 24 103 Alquist 24 Overall Outcome 30–42 16, 18– 21, 23– 25 30–42 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: (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. Appeal 2019-006674 Application 15/035,396 19 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). AFFIRMED IN PART; 37 C.F.R. § 41.50 (b)