Daniele Pianezze

Patent Trials and Appeals Board

Feb 3, 2020

13510688 - (D) (P.T.A.B. Feb. 3, 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.
13/510,688 06/01/2012 Daniele Pianezze 226-006 (23033) 9154
157817 7590 02/03/2020
Pilloff & Passino LLP
2000 Duke Street
Suite 300
Alexandria, VA 22314
EXAMINER
JONES, LOGAN P
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
mail@pilloffpassino.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIELE PIANEZZE

Appeal 2018-000567
Application 13/510,688
Technology Center 3700
____________

Before EDWARD A. BROWN, JAMES P. CALVE, and
JILL D. HILL, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13 and 17–27, which are the pending
claims. Appellant’s representative presented oral argument on January 7,
2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART and enter a NEW GROUND OF
REJECTION.

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 Illinois Tool
Works Inc. Appeal Br. (filed Dec. 27, 2016) 2.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates to a control switch harness for the
lighting of burners of a cooking range, couplable in use to the gas taps
feeding the burners and provided with an optical light indication when the
gas tap is open.” Spec. 1, ll. 6–10.
Claims 1, 11, and 27 are independent claims. Claim 1 illustrates the
subject matter on appeal.
1. A lighting control switch harness for burners of a
cooking range comprising a plurality of elements connected to
one another and each comprising: a body couplable in use to a
respective gas tap and closed by a cover at least partially
pervious to light; a printed circuit underneath the cover and
carrying one or more light sources, a first switch accommodated
within the body and comprising at least one fixed contact
connected to the printed circuit, a mobile contact and first
means carried by the body so as to be operatively couplable in
use to a mobile stem of the gas tap for integrally rotating
therewith and then taking the mobile contact towards the at
least one fixed contact; and a second switch accommodated
within the body and comprising a fixed contact, a mobile
contact and second means carried by the body so as to be in use
operatively couplable to the mobile stem of the gas tap for
translating parallelly thereto and then taking the mobile contact
towards the fixed contact; said elements being mechanically
and electrically connected to one another only by means of
three wires passing through the body of the various elements, a
first wire being connected to a first contact of the second switch
of each element, a second wire being connected to the mobile
contact of the first switch of each element, and a third wire
being connected to a second contact of the second switch of
each element.

Appeal Br. 93 (Claims App.).

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REJECTIONS
Claims 1–5, 8, 9, 11–13, 18, 19, and 21–27 are rejected under 35
U.S.C. § 103(a) as unpatentable over Böttcher2 and Claprood3.
Claims 6, 10, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Böttcher, Claprood, and Rada4.
Claims 7 and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Böttcher, Claprood, and Painter5.

ANALYSIS
Claims 1–5, 8, 9, 11–13, 18, 19, and 21–27 over Böttcher and Claprood
Claims 1–5, 8, 9, 21, 23, and 25
As to claim 1, the Examiner finds that Böttcher discloses a lighting
control switch harness for burners of a cooking range, the harness
comprising a plurality of elements (switches 19) connected to each other,
and each element comprising all claimed limitations except for “the cover
being at least partially pervious to light,” “a printed circuit underneath the
cover and carrying one or more light sources,” and “the fixed contact
connected to the printed circuit.” Final Act. 6–7. The Examiner relies on
Claprood as teaching these missing limitations and reasons that it would
have been obvious to one of ordinary skill in the art to modify Böttcher in
view of Claprood to include them. Id. at 8.

2 Böttcher et al., DE 198 23 120 A1, published Nov. 25, 1999 (“Böttcher”).
Both the Examiner and Appellant refer to Böttcher as “Boettcher.”
3 Claprood, US 7,926,964 B2, issued Apr. 19, 2011.
4 Rada et al., US 5,180,050, issued Jan. 19, 1993 (“Rada”).
5 Painter, US 665,459, issued Jan. 8, 1901.
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Appellant and the Examiner disagree about the proper construction of
the following language recited in claim 1:
said elements being mechanically and electrically connected to
one another only by means of three wires passing through the
body of the various elements6, a first wire being connected to a
first contact of the second switch of each element, a second
wire being connected to the mobile contact of the first switch of
each element, and a third wire being connected to a second
contact of the second switch of each element.
Appeal Br. 93 (Claims App.) (emphasis added). The Examiner interprets the
connection limitation to mean that “the elements must be electrically
connected by only three wires and that the elements must be mechanically
connected by only three wires.” Ans. 27. The Examiner states, however,
“this limitation does not require that the wires mechanically connecting the
elements be the same wires that electrically connect the elements” (id. at 2
(emphasis added)), and “‘a wire being connected to . . . each element’ does
not require that each element be connected by the same wire” (id. at 15).
The Examiner finds that Böttcher’s elements 19 are electrically
connected by only three wires (i.e., stranded wires 12, 13, and 14) and are
also mechanically connected by only three wires (i.e., stranded wires 13, 14,
and anti-twist protection element 15). Final Act. 7. The Examiner further
finds that wires 13, 12, and 14 correspond to the recited “first wire,” “second
wire,” and “third wire,” respectively. Id. The Examiner appears to concede
that wire 12 does not mechanically connect the elements together, stating
that wire 12 in Böttcher “was relied upon as an electrical connection.” Ans.

6 We also refer to this italicized language herein as the “connection
limitation.”
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7. Instead, the Examiner relies on anti-protection element 15 as providing
the third mechanical connection. Final Act. 7.
Appellant contests the Examiner’s findings because the rejection
relies on wires 12, 13, and 14, and also on “wires” 13, 14, and 15, that is, a
total of four wires, and not only three wires as claimed. Appeal Br. 19.
Appellant also contends that Böttcher’s element 15 is not a wire, but an anti-
rotation device. Id. Appellant disagrees that Böttcher’s wire 12 is “a second
wire being connected to the mobile contact of the first switch of each
element,” as claimed. Id. at 20 (boldface omitted). Instead, Appellant
contends, a wire 12 “exists for each separate element, and does not extend to
each element.” Id. That is, Appellant’s position is that Böttcher discloses
multiple wires 12, each of which is for only one element, and none of the
wires 12 extends to each element (i.e., every element).
Because the Examiner and Appellant disagree about the proper
meaning of the connection limitation, namely, “said elements being
mechanically and electrically connected to one another only by means of
three wires passing through the body of the various elements,” we address
this construction. During examination of a patent application, claims are to
be given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). “The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is . . . an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is ‘consistent with the
specification.’” In re Smith International, Inc., 871 F.3d 1375, 1382–83
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(Fed. Cir. 2017) (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(citation and internal quotation marks omitted)).
In addition to the connection limitation, claim 1 recites “a first wire
being connected to a first contact of the second switch of each element, a
second wire being connected to the mobile contact of the first switch of each
element, and a third wire being connected to a second contact of the second
switch of each element.” Appeal Br. 93 (Claims App.) (emphasis added).
Claim 1 thus requires each one of a first wire, a second wire, and a third wire
to be connected to each element of the plurality of elements.
As for the meaning of the connection limitation, Appellant’s
Specification provides guidance. The Specification describes, “by using
only three connection wires, two microswitches acting on two different
circuits can be incorporated in a single switch harness element.” Spec. 3, ll.
22–25 (emphasis added). This indicates an advantage. The Specification
further describes, “[t]he switch harness 1 comprises a plurality of elements 3
connected to one another mechanically in series and electrically in parallel,
according to a feature of the invention, by only three electric conductor
wires, indicated by numerals 4, 5, and 6, respectively.” Id. at 4, ll. 23–28
(emphasis added). Figure 3 depicts a lighting control switch harness 1
including three elements 3 connected to each other by wires 4, 5, and 6.
Figures 1 and 4, for example, depict wires 4, 5, and 6 passing through the
body 10 of an element 3. The Specification also describes:
According to the invention, the elements 3 are
mechanically and electrically connected to one another only by
means of the three wires 4, 5 and 6, passing through the body
10 of the various elements 3. In particular, the wire 4 is
connected to a first contact 28 of the switch 21 of each element
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3, in the non-limitative case in point to the mobile contact 28,
while wire 5 is connected to the mobile contact 23 of the switch
20 of each element 3, and wire 6 is connected to the fixed
contact 27 of the switch 21 of each element 3. Furthermore, the
wire 4 is also electrically connected in permanent manner to the
printed circuit 14 of each element 3 by means of a metallic
contact terminal 30 (figure 6) carried by the body 10.
Id. at 6, ll. 5–18 (emphasis added). Figure 2 shows an element 3 that
includes contacts between wire 4 and mobile contact 28 of second switch 21,
wire 5 and mobile contact 23 of first switch 20, and wire 6 and fixed contact
27 of second switch 21.
Construing the language of claim 1 consistent with the supporting
disclosure, we agree with Appellant that the claim language requires the
plurality of elements to be both electrically and mechanically connected by
only three wires. In other words, the same three wires provide both the
recited electrical and mechanical connections of each of the elements. We
further construe claim 1 consistent with the disclosure to require that the
three wires that provide both electrical and mechanical connections to each
of the elements are the recited first wire, second wire, and third wire. The
Examiner’s construction of the disputed language is inconsistent with the
plain language of claim 1 interpreted in light of Appellant’s disclosure.
Böttcher describes “single stranded wires 12, 13, and 14” as shown in
Figure 5. Böttcher 77, Fig. 5. Böttcher also describes anti-twist protection
element 15 shown in Figure 5, as being “configured as a linear mounting
element and consist[ing] of wires.” Id. at 14, Fig. 5. We agree with

7 Herein, all citations to Böttcher refer to the English-language translation by
Schreiber Translations, Inc. (dated March 2016), of record in the present
application.
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Appellant that the Examiner has not established by a preponderance of the
evidence that Böttcher discloses the connection limitation and the first,
second, and third wires, as recited in claim 1. Even if each one of wires 13
and 14 provides both electrical and mechanical connections between each of
the switches 19 shown in Figure 5 of Böttcher, and wires 13 and 14 can also
be considered to correspond to the recited first wire and third wire,
respectively, we agree with Appellant that the Examiner still has not
established that Böttcher discloses (i) only three wires that provide both
electrical and mechanical connections between each of the multiple switches
19 and (ii) the second wire, as claimed. Böttcher describes that “[t]he single
stranded wires 12 for the signaling contact are integrated in the circuit for
the signal display, which is not depicted in detail.” Id. at 15 (boldface
omitted, emphasis added). Figure 5 of Böttcher shows a separate wire 12
connected to each individual switch 19, that is, multiple wires 12. As such,
Figure 5 does not disclose a single wire 12 that is both electrically and
mechanically connected to each switch 19 (i.e. to every switch 19), or that is
“connected to the mobile contact of the first switch of each element,” as
required by claim 1. To the contrary, no single disclosed wire 12 is either
electrically or mechanically connected to each switch 19, and further, a
plurality of wires 12 considered in combination provide only an electrical
connection to the multiple switches 19 in Figure 5 as the Examiner finds.
See Final Act. 7.
In the Examiner’s Answer, the Examiner states the following about
claim 23:
[A]ppellant’s claim 23 states “wherein the first wire, the second
wire and the third wire make up the three wires passing through
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the body of the various element that mechanically and
electrically connect the elements.” This limitation further
demands that wire 12 of [Böttcher] be a mechanical connection
to the elements. When viewing [Böttcher] alone, this is clearly
not the case. However, claim 23 is rejected over [Böttcher], in
view of Claprood. The modification of Claprood places the
lights in the catenary elements of [Böttcher]. Wire 12 of
[Böttcher] will therefore not extend to an alternate location on
the stove as seen in figure 5, but to each subsequent element
like wires 13 and 14. Therefore, by the modification of
Claprood, wire 12 of [Böttcher] will also mechanically connect
the catenary elements. Furthermore, since wire 15 of [Böttcher]
is a purely mechanical connection for the elements, its inclusion
in the catenary of [Böttcher] is obviated by the presence of
element 12 which now mechanically connects each element.
Ans. 28–29 (emphasis added).
Claim 23 depends from claim 1 and recites the limitation “wherein the
first wire, the second wire and the third wire make up the three wires passing
through the body of the various elements that mechanically and electrically
connect the elements.” Appeal Br. 97 (Claims App.) (emphasis added). As
discussed above, however, we construe the limitation “three wires passing
through the body of the various elements” in claim 1 as corresponding to the
first wire, second wire, and third wire. In claim 23, we construe the term
“make up” as meaning “are” or “correspond to.” Consequently, we construe
claim 23 as not further limiting claim 1.
The Examiner’s erroneous claim construction for claim 1 led to the
erroneous findings that Böttcher discloses the connection limitation and the
recited first, second, and third wires. Having made these findings, the
Examiner does not propose any modification of Böttcher in view of
Claprood to meet these limitations of claim 1 as required by their proper
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construction. Consequently, the Examiner’s proposed combination does not
support the rejection of claim 1 because it fails to account for and cure the
missing limitations of Böttcher. Because the Examiner’s conclusion that it
would have been obvious to modify Böttcher in view of Claprood to result in
the claimed lighting control switch harness of claim 1 is not supported by an
adequate factual basis, the legal conclusion is in error. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal conclusion of
obviousness must be supported by facts. Where the legal conclusion is not
supported by facts it cannot stand.”)
It is unclear whether the Examiner may be implying that the teachings
of Claprood may be applicable to cure any deficiencies of Böttcher as to the
limitations of claim 1. However, the Examiner has not provided such
additional findings or articulated reasoning with a rational underpinning.
See Final Act. 6–8. For example, the Examiner’s comments regarding claim
23 fail to explain adequately how Böttcher would be modified by replacing
the multiple individual wires 12 with only a single wire 12 that passes
through the body of each switch 19 and electrically and mechanically
connects the switches, and where the single wire 12 is also “connected to the
mobile contact of the first switch of each element,” as required for the
second wire in claim 1. Nor has the Examiner provided an adequate reason
with a rational underpinning why one of ordinary skill in the art would have
made such modification. Accordingly, the Examiner has not established a
prima facie case of obviousness for claim 1.
Moreover, claim 1 recites “first means carried by the body so as to be
operatively couplable in use to a mobile stem of the gas tap for integrally
rotating therewith and then taking the mobile contact towards the at least one
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fixed contact.” Appeal Br. 93 (Claims App.) (emphasis added). Appellant
indicates that the “first means” corresponds to reference number 24 shown in
Figure 5. Id. at 4. The Specification describes means 24, as follows:
The means 24 consist of a ring idly guided into the first
hole 33 and equipped radially on the inside thereof with
(known) angular fastening means 35 to the mobile stem 25 and
on the radially outside thereof with an overhanging radial
appendix 36 which extends into the body 10 and cooperates
with the mobile contact 23.
Spec. 7, ll. 4–9 (emphasis added).
The Examiner construes the claimed first means as corresponding to
“element 36 of figure 5 which is disclosed in the specification as ‘radial
appendix.’ This limitation will therefore be interpreted as a radial appendix
or a structural equivalent thereof.” Final Act. 5. The Examiner finds that, in
Böttcher, “[t]he first means carried by the body is the radial appendix 7c.”
Id. at 26.
Claim 1 further recites “second means carried by the body so as to be
in use operatively couplable to the mobile stem of the gas tap for translating
parallelly thereto and then taking the mobile contact towards the fixed
contact.” Appeal Br. 93 (Claims App.) (emphasis added). Appellant
indicates that the recited “second means” corresponds to reference number
29 shown in Figure 4. Id. at 4. The Specification describes “means 29,” as
follows:
The means 29 consist of a cup-shaped bush mounted
coaxially with the ring 24, with the interposition of a helical
spring 37 (visible in figure 5 where the bush 29 is removed),
which bush 29 is thoroughly and slidingly guided into the
second hole 34 and designed to be thoroughly crossed, in use,
by the mobile stem 25.
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Spec. 7, ll. 14–19 (emphasis added). Bush 29 is provided with a radial arm
38. Id. at 7, ll. 20–22, Figs. 4, 6.
The Examiner construes the second means as corresponding to
“element 38 of figure 4 which is disclosed in the specification as ‘radial
arm.’ This limitation will therefore be interpreted as a radial arm or a
structural equivalent thereof.” Final Act. 5. The Examiner finds that, in
Böttcher, “[t]he bottom face or lip of element 7 is the second means.” Id. at
26.
The use of the claim term “means” in “first means” and “second
means” creates a presumption that § 112, ¶ 6 applies. Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (citation omitted). This
presumption is overcome when the limitation also includes the structure
necessary to perform the recited function. TriMed, Inc. v. Stryker Corp., 514
F.3d 1256, 1259–60 (Fed. Cir. 2008). If a claim term is determined to
invoke § 112, sixth paragraph, then the term is construed “by identifying the
‘corresponding structure, material, or acts described in the specification’ to
which the claim term will be limited.” Robert Bosch, LLC v. Snap-On Inc.,
769 F.3d 1094, 1097 (Fed. Cir. 2014) (citation omitted). Claim 1 does not
recite any structure for performing the recited function of either the first
means or second means.
Although the Examiner referred to Appellant’s Specification to
identify the corresponding structure of the first means and second means,
according to § 112, sixth paragraph analysis, we agree that the Examiner has
not construed these terms consistent with Appellant’s disclosure. As for the
claimed first means, the Specification describes the corresponding structure
as ring 24 having an angular fastening means 35 and an overhanging radial
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appendix 36. Spec. 7, ll. 4–9. The Specification does not appear to describe
the first means as being only the radial appendix, as the Examiner appears to
find. Further, we agree with Appellant that switch curve 7c disclosed in
Böttcher does not have a structure that is the same as or equivalent to the
structure disclosed in Appellant’s Specification as corresponding to the
claimed first means.
As for the claimed second means, the Specification describes the
corresponding structure as a cup-shaped bush 29 provided with a radial arm
38. Id. at 7, ll. 14–22. The Specification does not describe the second
means as being only the radial arm 38, as the Examiner appears to find.
Further, we agree with Appellant that the bottom face of actuating element 7
in Böttcher does not have a structure that is the same as or equivalent to the
structure disclosed in Appellant’s Specification corresponding to the claimed
second means.
For the foregoing reasons, we do not sustain the rejection of claim 1,
or dependent claims 2–5, 8, 9, 21, 23, and 25, as unpatentable over Böttcher
and Claprood.
Claims 11–13, 18, 19, 22, 24, and 26
Claim 11 recites a lighting control switch harness comprising a
plurality of elements connected to each other and that
the elements are mechanically and electrically connected
to one another only by three wires passing through the body of
the various elements, a first wire being connected to a first
contact of the second switch of each element, a second wire
being connected to the mobile contact of the first switch of each
element, and a third wire being connected to a second contact
of the second switch of each element.
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Appeal Br. 95–96 (Claims App.) (emphasis added).
The Examiner finds that Böttcher discloses these limitations of claim
11 for reasons similar to those stated for claim 1. Final Act. 12. As
discussed above, however, the Examiner’s finding that Böttcher’s multiple
individual wires 12 meet the limitation of “a second wire being connected to
the mobile contact of the first switch of each element” is incorrect as being
premised on an erroneous claim construction. Even if Böttcher’s wires 13
and 14 provide both electrical and mechanical connections between each of
the switches 19 shown in Figure 5, and wires 13 and 14 can be considered to
correspond to the recited first wire and third wire, the Examiner fails to
establish that Böttcher discloses only three wires that provide both electrical
and mechanical connections between each of the switches 19, as required by
claim 11. The Examiner’s reliance on Claprood in rejecting claim 11 does
not cure these deficiencies of Böttcher.
Accordingly, we do not sustain the rejection of claim 11, or dependent
claims 12, 13, 18, 19, 22, 24, and 26, as unpatentable over Böttcher and
Claprood.
Claim 27
Appellant indicates that “[c]laims 1 and 11 are the rejected
independent claims that Appellant[] appeals.” Appeal Br. 4. Consistent
with this statement, Appellant presents argument for patentability for claims
1 and 11, but not for claim 27. Id. at 7–91. Because Appellant does not
challenge the rejection of claim 27, Appellant has waived any argument of
error, and we summarily sustain the rejection of claim 27 as unpatentable
over Böttcher and Claprood. See In re Berger, 279 F.3d 975, 984, 985 (Fed.
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Cir. 2002) (holding that the Board did not err in sustaining a rejection under
35 U.S.C. § 112, second paragraph, when the applicant failed to contest the
rejection on appeal).

Claims 6, 10, and 20 over Böttcher, Claprood, and Rada
Claims 7 and 17 over Böttcher, Claprood, and Painter
Claims 6, 7, 10, and 17 depend from parent claim 1, and claim 20
depends from claim 11. The Examiner’s reliance on Rada and Painter fails
to cure the deficiency in the rejection of claim 1 or 11. Final Act. 19–25.
Accordingly, we do not sustain the rejection of claims 6, 10, and 20 as
unpatentable over Böttcher, Claprood, and Rada, or the rejection of claims 7
and 17 as unpatentable over Böttcher, Claprood, and Painter, for the same
reasons as for claims 1 and 11.

New ground of rejection of claims 23 and 24
We construe claim 23 as not further limiting the subject matter of
claim 1. Claim 24, which depends from claim 11, recites the same limitation
as claim 23. Appeal Br. 97 (Claims App.). Likewise as for claim 23, we
also construe claim 24 as not further limiting claim 11. Thus, we conclude
that claims 23 and 24 fail to comply with the requirements of 35 U.S.C.
§ 112, fourth paragraph.8 Therefore, pursuant to 37 C.F.R. § 41.50(b), we

8 According to 35 U.S.C. § 112, fourth paragraph, “[s]ubject to the following
paragraph [i.e., 35 U.S.C. § 112, fifth paragraph], a claim in dependent form
shall contain a reference to a claim previously set forth and then specify a
further limitation of the subject matter claimed. A claim in dependent form
shall be construed to incorporate by reference all the limitations of the claim
to which it refers.” (Emphasis added).
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enter a new ground of rejection of claims 23 and 24 under 35 U.S.C. § 112,
fourth paragraph.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–5, 8, 9,
11–13,
18, 19,
21–27
§ 103(a) Böttcher,
Claprood
27 1–5, 8, 9,
11–13, 18,
19, 21–26

6, 10, 20 § 103(a) Böttcher,
Claprood,
Rada
6, 10, 20
7, 17 § 103(a) Böttcher,
Claprood,
Painter
7, 17
23, 24 § 112,
fourth
paragraph
23, 24
Overall
Outcome
27 1–13, 17–
26
23, 24

FINALITY OF DECISION AND RESPONSE
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision,
[Appellant], within two months from the date of the decision,
must exercise one of the following two options with respect to
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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.

Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART; 37 C.F.R. § 41.50(b)