Ex Parte Beilfuss et al

Patent Trial and Appeal Board

Dec 19, 2012

11288665 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte WOLFGANG BEILFUSS, INFO KRULL,
RALF GRADTKE, and KATRIN STEINHAUER
__________

Appeal 2011-010228
Application 11/288,665
Technology Center 1600
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1, 2, and 4-20. We have jurisdiction under
35 U.S.C. § 6(b).
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STATEMENT OF THE CASE
The claims are drawn to suppressing the growth of mycobacteria in
process liquids, and may be found in the “Claims Appendix” to the Appeal
Brief (App. Br. 28-31).
The following grounds of rejection are before us for review:
I. Claims 1, 2, 4, 5, 10-16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Beilfuss
‟679
1
and Hayes
2
(Ans. 4).
II. Claims 6, 9, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Beilfuss and Hayes,
as further combined with Rossmoore
3
(Ans. 7).
III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Beilfuss and Hayes, as further
combined with Beilfuss ‟483
4
(Ans. 9).
IV. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Beilfuss and Hayes, as further
combined with Barbeau
5
(Ans. 10).
V. Claims 1, 4-6, 8, 9, 11-14, and 17-19 stand rejected under 35
U.S.C. § 103(a) as being rendered obvious Ashworth
6
(Ans. 12).

1
Beilfuss et al., US 6,355,679 B1, issued Mar. 12, 2002.
2
Hayes et al., Resistance of Mycobacterium chelonei-Like Organisms to
Formaldehyde, 43 APPLIED AND ENVIRONMENTAL MICROBIOLOGY 722-724
(1982).
3
Rossmoore, US 2004/0211732 A1, published Oct. 28, 2004.
4
Beilfuss et al., US 6,348,483 B1, issued Feb. 19, 2002.
5
Barbeau et al., US 2002/0016278 A1, published Feb. 7, 2002.
6
Ashworth et al., WO 2004/030458 A1, published Apr. 15, 2004.
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We affirm rejection V. We also vacate Rejections I-IV and enter new
grounds of rejection.

ISSUE (Rejection V)
Does the preponderance of the evidence of record support the
Examiner‟s conclusion that Ashworth renders claims 1, 4-6, 8, 9, 11-14, and
17-19 prima facie obvious?

FINDINGS OF FACT
FF1. The invention relates “to the use of formaldehyde and formaldehyde-
releasing compounds in a composition for controlling mycobacteria, for
example in a cooling lubricant” (Spec. 1).
FF2. According to the Specification, “[a] mycobacterial activity of
formaldehyde is generally known” (id.).
FF3. The Specification teaches (emphasis added):
The formaldehyde-releasing compound used according to
the invention is preferably selected form 3,3'-methylenebis[5-
methyloxazolidine], 1,3-bis(hydroxymethyl)urea,
(ethylenedioxy)dimethanol, 2-(2-
butoxyethoxy)ethoxymethanol, tetrahydro-1,3,4,6-
tetrakis(hydroxylmethyl)imidazo[4,5-d]imidazole-2,5(1H,3H)-
dione, α,α',α"-trimethyl-1,3,5-triazine-1,3,5-(2H,4H,6H)-
triethanol and mixtures thereof.

(Id. at 3.)
FF4. The Specification also teaches that the invention also “relates to the
use of isothiazol-3-ones to increase the mycobactericidal activity of
formaldehyde and formaldehyde-releasing compounds” (id. at 5).
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FF5. The Specification presents results for compounds as set forth at page 4
of the Specification, as well as for comparison compounds (id. at 9-10).
FF6. The Examiner rejects claims 1, 4-6, 8, 9, 11-14, and 17-19 under 35
U.S.C. § 103(a) as being rendered obvious over Ashworth (Ans. 12).
FF7. As we agree with the Examiner‟s findings and conclusions (see id. at
12-15), we adopt them as our own. We also highlight the following
teachings of Ashworth.
FF8. Ashworth teaches a composition comprising (A) N'-hydroxy-N-
cyclohexyl-diazenium oxide (KHDO) and (B) another microbicidally active
component (Ashworth 2, ll. 30-32). Ashworth teaches that a mixture of
KHDO with a wide range of other biocides “may exhibit a synergistic effect
against a broad spectrum of microorganisms” (id. at 2, ll. 13-16).
FF9. Ashworth teaches a wide variety of additional biocidals, such as
isothiazolones, O-formals, and N-formals (id. at 3).
FF10. Ashworth also teaches that 3,3'-methylenebis(5-methyloxazolidine) is
one of the preferred compounds for component (B) (id. at 5, ll. 9-10, 15-16).
FF11. Ashworth teaches that the compositions are effective against bacteria
and fungi, with an example of gram-positive bacteria being Mycobacterium
(id. at 10).
FF12. According to Ashworth:
[T]he combination of active components (A) and (B) is
preferably used so as to provide a final concentration of from
0.001 to 10%, more preferably 0.01 to 5%, especially 0.02 to
0.5%, of (A) and (B), by weight of the liquid medium
(including any liquid environment to be treated).

(Id. at 11, l. 28-12, l. 2.)
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PRINCIPLES OF LAW
The Supreme Court has emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). “If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its patentability.”
(Id. at 417.) Under the correct obviousness analysis, “any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” (Id. at 420.)

ANALYSIS
Appellants argue that the compositions of Ashworth comprise the
potassium salt of N'-hydroxy-N-cyclohexyldiazenium oxide and another
microbially active component, and that Ashworth teaches a “whole plethora
of compounds under nineteen very broad headings” from which the other
microbially active component may be chosen from (App. Br. 20).
Appellants assert that while Ashworth lists mycobacterium, “there is no
teaching that the formulations of ASHWORTH are effective against
mycobacterium” (id. at 21). Appellants further assert that Ashworth also
fails to lead the ordinary artisan to select a formaldehyde releasing
compound.
Appellants‟ arguments are not convincing. As noted by the Examiner
(Ans. 13), 3,3'-methylenebis(5-methyloxazolidine) is one of the preferred
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compounds for component (B) of the composition of Ashworth. The fact
that the combination of KHDO and 3,3'-methylenebis(5-methyloxazolidine)
is one of a number of obvious combinations does not make it any less
obvious. KSR, 550 U.S. at 419 (“What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.”).
See, e.g., Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (“That the [prior art] patent discloses a multitude of effective
combinations does not render any particular formulation less obvious.”); In
re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness
rejection of claims in light of prior art teaching that “hydrated zeolites will
work” in detergent formulations, even though “the inventors selected the
zeolites of the claims from among „thousands‟ of compounds”). Moreover,
Ashworth teaches that the compositions have a broad biocidal activity and
suggest activity against mycobacterium, and Appellants have presented no
scientific reasoning or evidence that the ordinary artisan would not expect
the compositions to be active against mycobacterium. Finally, both the
instant Specification and Ashworth teach the formaldehyde releasing
compound 3,3'-methylenebis(5-methyloxazolidine), and “[f]rom the
standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381,
391 (CCPA 1963).
As to claims 1, 4, 8, 9, 11, and 19, of which we choose claim 1 as
representative, Appellants argue that “there is no indication of the selection
of a formaldehyde-releasing compound different from HHT in a composition
for suppressing the growth of mycobacteria in process liquid” (App. Br. 21).
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Appellants further assert that Ashworth does not teach or suggest that “in
case of overdose, no promotion of growth occurs” (id. at 21-22).
Appellants argue that the Specification describes at page 1, the issues
with HHT, and that the “inventors have surprisingly found that bactericides
selected from formaldehyde-releasing compounds (different from HHT) in a
composition for controlling mycobacteria, even in the case of overdose do
not promote the growth of mycobacteria” (id. at 22).
Claim 1 is drawn to:
A method of suppressing the growth of mycobacteria in process
liquid, comprising:
using a bactericide selected from formaldehyde-releasing
compounds different from 2,2',2"- (hexahydro-l, 3, 5-triazine-
l,3,5-triyl)triethanol in a composition for suppressing the
growth of mycobacteria in process liquids, wherein, in case of
an overdose of the bactericide, no promotion of growth of
mycobacteria occurs.

Thus, the only actual step required by claim 1 is using a bactericide
that is a formaldehyde releasing compound, so long as that compound is not
2,2',2"- (hexahydro-l, 3, 5-triazine-l,3,5-triyl)triethanol (HHT). As noted
above, both the instant Specification and Ashworth teach the formaldehyde
releasing compound 3,3'-methylenebis(5-methyloxazolidine), and thus the
property of not promoting the growth of mycobacteria in the case of
overdose is a property of the compound.
As to claims 5 and 12, Appellants argue that the claims recite specific
bacterium affected by the compounds (App. Br. 22). Appellants argue that
Ashworth fails to teach or suggest that any of the disclosed formaldehyde
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releasing compounds “can suppress the growth of any specific
mycobacteria” (id. at 22-23).
Again, as already discussed, both the instant Specification and
Ashworth teach the formaldehyde releasing compound 3,3'-methylenebis(5-
methyloxazolidine), and thus the property of suppressing the growth of the
specific bacteria would be an inherent property of the compound. Moreover,
as also discussed above, Ashworth specifically teaches that the composition
has broad biocidal activity.
As to claim 6, Appellants argue that while Ashworth “discloses
isothiazol-3-ones, formaldehyde-releasing compounds, and treating
mycobacteria,” Ashworth “fails to actually teach either isothiazol-3-ones or
formaldehyde-releasing compounds for treating mycobacteria” (id. at 23).
That argument is not found to be convincing for reasons previously
discussed above.
Appellants further argue as to claim 6 that Ashworth does not teach or
suggest “using isothiazol-3-ones to increase the mycobactericidal activity of
formaldehyde-releasing compounds,” thus asserting that is unexpected (id.).
Appellants point to the Example at pages 9 and 10 of the Specification as
evidence that “the use of isothiazol-3-ones increased the mycobactericidal
activity of formaldehyde-releasing compounds (identified by the letters a)
to g) defined on page 4)” (id.).
Appellants‟ evidence is not persuasive on the issue of unexpected
results. The burden of demonstrating unexpected results rests on the party
asserting them, and “it is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
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be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Here, Ashworth specifically teaches that by combining biocidal
agents, such as KHDO with another biocidal agent, such as isothiazol-3-ones
and formaldehyde releasing compounds, may exhibit a synergistic effect.
As to claim 13, Appellants argue that Ashworth “offers no guidance to
select less than 0.25% of a formaldehyde releasing compound as an effective
amount against mycobacterium” (App. Br. 24). As to claim 14, Appellants
argue that “there is no suggestion that 0.1% to 0.2% of a formaldehyde
releasing compound would have been effective for suppressing
mycobacteria growth” (id. at 24-25). As to claim 17, Appellants argue that
Ashworth “offers no guidance to select less than 0.25% of a formaldehyde
releasing compound as an effective amount against mycobacterium” (id. at
25). Finally, as to claim 18, Appellants argue that “there is no suggestion
that 0.1% to 0.2% of a formaldehyde releasing compound would have been
effective for suppressing mycobacteria growth” (id. at 26).
Appellants‟ arguments as to claim 13, 14, 17, and 18 have been
considered, but are not found to be convincing. As found by the Examiner,
“the combination of active components is preferably used as to provide a
final concentration of from 0.001 to 10%” (Ans. 13; see also FF12). In
addition, as also noted by the Examiner (id. at 20), “where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re
Aller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272,
276, (CCPA 1980) (noting that determining the optimum values of result
effective variables is ordinarily within the skill of the art).
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CONCLUSION OF LAW
We conclude that the preponderance of the evidence of record
supports the Examiner‟s conclusion that Ashworth renders claims 1, 4-6, 8,
9, 11-14, and 17-19 prima facie obvious. We thus affirm the rejection of
claims 1, 4-6, 8, 9, 11-14, and 17-19 as being rendered obvious Ashworth.

NEW GROUNDS OF REJECTION
I. Claims 1, 2, 5, 12, 19, and 20 are rejected under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a), as being
anticipated or rendered obvious by Beilfuss ‟679.

FINDINGS OF FACT
FF13. Beilfuss ‟679 is drawn to compositions or preservatives for protecting
industrial products, such as cutting fluids, against bacterial attack (Beilfuss
‟679, col. 2, ll. 40-62).
FF14. Beilfuss ‟679 teaches
a composition which includes (a) an iodopropynylbutyl
compound selected from iodopropynylbutyl esters, ethers,
acetals, carbamates and carbonates and (b) one or more
formaldehyde donor compounds, and is characterized in that the
formaldehyde donor compounds are N-formals formed by the
reaction or condensation of a monovalent or polyvalent, amino-
substituted C1-C10-alkyl, -aryl or -aralkyl alcohol and a
formaldehyde-supplying compound, and/or O-formals formed
by the reaction of a monovalent or polyvalent C1-C10-alkyl, -
aryl -aralkyl alcohol or of a glycol or glycol ether and a
formaldehyde supplying compound, and/or a combination
thereof.

(Id. at col. 2, l. 63-col. 3, l. 7.)
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FF15. According to Beilfuss ‟679, the “the formaldehyde donor compound is
preferably an N-formal selected from 3,3'-methylenebis(5-
methyloxazolidine) (Mar 71
TM
), 3,3'-methylenebis(tetrahydro-2H-1,3-
oxazine) and 1-aza-5-ethyl-3,7-dioxabicyclo-(3,3,0)octane, particularly
preferably a combination of 3,3'-methylenebis(5-methyloxazolidine) (Mar
71
TM
) and IPBC” (id. at col. 3, ll. 13-19 (emphasis added)).

PRINCIPLES OF LAW
We recognize that in order for a prior art reference to serve as an
anticipatory reference, it must disclose every limitation of the claimed
invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997).
A single prior art reference that discloses, either
expressly or inherently, each limitation of a claim invalidates
that claim by anticipation. Thus, a prior art reference without
express reference to a claim limitation may nonetheless
anticipate by inherency. “Under the principles of inherency, if
the prior art necessarily functions in accordance with, or
includes, the claims limitations, it anticipates.” Moreover,
“[i]nherency is not necessarily coterminous with knowledge of
those ordinary skill in the art. Artisans of ordinary skill may
not recognize the inherent characteristics or functioning of the
prior art.”

Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375-76 (Fed.
Cir. 2005) (citations omitted). In addition, “[i]t is a general rule that merely
discovering and claiming a new benefit of an old process cannot render the
process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990); see also Perricone, 432 F.3d at 1377-78 (noting that the realization of
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a new benefit of an old process does not render that process patentable);
Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368,
1376 (Fed. Cir. 2001) (stating in the context of a claimed process that was
drawn to the same use comprising the same steps of the prior art, “[n]ewly
discovered results of known processes directed to the same purpose are not
patentable because such results are inherent.”).

ANALYSIS
As noted above as to the rejection of claim 1 over Ashworth, all that is
required by claim 1 is using a bactericide that is a formaldehyde releasing
compound, so long as that compound is not HHT, in a process liquid.
Beilfuss ‟676 teaches the use of the formaldehyde donor compound 3,3'-
methylenebis(5-methyloxazolidine) in a process liquid. Thus, Beilfuss ‟676
teaches the method of claim 1. The fact that the 3,3'-methylenebis(5-
methyloxazolidine) suppresses the growth of mycobacteria is an inherent
property of the compound, as is that in the case of an overdose, no
promotion of growth of mycobacteria occurs. We thus find that Beilfuss
‟676 anticipates the method of claim 1.
In the alternative, to the extent that Beilfuss ‟676 does not teach that
formaldehyde releasing compounds, such as 3,3'-methylenebis(5-
methyloxazolidine), suppress the growth of mycobacteria, we note that the
Specification teaches that “[a] mycobacterial activity of formaldehyde is
generally known” (FF2). Thus, in view of the general knowledge of the art,
it would have been obvious to use formaldehyde releasing compounds, such
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as 3,3'-methylenebis(5-methyloxazolidine), to suppress the growth of
mycobacteria.
As to claim 2, 3,3'-methylenebis(5-methyloxazolidine) is one of the
preferred formaldehyde releasing compounds taught by the Specification
(FF3), and is also one of the preferred compounds taught by Beilfuss ‟679
(FF15). Thus, the additional limitations of claim 2, such as “at identical
concentrations, the bactericide has a greater activity against mycobacteria
than [HHT]” would be an inherent property of the 3,3'-methylenebis(5-
methyloxazolidine). As noted above with respect to the rejection over
Ashworth, a compound and its properties are inseparable.
As to claims 5 and 12, we reiterate that the ability of 3,3'-
methylenebis(5-methyloxazolidine) to suppress the growth of the recited
mycobacteria is an inherent property of the compound. In addition, as
mycobacterial activity of formaldehyde is generally known, the ordinary
artisan would have had a reasonable expectation of success of using 3,3'-
methylenebis(5-methyloxazolidine) against the listed mycobacteria. See In
re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (noting that all that is
required is a reasonable expectation of success, not absolute predictability of
success).

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II. Claims 4, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Beilfuss ‟679.

ADDITIONAL FINDINGS OF FACT
FF16. Beilfuss ‟679 also teaches that the composition may comprise “further
known biocidal active ingredients, such as, for example, isothiazolones or
mercaptopyridines, of which N-octylisothiazolone (Kathon 893
TM
) and 2-
mercaptopyridine N-oxide, in particular in the form of its 40% strength
aqueous sodium salt solution (Pyrion-Na
TM
), are particularly preferred” (id.
at col. 4, ll. 42-49).

ANALYSIS
Beilfuss ‟679 teaches that the composition may further comprise an
additional biocidal ingredient, such as a 2-mercaptopyridine N-oxide, to the
composition. Thus, it would have been obvious to use the 2-
mercaptopyridine N-oxide in the biocidal composition, such as 2-
mercaptopyridine N-oxide in the form of Pyrion-Na
TM
as taught by Beilfuss
‟679.

III. Claims 6, 8, 9, and 13-18 are rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Beilfuss ‟679 and Ashworth.

ADDITIONAL FINDINGS OF FACT
FF17. The teachings of Ashworth are discussed above (see FF8-12).
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FF18. Ashworth also teaches that isothiazolones, such as 5-chloro-2-methyl-
2H-isothiazol-3-one and 2-methyl-2H-isothiazol- 3-one, are known biocidal
compounds (Ashworth 4, ll. 2-4).
FF19. Ashworth also teaches the use of ortho-phenylphenol (id. at 4, ll. 21-
22).

ANALYSIS
Beilfuss ‟679 does not specifically teach the addition of isothiazol-3-
ones and o-phenylphenol to the biocidal compositions, and also does not
specify concentrations of the biocidal ingredients.
Claim 6 is drawn to a method of “suppressing the growth of
mycobacteria in process liquids, comprising[ ] using isothiazol-3-ones to
increase the mycobactericidal activity of formaldehyde-releasing
compounds.”
Beilfuss ‟679 teaches the use of formaldehyde releasing compounds in
the treatment of process liquids, and teaches that additional known biocidal
active ingredients, such as isothiazolones, may be added to the composition.
Ashworth teaches that isothiazol-3-ones, such as 5-chloro-2-methyl-2H-
isothiazol-3-one, are known biocidal compounds for use in process liquids.
Thus, it would have been obvious to the ordinary artisan to incorporate
isothiazol-3-ones, such as 5-chloro-2-methyl-2H-isothiazol-3-one in view of
the teaching of Beilfuss ‟679 that isothiazolones may be added to the
composition. Similarly, for claim 9, Ashworth specifically teaches the
recited isothiazol-3-one compounds, such as 5-chloro-2-methyl-2H-
isothiazol-3-one and 2-methyl-2H-isothiazol- 3-one.
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Claim 8 requires the addition of o-phenylphenol. Ashworth also
teaches that phenols such as o-polyphenol are known biocidal compounds
for use in process liquids. Thus, it would have also been obvious to
incorporate o-phenylphenol in the composition of Beilfuss ‟679 because
Beilfuss ‟679 teaches that additional biocides may be incorporated. In
addition, the idea of combining them flows logically from their having been
individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980). Here the art recognized biocidal properties of each of the
described agents would have provided one of ordinary skill in the art with
ample suggestion of their combination in the composition as claimed. KSR,
550 U.S. at 416.
As to the amounts recited in claims 13-18, Beilfuss ‟679 does not
teach any concentration. Ashworth teaches that the “combination of active
components . . . is preferably used so as to provide a final concentration of
from 0.001 to 10 . . . by weight of the liquid medium” (FF12). Moreover, it
would have been well within the level of skill of the ordinary artisan to
optimize the concentrations of the biocidal compounds in order to achieve
the desired activity. “[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” Aller, 220 F.2d at 456.

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IV. Claim 7 is rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Beilfuss ‟679 and Beilfuss ‟483.

ADDITIONAL FINDINGS OF FACT
FF20. Beilfuss ‟483 teaches that “N-cyclohexyl-N-nitrosohydroxylamine or
its salts, such as Na, K or Al salts” are microbially active (Beilfuss ‟483, col.
2, l. 57-col. 3, l. 19).
ANALYSIS
Claim 7 is drawn to the method of claim 4, wherein the N-cyclohexyl-
N-nitrosohydroxylamine salt is a potassium salt. Beilfuss ‟679 does not
specifically teach biocidal compounds, such as the potassium salt of N-
cyclohexyl-N-nitrosohydroxylamine salt. It would have been obvious to
incorporate a potassium salt of N-cyclohexyl-N-nitrosohydroxylamine as
taught by Beilfuss ‟483 in the composition of Beilfuss ‟679 because Beilfuss
‟679 teaches that additional biocides may be incorporated.

SUMMARY
We affirm the rejection of claims 1, 4-6, 8, 9, 11-14, and 17-19 under
35 U.S.C. § 103(a) as being rendered obvious Ashworth.
We vacate Rejections I-IV, and enter the following new grounds of
rejection:
Claims 1, 2, 5, 12, 19, and 20 are rejected under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a), as being
anticipated or rendered obvious by Beilfuss ‟679.
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Claims 4, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Beilfuss ‟679.
Claims 6, 8, 9, and 13-18 are rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Beilfuss ‟679 and Ashworth.
Claim 7 is rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Beilfuss ‟679 and Beilfuss ‟483.

TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellants may
file a single request for rehearing within two months from the date of the
original decision of the Board.”
This decision contains new grounds 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 that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so
rejected or new evidence relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event the proceeding will
be remanded to the examiner….
(2) Request rehearing. Request that the proceeding be reheard under § 41.52
by the Board upon the same record….
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§1.136(a)(1)(iv)(2007).

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.

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

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