Ex Parte Chandra

Patent Trial and Appeal Board

Apr 8, 2016

11766791 (P.T.A.B. Apr. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111766,791 06/21/2007
47349 7590 04/08/2016
ROHIT CHANDRA
987 ROSA CT
SUNNYVALE, CA 94086
FIRST NAMED INVENTOR
Rohit Chandra
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.
12000002-0005-002 1045
EXAMINER
SHIH, HAOSHIAN
ART UNIT PAPER NUMBER
2173
MAILDATE DELIVERY MODE
04/08/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHIT CHANDRA
Appeal2015-004098
Application 11/766,791
Technology Center 2100
Before JEFFREY S. SMITH, BRUCE R. WINSOR, and
AARON W. MOORE, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 50-81, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b). Claims 1--49 are cancelled.
(App. Br. 2.)
We affirm and designate portions of our affirmance as a new ground
of rejection within the provisions of 3 7 C.F .R. § 41. 50(b) (2013 ).
Appeal2015-004098
Application 11/766,791
STATEMENT OF THE CASE
Appellant's disclosed invention relates generally to "computer
network-based information retrieval techniques." (Spec. i-f 2.) More
particularly, the invention relates to "enable[ing] a user to mark-up or
highlight information (such as text or images) on an internet document for
better visibility, later retrieval and/or sharing with one or more other users."
(Id.) Claim 50, which is illustrative, reads as follows:
50. A computer-implemented method, comprising responsive
to invoking a highlighting session at a client computer system,
without requiring a user to install a client-side software
application causing a highlighting tool panel that includes one
or more user interface objects for use in controlling various
functions of a highlighting service to be presented on a display
of the client computer system.
The Examiner relies on the following prior art and other evidence in
rejecting the claims:
Oran et al. US 5,757,371 May 26, 1998
(hereinafter "Oran")
Burner et al. US 6,282,548 B 1 Aug.28,2001
(hereinafter "Burner")
Bates et al. US 2005/0086634 Al Apr. 21, 2005
(hereinafter "Bates")
Marmor US 2007 /0055739 Al
Chandra US 8,352,573 B2
(hereinafter "Chandra '573")
Mar. 8, 2007
Jan. 8,2013
"Diigo- social annotation and social bookmarking," www.diigo.com,
retrieved from http:/ !web.archive.org/web/20060512172456/
www.diigo.com/help (archived May 21, 2006) (14 pp.) (hereinafter
"Diigo512").
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"Diigo," www.diigo.com, retrieved from the Internet Archive
Wayback Machine for http://www.diigo.com/help/ (archived Mar. 19,
2006) (3 pp.) (hereinafter "Diigo319"). 1
Screen shots referencing Microsoft Office Word 2003 and Diigo2.htm
bearing various dates, 1983-2003, 2006, and 2010 (6 pages), source
not apparent from the Record (hereinafter "MSword").
Claims 50 and 67 stand rejected on the ground of non-statutory double
patenting as being unpatentable over claim 1 of Chandra '573. (See Final
Act. 3--4.)
Claim 50, 54--56, 61, 67, 70-72, 74, and 77 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Diigo512 and Marmor. (See
Final Act. 5-7.)
Claims 51-53, 57, 62---64, 68, 69, 73, and 78-80 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Diigo512, Marmor, and
MSword. (See Final Act. 8-13.)
Claim 58 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diigo512, iviarmor, and Burner. (See Final Act. 13-14.)
Claims 59, 60, 66, 75, and 76 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Diigo512, Marmor, and Oran. (See Final Act.
14--16.)
Claims 65 and 81 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diigo512, Marmor, and Bates. (See Final Act 16-17.)
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Oct. 5, 2014; "Reply Br." filed Feb. 23, 2015)2 and the
1 Provided to Appellant with Examiner's Answer.
2 The pages of Appellant's filings are unnumbered. We refer to the 18 pages
(excluding appendices) of the Appeal Brief using consecutive numbers, with
the caption page referred to as page 1 and the signature page referred to as
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Specification ("Spec." filed June 21, 2007 as amended Feb 1, 2008) for the
positions of Appellant, and the Final Office Action ("Final Act." mailed Feb.
26, 2014) and Answer ("Ans." mailed Dec. 24, 2014) for the reasoning,
findings, and conclusions of the Examiner. Only those arguments actually
made by Appellant have been considered in this decision. Arguments that
Appellant did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUES
The issues presented by Appellant's contentions are as follows:
Does the Examiner err in rejecting claims 50 and 67 for non-statutory
double patenting?
Does the declaration of Appellant under 3 7 C.F .R. § 1.131 effectively
remove Diigo512 as a prior art reference against the pending claims?
ANALYSIS
NON-STATUTORY DOUBLE PATENTING
The Examiner rejects claim 50 over claim 1 of Chandra '573,
explaining that "[a]lthough the claims at issue are not identical, they are not
page 18. We refer to the six pages of the Claims Appendix as pages 19-24
of the Appeal Brief. We refer to the 2 pages of the Declaration of Rohit
Chandra dated May 22, 2014 using consecutive numbers, with the caption
page being page 1 and the signature page being page 2. We refer to the four
pages of Exhibit A as pages 3---6 of the Declaration, the nine pages of Exhibit
Bas pages 7-15 of the Declaration, and the 39 pages of Exhibit C as pages
16-54 of the Declaration. We refer to the five pages of the Reply Brief
using consecutive numbers, with the caption page being page 1 and the
signature page being page 5.
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Application 11/766,791
patentably distinct from each other." (Final Act. 3.) The Examiner explains
the rejection by reproducing claim 50 (reproduced supra) and claim 1 of
Chandra '573 side-by-side in tabular form (Final Act 3--4), emphasizing the
following portion of claim 1 of Chandra '573:
A computer-implemented method, comprising: providing, by a
highlighting service server to a web browser of a user's computer
system, a panel for use by the user, said collaboration panel
provided by said highlighting service server without need for
specialized software components installed on the user's computer
system ....
(Final Act. 3 (emphasis omitted).) The Examiner adopts the same analysis
for claim 67. (Final Act. 4.)
Appellant contends the Examiner fails to provide a specific reason for
the rejection. (App. Br. 14.) We disagree. As explained by the Examiner
(Ans. 21 ), the side-by-side tabular reproduction of claim 50 and claim 1 of
Chandra '573, emphasizing those portions of claim 1 of Chandra '573 that
the Examiner considers to be patentably indistinct from claim 50 of the
instant application provides a specific reason for the rejection. (See Final
Act. 3--4.)
Appellant further contends "the Claims [claim 50 and claim 1 of
Chandra '573] are indeed distinct from each other, and cover different
functionality." (App. Br. 14.) More specifically, Appellant contends
"[t]he issued patent [Chandra '573] is about 'emailing advertisements within
highlights' [while] the present Application is about 'controlling the
functionality of a highlighting service."' (Id.; see also Reply Br. 2.)
Although not articulated as such, the Examiner applies the so-called "one-
way test" for non-statutory double patenting, while Appellant argues the so-
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called "two-way test" for non-statutory double patenting. We are not
persuaded of error.
Claim 50 recites a "highlighting tool panel ... for use in controlling
various functions of a highlighting service," whereas claim 1 of Chandra
'573 recites "a panel for use by the user ... including means for the user to
specify an email address of an intended recipient of highlighting information
associated with an internet document." In other words, claim 50 is directed
to a panel that generically controls the functions of a highlighting service,
whereas claim 1 of Chandra '5 7 3 is directed to a panel that controls a
specific function of the highlighting service. Thus, the functionality recited
in claim 1 of Chandra '573 is encompassed within the functionality of claim
50 (and claim 67). In other words, claim 1 of Chandra '573 recites a species
of the genus claimed in claim 50 of the instant application. See In re Berg,
140 F.3d 1428, 1432-36 (Fed. Cir. 1998). Although Chandra '573 was filed
later than the instant application, and although the specification of Chandra
'573 is not identical to the instant application, we see no reason why genus
claim 50 of the present application and species claim 1 of Chandra '573
claims could not have been presented in the same application (see, e.g.,
Spec. i-fi-f 15, 18). See Berg, 140 F.3d 1428, 1434. Accordingly, we conclude
the Examiner applies the correct test.
Even if we were to apply the two-way test, however, Appellant's
argument still would not persuade us of error. Appellant argues as follows:
Any person skilled in the art can see that [ t ]he Claims are
very distinct from each other. Similarity in the claims is because
they are for related, patentably distinct applications. Without
getting into the technicalities, Appellant respectfully and humbly
submits that the distinctions will likely be discernible to you as
well.
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(Reply Br. 2.) Such conclusory statements are of little probative value.
Appellant does not explain why the generic functionality recited in claim 50
is patentably distinct from the specific functionality recited in claim 1 of
Chandra '573.
For the foregoing reasons, we sustain the non-statutory double
patenting rejection of claims 50 and 67 over claim 1 of Chandra '573. 3
DECLARATIONUNDER37 C.F.R. § 1.131
Initial Observations
We note as an initial matter that there are errors and informalities in
Appellant's submission attempting to remove the Diigo512 reference as
prior art. However, in the interests of due process, and particularly in view
of Appellant's prose status (see App. Br. 1, 18), we have not relied on any
errors or informalities in reaching our decision, but have instead looked to
the overall Record on appeal. For example, the Declaration of Rohit
Chandra submitted in the Evidence Appendix of the Appeal Brief is a
declaration dated December 18, 2013, which does not incorporate Exhibit C
relied on by Appellant to demonstrate diligence. We have, therefore, looked
to the Declaration of Rohit Chandra dated May 22, 2014 (hereinafter the
"Declaration" or "Deel."), which does incorporate Exhibit C, and which was
entered by the Examiner by an Advisory Action mailed June 12, 2014. (But
see Final Act. 18; Ans. 19.)
A declaration under § 1.131 should include within the declaration and
its exhibits all of the facts relied on by the declarant to demonstrate
3 We note that our sustaining the non-statutory double patenting rejection is
without prejudice to Appellant's right to file an appropriate terminal
disclaimer under 37 C.F.R. § 1.321(b).
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conception and diligence in reduction to practice. CY: Jn re Borkowski, 505
F.2d 713, 718-19 (CCPA 1975). Here, Appellant has made numerous
purportedly factual averments in the Briefs rather than in the Declaration.
(See, e.g., App. Br. 11-13.) Given that the declaration does not include the
required showing of facts, it is insufficient to satisfy the requirements of 3 7
C.F .R. § 1.131. However, in the interests of compact prosecution, and
administrative and judicial economy, and without waiving the requirements
of§ 1.131, we now fully consider the factual averments in the Briefs as
though they were included in the Declaration.
Appellant brings to our attention a similar declaration submitted
during prosecution of related patent application Serial No. 11/766,669
("'669 Application), now US Patent 8,661,031 B2, that "successfully
established invention date prior to 3/28/06." (App. Br. 7 (emphasis
omitted).) Neither the claims nor the prior art and rejections at issue in the
'669 Application are before us here. We decline to comment on a patent
application not before us on appeal. The predecessor of our reviewing court
has held that
the policy and purpose of the patent laws preclude the
applicability of any doctrine akin to the judicially-developed
doctrine of 'res judicata' to bar the granting of patents on
inventions that comply with the statute. The same policy and
purpose precludes reliance on any such doctrine to force the
granting of patents on inventions that do not comply with the
statute.
Borkowski, 505 F .2d at 718. Similarly, the disposition of sister applications
to the present application is not probative of the issues in the present appeal.
(See App. Br. 3.)
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Appellant filed this appeal with the understanding that the effective
prior art date ofDiigo512 is May 12, 2005. (See Final Act. 5; see also Reply
Br. 4.) In the Answer, the Examiner first provides Diigo319 to Appellant
and characterizes it as the "same prior art reference [as Diigo512] with the
date of03/19/2006." (Ans. 18.) Diigo319 comprises three pages (see
Notice of References Cited (mailed Dec. 24, 2014)), whereas Diigo512
comprises 14 pages (see Notice of References Cited (mailed July 2, 2010)).
In rejecting claims 50 and 67, from which all other pending claims depend,
the Examiner relies, inter alia, on page 6 ofDiigo512. (See Final Act. 5, 7.)
Given the disparity between the content ofDiigo512 and Diigo319, and the
lack of explanation from the Examiner to establish that the teachings of
Diigo319 are coextensive with the relied-on teachings of Diigo512, for
purposes of this proceeding, the Examiner has not established an effective
prior art date earlier than May 12, 2006 for the Diigo512 reference, and we
consider Appellant's evidence and arguments on the basis of that effective
prior art date for the Diigo512 reference.
The Required Showing
Appellant does not assert the claimed invention was reduced to
practice prior to the effective date of the Diigo512 reference. (See Deel. 1-
2.) Nor does Appellant rely on a date of actual reduction to practice.
Rather, Appellant asserts the claimed invention was conceived prior to the
effective date of the Diigo512 reference (id. (i-fi-f 3, 5---6)) and diligently
constructively reduced to practice (id. (i-fi-f 4, 7)). Therefore, as pertinent to
this proceeding, to be effective against the cited prior art reference, an
affidavit or declaration under 3 7 C.F .R. § 1.131 must show conception of the
claimed invention prior to the effective prior art date of the Diigo512
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reference (here, May 12, 2006) and due diligence in reducing the claimed
invention to practice from a date immediately prior to the effective date of
the reference up to the date of actual or constructive reduction to practice. In
re Steed, 802 F.3d 1311, 1317 (Fed. Cir. 2015) ("Issues of diligence concern
the period just preceding the effective date of the adverse reference, to the
actual or constructive reduction to practice.").)
Conception and Reduction to Practice
The Examiner appears to have accepted Appellant's evidence of
conception of the invention prior to the May 12, 2006 effective date of the
Diigo512 reference. (See Final Act. 18-19; Ans. 18-20.) Thus, the
Examiner's findings and explanations are focused on Appellant's diligence
in reducing the invention to practice. (Id.) Accordingly, we do not examine
the Declaration to ascertain whether it adequately demonstrates conception
of the claimed invention prior to the May 12, 2006 effective date of
Diigo512, and express no opinion as to the adequacy of any such showing.
Appellant relies on a constructive reduction to practice in the filing of
a provisional patent application, Serial No. 60/815,467, on June 22, 2006,
from which the present application claims priority. (Id. (i-f 4); see also Spec.
i-f l ). ). The Examiner appears to have accepted that the invention was
constructively reduced to practice by the filing of the provisional
application. Accordingly, we do not examine the provisional application to
ascertain whether it represents a constructive reduction to practice of the
claimed invention, and express no opinion in that regard.
Diligence in Reduction to Practice
Diligence in actually or constructively reducing an invention to
practice is a determination of fact. In re Jolley, 308 F.3d 1317, 1329 (Fed.
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Cir. 2002) (citing Martus & Becker v. Heise, 39 F.2d 715, 717 (CCPA
1930)); see also Steed, 802 F.3d at 1317 ("Diligence turns on the factual
record .... ").) Diligence towards actual reduction to practice and diligence
towards constructive reduction to practice may be combined. Griffith v.
Kanamaru, 816 F.2d 624, 626 (Fed. Cir. 1987). Diligence must be shown
throughout the entire critical period. Monsanto Co. v. Mycogen Plant
Science Inc., 261F.3d1356, 1369 (Fed. Cir. 2001) (quoting, e.g., Fitzgerald
v. Arbib, 268 F.2d 763, 766 (CCPA 1959)). However, "there need not
necessarily be evidence of activity on every single day if a satisfactory
explanation is evidenced." Monsanto Co. v. Mycogen Plant Science Inc.,
261F.3d1356, 1369 (Fed. Cir. 2001) (emphasis added). Where the
declaration merely places the acts within a stated time period, the inventor
has not established a date for his activities earlier than the last day of that
period. Oka v. Youssejj;eh, 849 F.2d 581, 584 (Fed. Cir. 1988).
In finding the Declaration ineffective to overcome the Diigo512
reference, the Examiner explains "there is no evidence submitted to show of
a continuous directed effort, and timeliness from the date of conception to
the date of the prior art reference date." (Final Act. 19 (emphasis added);
see also Ans. 19.) The Examiner explains "[t]he email communications time
stamped after 05/12/2006 [the effective date ofDiigo512] are not relevant
because they are subsequent to the prior art date." (Ans. 20 (emphasis
added).) Thus, the Examiner analyzes the evidence of activity prior to the
effective date of the Diigo512 reference, expressly disregards all evidence
dated subsequent to that date as not being relevant (Ans. 19-20), and
concludes as follows: "Based on the above analysis, the evidence submitted
is insufficient to establish diligence from a date prior to the date of reduction
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to practice of the Diigo512 reference to either a constructive reduction to
practice or an actual reduction to practice." (Ans. 20.) The Examiner
articulates the correct standard, i.e., that the relevant time period is from
immediately prior to the May 12, 2006 effective date of the Diigo512
reference until the June 22, 2006 constructive reduction to practice. See
Steed, 802 F.3d at 1317. However, the Examiner looks only to evidence
before the effective date ofDiigo512 and expressly disregards all evidence
after the May 12, 2006 effective date ofDiigo512. (See Ans. 19-20.)
The Examiner's analysis is flawed because the Examiner does not
apply the standard articulated by the Examiner. Nevertheless, despite the
errors in the Examiner's analysis, we agree with the Examiner's finding that
the Declaration (including evidence in the Briefs) fails to establish due
diligence in reducing the claimed invention to practice from a time
immediately prior to May 12, 2006 until June 22, 2006. (See Ans. 19.)
We look to the evidence of activity from May 11, 2006 through June
22, 2006 (the "critical period"), to identify evidence of diligence in reducing
the claimed invention to practice. We only consider evidence of activity
before or after the critical period to the extent that it demonstrates activity
during the critical period.
The filing of the provisional patent application (App. Br. 11 (item 1))
is the constructive reduction to practice relied on by Appellant (Deel. 1-2
(i-f 4)) and is not, itself, evidence of diligence during the critical period.
The evidence of diligence during the critical period and the periods of
apparent inactivity are as follows (all dates are in 2006):
(i) May 12-May 14: Three days (one working day) of apparent
inactivity with no explanation provided.
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(ii) May 15 email from Rajesh Relan with attached resume (Deel. (Ex. C)
34--37).
(iii) May 16 - May 17: Two days of apparent inactivity with no
explanation provided.
(iv) May 18 email to info@persistensys.com (Deel. (Ex. C) 38-39).
(v) May 19-21: Three days (one working day) of apparent inactivity
with no explanation provided.
(vi) May 22 email from Sidharth Sujir (Deel. (Ex. C) 37-38).
(vii) May 23-May 28: Six days (four working days) of apparent inactivity
with no explanation provided.
(viii) May 29 email from Ellie Skeele (Deel. (Ex. C) 41--42, 44--46).
(ix) May 30 email from Ellie Skeele (Deel. (Ex. C) 40, 43--44).
(x) May 30 email from Ellie Skeele (Deel. (Ex. C) 39--40, 43).
(xi) May 31 email from Rabi Karmacharya (Deel. (Ex. C) 39, 42--43).
(xii) June 1 -June 3: Three days (two working days) of apparent inactivity
with no explanation provided.
(xiii) June 4 email to Kahlid Safwan (Deel. (Ex. C) 46).
(xiv) June 5 email from Nayyar \Vasay (Deel. (Ex. C) 46-47).
(xv) June 5 email to Nayyar Wasay (Deel. (Ex. C) 46).
(xvi) June 6: One day of apparent inactivity with no explanation provided.
(xvii) June 7 email from Nayyar Wasay (Deel. (Ex. C) 48-50).
(xviii)June 8: One day of apparent inactivity with no explanation provided.
(xix) June 9 email to Nayyar Wasay (Deel. (Ex. C) 47--48).
(xx) June 10-Jun 21: Twelve days (eight working days) of apparent
inactivity with no explanation provided.
(xxi) June 22: Provisional patent application filed.
(xxii) June 28 email from Imran Tamboli with attachment (Deel. (Ex. C)
51-54).
The evidence included in evidence items (ii), (iv), (vi), (viii}-(xi),
(xiii}-(xv), (xvii), and (xix) all appears to relate to attempts to identify and
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negotiate with potential employees or vendors capable of designing the
website or writing the software needed to reduce the invention to practice.
(See App. Br. 11-12 (items 3-7).) We find that such activity falls towards
the commercial end of "the conthmurn between, cm the one hand, ongoing
laboratory experimentation, and on the other hand, pure money-raising
activity that is entirely unrelated to practice of the process," Scott v. Koyama,
281 F.3d 1243, 1248 (Fed. Cir. 2002). Appellant does not point to any
evidence demonstrating that at any time during the critical period the
inventor, or employees or vendors working under the inventor's direction,
actually took steps towards reducing the invention to practice. Indeed,
Appellant does not point to any evidence that shows that any of the senders
or recipients of those items was retained to work towards reducing the
invention to practice. Appellant contends evidence item (vi) also relates to
"[ e ]xpending, and locating new sources of financial capital in order to
reduce the invention to practice." (App. Br. 13.) We see nothing in either
evidence item (vi) or evidence item (iv) indicating that financing was the
subject of the evidence. In any event, financing activities are not evidence
of diligence in reducing the invention to practice. See Scott, 281 F.3d at
1248 (Fed. Cir. 2002). Similarly, "[l]ocating corporate service providers to
build a business entity around the invention" (App. Br. 13 (item 9)) is not
activity directed at reducing the invention to actual or constructive practice.
Appellant asserts that the inventor engaged in "[a]ssigning, testing,
and guiding the software development efforts." (App. Br. 13 (item 10).)
However, Appellant points no specific evidence of such activity within the
critical period. See also Oka, 849 F.2d at 584. Evidence item (xxii)
indicates activity towards reducing the invention to practice. However,
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evidence item (xxii) was created after the critical period and we do not find
any indicia on the face of evidence item (xxii) that any of the described
activity took place within the critical period. Nor does Appellant submit any
evidence as to diligence during the critical period in preparing and filing the
provisional patent application.
In view of the lack of any indicia in the evidence of record of actual
activity (e.g., design, testing, or programming activities) during the critical
period directed towards actual reduction to practice, the lack of any evidence
of activities directed towards constructive reduction to practice, coupled
with the 31 days (20 working days) of inactivity, with no explanation or
excuse offered, in items (i), (iii), (v), (vii), (xii), (xvi), (xviii), and (xx)
above, we find Appellant has failed to demonstrate reasonable diligence in
reducing the invention to practice during the critical period.
We conclude that Appellant's Declaration does not remove Diigo512
as a reference available against claims 50-81. Appellant does not otherwise
traverse the rejections under 35 U.S.C. § 103(a). Accordingly, we sustain
the rejections of claims 50-81 over various combinations of Diigo512,
Marmor, MSWord, Burner, Oran, and Bates.
New Grounds of Rejection
The factual thrust of our analysis of the Declaration differs from the
Examiner's, in that we analyze different portions of the evidence from those
analyzed by the Examiner, albeit to reach the same ultimate conclusion.
Because Appellant has not previously had the opportunity to respond to this
analysis with argument, amendment, or new evidence, in the interests of
fairness we designate our affirmance of the rejections under 35 U.S.C.
§ 103(a) as new grounds of rejection.
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DECISION
The decision of the Examiner to reject claims 50-81 is affirmed.
We have designated our affirmance of the rejections of claims 50-81
under 35 U.S.C. § 103(a) as new grounds of rejection.
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, 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 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.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
37 C.F.R. § 41.50(b)
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