Ex Parte MIGLIO et alDownload PDFPatent Trials and Appeals BoardJun 17, 201914904628 - (D) (P.T.A.B. Jun. 17, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/904,628 01/12/2016 Roberta MIGLIO 22850 7590 06/19/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 464396US99PCT 1016 EXAMINER MARTIN, PAUL C ART UNIT PAPER NUMBER 1653 NOTIFICATION DATE DELIVERY MODE 06/19/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBER TA MIG LIO and STEP ANO P ALMERY Appeal2019-000854 Application 14/904,628 Technology Center 1600 Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1,2 under 35 U.S.C. § 134(a) involving claims to an integrated process for cultivating algae or plants and producing electric energy. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. 1 Appellants identify the Real Party in Interest as ENI S.P.A. (See App. Br. 2). 2 We have considered and herein refer to the Specification of January 12, 2016 ("Spec."); Final Office Action of March 12, 2018 ("Final Act."); Appeal Brief of August 14, 2018 ("App. Br."); Examiner's Answer of October 2, 2018 ("Ans."); and Reply Brief of November 13, 2018 ("Reply Br."). Appeal2019-000854 Application 14/904,628 Statement of the Case Background Plants and microalgae "exploit solar energy for photosynthesis ... however [] only a part of the solar energy is exploited for [] photosynthesis" (Spec. 4:23-26). "Processes for converting radiations of solar energy not exploited in photosynthesis into radiations that can be exploited by the same, with a consequent increase in the growth of microalgae and plants, are described in the art" (Spec. 4:26-30). "US 2011/0281295 describes an equipment for cultivating algae in the presence of natural light" using a "substrate comprising at least one luminescent compound capable of re- emitting radiations whose spectrum is adapted for optimizing the formation of a specific chemical compound from the photosynthesis of said algae" (Spec. 5:23---6:2). "[A] photovoltaic greenhouse is known, which incorporates one or more transparent silicon thin-film photovoltaic glass panes ... capable of enabling photosynthesis in plants and the contemporaneous production of electric energy" (Spec. 6:8-13). However, the bronze color of the photovoltaic glass panes has a negative impact on the photosynthesis of plants (see Spec. 6:15-23). "The Applicant has therefore considered the problem of finding an integrated system which enables the cultivation of algae or plants and the contemporaneous production of electric energy without negatively interfering with the growth of the same" (Spec. 6:24--29). 2 Appeal2019-000854 Application 14/904,628 The Claims Claims 1-3, 5, 6, 8, 12, 13, 15, and 19-27 are on appeal. Independent claim 1 is representative3 and reads as follows: 1. An integrated process for the contemporaneous cultivation of plants and the production of electric energy from the same radiation source, the process comprising: cultivating the plants by exposing them to said radiation source in a cultivation area comprising at least one luminescent solar concentrator comprising at least one photovoltaic cell positioned on at least one outer side thereof, said at least one luminescent solar concentrator being interposed between said cultivation area and said radiation source so as to totally or partially cover said cultivation area, to thereby obtain the plants and the electric energy; recovering the plants from the cultivation area; and recovering the electric energy from the at least one photovoltaic cell; wherein: the cultivation area is a greenhouse; and the electric energy recovered from the at least one photovoltaic cell is used in the cultivation of the plants, wherein the luminescent solar concentrator comprises at least one photoluminescent compound having an absorption range within the range of solar irradiation, capable of activating photosynthesis (Photosynthetically Active Radiations - PAR.s: 400 nm-700 nm) and an emission range capable of activating the photovoltaic cell, 3 Independent claim 2 is identical except that it relates to the cultivation of algae and not plants. 3 Appeal2019-000854 Application 14/904,628 wherein the luminescent solar concentrator further compnses a matrix made of transparent material selected from: transparent polymers and transparent glass, and wherein the at least one photoluminescent compound is present in or on the matrix of transparent material in an amount ranging from 0. 1 g per surface unit to 5 g per surface unit, said surface unit referring to a surface of the matrix expressed as m2. The Re} ection The Examiner has rejected claims 1-3, 5, 6, 8, 12, 13, 15, and 19-27 under 35 U.S.C. § 103 as obvious over Sylvestre4 and Carter5 (Final Act. 10). The Examiner finds Sylvestre teaches cultivating algae by covering the cultivation area with a luminescent solar concentrator ("LSC") having a at least one photoluminescent compound having an absorption range within the range of solar radiation, capable of activating photosynthesis (Final Act. 10-11 ). The Examiner finds Carter teaches an LSC for use in greenhouse and agricultural covers comprising a photoluminescent compound and a photovoltaic ("PV") cell "wherein the LSC is configured to produce power without harming (negatively interfering with) plant growth" (Final Act. 12, emphasis omitted). The Examiner acknowledges that Sylvestre does not teach "recovering [] and using the electric energy from the PV cell to cultivate [] plants or algae" (Final Act. 11 ). However, the Examiner concludes: 4 Sylvestre, US 2011/0281295 Al, published Nov. 17, 2011. 5 Carter et al., US 2014/035276 Al, published Dec. 4, 2014. 4 Appeal2019-000854 Application 14/904,628 It would have been further obvious to those of ordinary skill in the art before the effective filing date of the claimed invention to recover the generated power and apply it to the cultivation of the plants or algae because this would allow the use of nonsolar light sources ( such as grow lamps) to be used in times of little or no solar light without incurring additional power cost (Final Act. 13). Appellants contend "neither Sylvestre nor Carter disclose the recovery and use of electric energy from the photovoltaic cell to cultivate the plants and algae as recited in independent claims 1 and 2" (App. Br. 10). Appellants contend "[b] ecause there is no suggestion of all of the claimed limitations, there is no prima facie case of obviousness" (id.). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that the combined prior art teaches or suggests all the elements of the claims? Principles of Law "[W]hile an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion." Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). Analysis We are persuaded by Appellants' argument. The Examiner provides no specific teaching or suggestion of recovering and using electric energy from the PV cell to cultivate plants or algae. Although "common sense can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation .... 5 Appeal2019-000854 Application 14/904,628 [T]his is particularly true where the missing limitation goes to the heart of an invention." Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016). Conclusion of Law The evidence of record does not support the Examiner's conclusion that Sylvestre and Carter teach or suggest using the electric energy recovered from at least one PV cell in the cultivation of plants ( claim 1) or algae ( claim 2). Accordingly, we do not sustain the Examiner's rejection. New Ground of Rejection Under the provisions of 3 7 C.F .R. § 41. 50(b ), we enter the following new ground of rejection. Claims 1-3, 5, 6, 8, 12, 13, 15, and 19-27 are rejected under 35 U.S.C. § 103 as obvious over Sylvestre, Carter, and Chuang. 6 Findings of Fact 1. Sylvestre teaches: a device for algae cultivation under natural light comprising an enclosure with a cultivation medium and algae to cultivate, wherein said device comprises additionally a substrate to receive solar radiation in order to photo convert said solar radiation, said substrate comprising at least one luminescent compound enabling the reemission of a radiation whose spectrum is adapted to the optimization of a biological parameter of interest resulting from the [] algae photosynthesis . . . [wherein] the substrate is interposed between incident solar radiation and the enclosure (Sylvestre ,r,r 21, 22). 6 Chuang et al., US 2012/0198763 Al, published Aug. 9, 2012. 6 Appeal2019-000854 Application 14/904,628 2. Sylvestre teaches "[t]he luminescent compounds used can be chosen from ... Lumogen 083 perylene (BASF) ... Lumogen 305 peylene [sic] (BASF)" (Sylvestre ,r,r 57, 65, 68). 3. Sylvestre teaches "[c]oncentrations used vary preferentially between 0.1 and 1,000 ppm, preferentially between 1 and 100 ppm" (Sylvestre ,r 79). 4. Sylvestre teaches "[t]he substrate within which the luminescent compounds are integrated is a plastic, for example acrylic [] plastic such as polymethylmethacrylate (PMMA)" (Sylvestre ,r 83). 5. Sylvestre teaches an embodiment of a tubular photobioreactor, which includes luminescent compounds in the walls, and "integrates pumps and a system to inject concentrated carbon dioxide" (Sylvestre ,r 105). 6. Sylvestre teaches using an LSC to modify sunlight leads "to an advantageous modification of the temperature profile" by decreasing the daily temperature and increasing the nightly temperature (Sylvestre ,r 93). 7. Sylvestre teaches using algae to convert sunlight energy into storable and modifiable biofuels, as opposed to photovoltaic electricity which is "difficult to store" and needs to be utilized as soon as it is produced (see Sylvestre ,r 15). 8. Carter teaches "luminescent solar collectors which have an absorption and optical [sic] designed for both plant growth and power production for applications involving plant growth under windows having LSCs, including greenhouses ... and agricultural covers" (Carter ,r 5). 9. Carter teaches the "ratio of absorption in each band is chosen for optimum photosynthesis and plant growth. The polymer layer is designed to transmit the radiated light to the light energy converter and wherein the light energy converter is optically coupled to the luminescent sheet" (Carter ,r 6). 7 Appeal2019-000854 Application 14/904,628 10. Carter teaches adding a sheet of IR-emitting material, a diffuser, or an IR-absorber/reflector to further improve efficiency and plant growth while reducing cooling costs (Carter ,r 10). 11. Carter teaches the "light-energy converter is typically a photovoltaic (PV) .... The photovoltaic is cut into strips that can be mounted either on the edge, or perpendicular, to the luminescent sheet (the standard LSC configuration) or on the front or parallel to the luminescent sheet" (Carter i1 42). 12. Figure 2 of Carter is reproduced below: Fig. 2 204 202 202 205 Figure 2 of Carter shows "a representative example of an LSC architecture where the PV cell is attached to a rigid frame that is non-transparent" including PV 203, luminescent sheet 204 and rigid frame 205 (Carter ,r 28). 13. Carter teaches "[c]onnectors are added to the light energy converter so that the electricity generated can be externally harnessed" (Carter ,r 34). 14. Carter teaches "[t]he individual strips of photovoltaic cells are wired in series or parallel with the wires coming out of the LSC package so they can be easily connected to" (Carter ,r 43). 15. Carter teaches: The ideal fluorescent material for the luminescent sheet has [] a fluorescent dye with a quantum yield greater than 50% and emits a majority of its photons between 600 and 690 nm, where chlorophyll a and b are most active. The fluorescent dye is also 8 Appeal2019-000854 Application 14/904,628 chosen to minimize overlap between the absorption spectra and fluorescence spectra as well as to minimize the absorption of light that is absorbed by chloropyll [sic] a and b (between 410 and 490 nm and between 620 and 680 nm) while maximizing the light absorption in the remaining portions of the solar spectrum (i.e., 380 to 410 nm, 490 to 620 nm, and 680 nm to 780 nm) ( Carter ,r 3 6). 16. Carter teaches "[t]he dye can be diluted into the polymer host to maximize the photoluminescence efficiency .... We observe an optimal range for the luminescent dye Lumogen 305 between 0.2% and 0.001 %, which depends both on the absorption coefficient of the dye and the thickness of the luminescent sheet" (Carter ,r 37). 17. Carter teaches: The typical upper, lower and near optimal absorptions for the luminescent Lumogen 305 dye to optimize both power production and plant growth is shown in FIG. 5 and further described in Table 1. These results are for dye diffused into a 3 mm thick acrylic substrate with concentration ranging from 0.0086% (238 F) to 0.0032% (265 F) LR305 in PMMA. Similar results have been obtained in luminescent sheets that are 500 micron thick and below 100 microns thick, with the concentration scaling according to Beer's law. (Carter ,r 38). 18. Chuang teaches a PV greenhouse with at least one thin-film solar cell module mounted on the roof (Chuang ,r 13). 19. Chuang teaches the "thin-film solar cell module is useful in converting solar energy within a pre-selected light band of sunlight into electricity and simultaneously the light which is not absorbed by the thin- 9 Appeal2019-000854 Application 14/904,628 film solar cell module ... can be utilized by plants or crops for photosynthesis" (Chuang ,r 13). 20. Chuang teaches the greenhouse may include ventilation fans, LED lights, and an auto-sprinkling system (Chuang ,r,r 23-24). 21. Chuang teaches: All the electronic equipment[], such as the ventilation fan, a cooling apparatus, the heater, a humidifier, the sprinkler, the LED light, in the photovoltaic greenhouse 1 may be powered by the thin-film solar cell module 20. In addition to the energy- saving, light-band-modifying, self-supportive advantageous, the photovoltaic greenhouse 1 of the present invention may serve as a power plant .... (Chuang ,r 30). Principles of Law "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious," the answer depends on "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417. "[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." In re Aller, 220 F.2d 454, 456 (CCPA 1955). Analysis Our analysis substantially relies upon Sylvestre and Carter as explained by the Examiner in the Final Office Action, adding Chuang to address the requirement in claim 1 that "the electric energy recovered from 10 Appeal2019-000854 Application 14/904,628 the at least one photovoltaic cell is used in the cultivation of the plants." Because our reasoning is otherwise substantially the same as that of the Examiner, we will address Appellants' arguments, insofar as they remain applicable to this rejection. We begin our analysis with claim construction. Appellants argue that the Specification "defines 'outer side' with respect to the positioning of the photovoltaic cell on at least one outer side of the luminescent solar concentrator rather that the position of the LSC relative to the incident radiation" (App. Br. 20-21 ). Appellants argue that "when construed consistent with the specification, the broadest reasonable interpretation of 'outer sides' is the peripheral portions of the luminescent solar concentrator" (App. Br. 22, citing Spec. 1:8-16; 6:29-7:5). Appellants present the following diagram to support their interpretation of "outer side" in the Appeal Brief: Appeal Brief Figure 3 shows an LSC interposed between a cultivation area and a radiation source, having four outer sides being the peripheral portions of the LSC. 11 Appeal2019-000854 Application 14/904,628 (Id.) We agree with Appellants' proposed interpretation of the "outer side" as the peripheral portions of the LSC. However, we do not agree that this interpretation distinguishes the claims from the prior art. We find that Carter teaches mounting photovoltaic cells on the edge, or peripheral portion, of the LSC (FFs 11, 12). Appellants argue that Carter teaches away from the outer side by suggesting that the front active face of the PV cell is attached parallel to the surface of the luminescent sheet (App. Br. 29). However, "[t]he prior art's mere disclosure of more than one alternative does not constitute a teaching away from ... alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Carter teaches multiple alternatives for mounting photovoltaic cells, expressly including "on the edge" of the LSC (FF 11 ). Therefore, we find the prior art teaches "at least one luminescent solar concentrator comprising at least one photovoltaic cell positioned on at least one outer side thereof." Chuang teaches a greenhouse which recovers electric energy from the sun and uses the energy to cultivate plants in the greenhouse by powering electrical equipment, e.g., ventilation fan, cooling apparatus, and sprinkler (FFs 18-20). Sylvestre (FF 6) and Carter (FF 10) teach a need for cooling in algae and plant cultivation, respectively. We find that it would have been obvious to the person of ordinary at the time the invention was made to improve the cultivation of algae (Sylvestre) or plants (Carter) using the generated PV electrical energy to power equipment such as a ventilation fan, cooling apparatus, and sprinkler as taught by Chuang for benefits identified by Chuang including energy savings and the ability of the system to be self- 12 Appeal2019-000854 Application 14/904,628 supporting (FF 21 ). We find the improvement would have been the predictable use of prior art elements according to their established functions. Therefore, we find the combined prior art teaches "the electric energy recovered from the at least one photovoltaic cell is used in the cultivation of the plants." Appellants argue Sylvestre teaches away from using PV s in combination with an LSC for algae cultivation (App. Br. 8-9). In particular, Appellants cite to Sylvestre's contrast ofbiofuels with PVs which produce electricity that is difficult to store and needs to be utilized as soon as it is produced (see App. Br. 11, citing Sylvestre ,r 15). We are not persuaded that Sylvestre teaches away from combining the LSC with a PV cell. "Although statements limiting the function or capability of a prior art device require fair consideration, simplicity of the prior art is rarely a characteristic that weighs against obviousness of a more complicated device with added function." In re Dance, 160 F.3d 1339, 1344 (Fed. Cir. 1998). Here, Sylvestre teaches biofuels are a superior method of recovering and storing solar energy as compared to PV cells, not against recovering PV electricity for reuse in cultivation (see FF 7). Sylvestre does not teach away from using electricity for cultivation as Sylvestre includes an embodiment which utilizes a pump for cultivation (see FF 5). Sylvestre also teaches the need for temperature regulation for cultivating algae (see FF 6). Given that the combination of Carter and Chuang teaches devices for recovering solar energy and using that energy to power cultivating equipment, "there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination," even if it 13 Appeal2019-000854 Application 14/904,628 is not the most desirable combination available. See In re Fulton, 391 F.3d at 1200 (emphasis omitted). Sylvestre teaches the concentration of at least one photoluminescent compound present in a plastic substrate varies preferentially between 1 and 100 ppm (0.0001 % and 0.01 %) (FF 3). Carter teaches an optimal range for the luminescent dye between 0.001 % and 0.2% (10 ppm and 2000 ppm) in order to maximize photoluminescence efficiency (FF 16). The Examiner finds: While the cited prior art does not teach wherein the photoluminescent compound is present in the LSC in an amount ranging from 0.1 g per surface unit to 3 or 5 g per surface unit, the differences in concentration between the cited prior art and that of the instant invention are not sufficient to provoke nonobviousness in the absence of a showing of criticality of the claimed concentration range. (Final Act. 14). Appellants argue that the Examiner errs in finding the differences in concentration of photo luminescent compound "are not sufficient to provoke nonobviousness in the absence of showing criticality of the claimed concentration range" (App. Br. 13). Appellants argue that "neither Sylvestre nor Carter recognize the concentration per surface unit to be a result- effective variable and Appellant has shown the claimed range is unexpectedly advantageous for the cultivation of algae or plants and the contemporaneous production of electric energy" (App. Br. 13-14). We are not persuaded by Appellants' argument. Carter teaches that the concentration of photo luminescent compounds can be optimized for "both power production and plant growth" (see FFs 16, 17). Therefore, the art teaches the concentration of photo luminescent compounds is a result- 14 Appeal2019-000854 Application 14/904,628 effective variable. We do not find the recitation of "concentration per surface unit" to be a distinguishing limitation of the claims as "a claim to a product does not become nonobvious simply because the patent specification provides a more comprehensive explication of the known relationships between the variables and the affected properties." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (prior art disclosed number of grooves per area rather than the claimed groove width). The prior art provides a range of concentration of photo luminescent compounds in the LSC (10 to 2000 ppm). The concentration range overlaps the concentration used in the Examples provided in the Specification, e.g., 100 ppm (Example 1) and 200 ppm (Example 2), which are encompassed by the claimed range (see Spec. 17:27-18:24). A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Applied Materials, Inc., 692 F.3d at 1295. Accordingly, we determine the claims are prima facie obvious over the combination of Sylvestre, Carter, and Chuang. Appellants submit a Declaration from Roberta Miglio under 37 C.F.R. § 1.132 dated Feb. 22, 2018, as evidence of unexpected results (App. Br. 17). Appellants argue: From the Examples submitted in the Miglio Declaration and those in the original application, it emerges that at concentrations above 5 g per m2 of surface, the amount (%) of blue light of the spectrum is reduced such that there is a serious slowing effect on the algal growth. On the other hand, when the concentration of the dye is less than 0.1 g per m2 of surface, the amount of light convertible into electricity is too small to be exploited. "Consequently, there is a defined range of dye concentration per m2 of surface in the luminescent solar concentrator (LSC) which is an amount ranging from 0.1 g per surface unit to 5 g per surface unit, said surface unit referring to 15 Appeal2019-000854 Application 14/904,628 a surface of the matrix expressed as m2, that is especially and unexpectedly advantageous for the simultaneous production of electricity and growth of algae or more generally of green plants." (App. Br. 18-19). In their discussion of the concentration of luminescent compounds, Appellants contrast their Examples with Carter, which "shows the negative impact on the efficiency ... for luminescent dye concentrations where absorption over the visible spectrum has not been optimized for plant growth." (App. Br. 16, emphasis added). We are not persuaded by Appellants' submitted evidence of unexpected results. "To be particularly probative, evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by one of ordinary skill in the art at the time of the invention." Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). Appellants' comparison to Carter is against a spectrum that has not been optimized for plant growth, and therefore is not a comparison to the closest prior art. Moreover, Carter teaches that the concentration of luminescent compound may be optimized for both power production and plant growth (see FFs 15-17). That Appellants have identified optimal concentrations of luminescent compounds overlapping the concentration range of Carter is neither surprising nor unexpected. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Therefore, we conclude that Appellants' evidence does not overcome prima facie obviousness over the prior art. With respect to the dependent claims (3, 5, 6, 8, 12, 13, 15, and 19- 27), we adopt the Examiner's reasoning and findings of fact as modified by 16 Appeal2019-000854 Application 14/904,628 Chuang (see Final Act. 10-14). Accordingly, we conclude that claims 1-3, 5, 6, 8, 12, 13, 15, and 19-27 would have been obvious to a person of ordinary skill in the art at the time the invention was made over Sylvestre, Carter, and Chuang. SUMMARY In summary, we reverse the rejection of claims 1-3, 5, 6, 8, 12, 13, 15, and 19-27 as obvious over Sylvestre and Carter. Weenteranewgroundofrejectionofclaims 1-3, 5, 6, 8, 12, 13, 15, and 19-27 as obvious over Sylvestre, Carter, and Chuang. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 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. 17 Appeal2019-000854 Application 14/904,628 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. REVERSED; 37 C.F.R. § 4I.50(b) 18 Copy with citationCopy as parenthetical citation