Ali Sadighian et al.

Patent Trials and Appeals Board

Sep 26, 2019

14579567 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/579,567 12/22/2014 Ali Sadighian 090204-0925468
(086500US)
3340
107508 7590 09/30/2019
Kilpatrick Townsend & Stockton LLP/ Amazon, Inc
Mailstop: IP Docketing 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
ATI-Patents@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALI SADIGHIAN, EHSAN AMIRI,
HERNAN P. AWAD, DEEPAK BHATIA,
TOLGA HAN SEYHAN, and
NICHOLAS DEMING SHERMAN1
____________________

Appeal 2019-000600
Application 14/579,567
Technology Center 3600
____________________

Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).

We AFFIRM and designate our affirmance of certain claims as a
NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).

1 The Appeal Brief indicates that Amazon Technologies, Inc., Appellant, is
the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to sharing inventory between ordering
channels based on specific parameters. Spec. ¶ 18. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A computer-implemented method for generating, at
a particular point in time, a decision to store during a planning
horizon occurring after the particular point in time, units of an
item in storage associated with an electronic marketplace,
comprising:
receiving, by an inventory management system, data
associated with a regular channel and a subscription channel,
wherein:
the regular channel enables a regular order to be
placed, at any point in time, for at least one unit of the item
from the storage,
the subscription channel enables a subscription to
be placed for the item from the storage,
the regular channel and the subscription channel
share the storage that stores the units of the item, and
the inventory management system controls
decisions about inventorying the item in the storage;
computing, by the inventory management system based at
least in part on the data received, a first quantity of the units of
the item based at least in part on an expected regular order to be
placed at the regular channel during the planning horizon;
generating, by the inventory management system, a
subscription order for at least one unit of the item, wherein the
subscription order is generated ahead of the particular point in
time based at least in part on a look ahead window associated
with the subscription channel, wherein
the look ahead window specifies a time period
during which subscription orders can be placed on behalf
of corresponding subscribed customers, and
the time period occurs prior to the particular point
in time for generating the decision to store, during the
planning horizon, the units of the item;
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computing, by the inventory management system, a
second quantity of the units of the item based at least in part on
the planning horizon and on the subscription order;
estimating, by the computer system, a loss from one or
more canceled subscription orders expected during the planning
horizon, the loss estimated based at least in part on the look ahead
window; and
generating, by the inventory management system at the
particular point in time occurring after the subscription order has
been generated, the decision to store the units of the item in the
storage, the decision generated based at least in part on the loss,
the first quantity, and the second quantity and reducing the loss
based at least in part on increasing a total of the first quantity and
the second quantity, and the decision causing the units of the item
to be stored in the storage in support of shared usage of the
storage by the regular channel and the subscription channel
during the planning horizon.

REJECTIONS
I. Claims 1–20 are rejected under 35 U.5.C. § 101 as being
directed to patent ineligible subject matter.
II. Claims 1–4 are rejected under 35 U.5.C. § 112(b) as being
indefinite.

OPINION
Rejection I, Eligibility
Appellant makes arguments for the patent eligibility of claims 1–20 as
a group. See Appeal Br. 5–14. We select claim 1 as the representative
claim, and claims 2–20 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. §101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. See Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
Id. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, at 219–20; Bilski, 561 U.S. at 611); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental
processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 184 n. 7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, at 221 (quotation marks omitted). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].”’ Id. ((alteration in the original) quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January of 2019, the PTO published revised guidance on the
application of §101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Memorandum”).
Under Step 2A of that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, in Step
2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Memorandum.

Step 1 -- Statutory Category
Claim 1 recites a series of steps, and, therefore, is a process. See
Appeal Br. 15 (Claims App.). Claim 5 recites a non-transitory computer
readable storage medium and claim 14 recites a system, and, therefore, these
claims recite products. See id. at 16 and 20.

Step 2A, Prong One -- Recitation of Judicial Exception
In determining that claims 1–20 are directed to a judicial exception to
patent eligibility, without significantly more, the Examiner takes the position
that these claims are directed to a mathematical formula, namely, “an
algorithm for calculating an inventory quantity,” or a mental process that
“could be performed by a human with pen and paper, and without any
apparatus.” Final Act. 5–6.
Appellant does not specifically contest whether the claims are directed
to an abstract idea, and instead, argues that, to the extent “the claims are
directed to the alleged abstract idea,” the claims include additional
limitations that “when viewed as an ordered combination, are significantly
more than the alleged abstract idea.” Appeal Br. 9.
Claim 1 recites the steps of 1) “receiving … data associated with a
regular channel and a subscription channel,” 2) “computing … based at least
in part on the data received, a first quantity of the units of the item,” 3)
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“generating … a subscription order for at least one unit of the item,” 4)
“computing … a second quantity of the units of the item, 5) estimating … a
loss from one or more canceled subscription orders,” and 6) “generating …
the decision to store the units of the item in the storage, the decision
generated based at least in part on the loss, the first quantity, and the second
quantity.” Appeal Br. 15–16 (Claims App.).
These steps involve receiving and analyzing of data. Indeed, two of
these steps explicitly recite the process of “computing,” and one recites the
process of “estimating.” In the context of claim 1, this language amounts to
reciting a mental process of evaluating. See In re BRCA1 & BRCA2-Based
Heredity Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014); see
also Memorandum at 52 (defining mental processes as “concepts performed
in the human mind (including an observation, evaluation, judgment,
opinion” (footnote omitted)). Thus, we agree with the Examiner that claim 1
recites a mental process, and is within one of the three categories of abstract
ideas set forth in the Memorandum. Accordingly, the outcome of our
analysis under Step 2A, prong 1, requires us to proceed to Step 2A, prong 2.
See Memorandum, 84 Fed. Reg. at 54.

Step 2A, Prong 2 -- Integrated Into a Practical Application
If a claim recites a judicial exception, then, in Prong Two, we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
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See Memorandum. This evaluation requires an additional element or a
combination of additional elements in the claim to apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the exception. See id.
Appellant contends that claim 1 improves upon the technology of
“inventory management (e.g., the tracking and management via computing
resources of the flow of items in, within, and out of storage space).” Appeal
Br. 9 (citing Spec. ¶ 17). Appellant argues that claim 1 recites an
improvement of the prior art. See id. at 9–11 (citing BASCOM Global
Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
Specifically Appellant asserts that by using the claimed system, “it is now
possible to use a single inventory management system for inventory shared
between two ordering channels of different characteristics, while avoiding
the problem of inventory cannibalization.” Id. at 11. According to
Appellant, this was not possible previously because the prior art “relied on
treating each channel separately and using two different inventory
management systems.” Id.; see also Reply Br. 7–9.
The Examiner responds that, “unlike Bascom, any purported
improvement to the inventory management system is not related to a
particular computer arrangement of hardware, but rather, related to the
abstract algorithm used to determine an optimal inventory.” Ans. 11.
Appellant argues that the claims recite additional elements beyond the
alleged abstract idea that “amount to inventive programming because they
relate to a solution to a technological problem.” Reply Br. 9.
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We disagree with Appellant’s contentions regarding the alleged
“technological” improvement provided by the method of claim 1.
Appellant’s Specification discloses that “inventory 120 may represent a
warehouse, a fulfillment center, a data center, a content distribution center,
or some other storage resource for storing items.” Spec. ¶ 23. “An item
may represent a tangible item (e.g., consumer goods such as diapers) or an
intangible item (e.g., a service, a multimedia content stored on a computer
memory). Typically, an inventory management system may control
operations of the inventory 120.” Id.; Figs. 4 and 5. “In an example, the
inventory management system 416 may represent a computing resource or
computing service independent of but interfacing with computing resources
or computing services of the electronic marketplace 412.” Id. at ¶ 52.
Computing resources “may be any type of computing devices such as, but
not limited to, a mobile phone, a smart phone, a personal digital assistant
(PDA), a laptop computer, a thin-client device, a tablet PC, etc.” Spec. ¶ 57.
Computing devices “may also include input/output (I/0) device(s) and/or
ports, such as for enabling connection with a keyboard, a mouse, a pen, a
voice input device, a touch input device, a display, speakers, a printer, etc.”
Id. The Specification also discloses that computing devices “may also
include at least one or more processing units (or processor device(s)) 514
and one memory 516.” Id. at 58. “The processor device(s) 514 may be
implemented as appropriate in hardware, computer-executable instructions,
firmware, or combinations thereof,” and “may include computer-executable
or machine-executable instructions written in any suitable programming
language to perform the various functions described.” Id. The “memory
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516 may be volatile (such as random access memory (RAM)) and/or non-
volatile (such as read-only memory (ROM), flash memory, etc.).” Id. at 59.
We agree with the Examiner that “Appellant has provided no
explanation as to why the same computer with the same computing
resources could not be used for either implementation.” Ans. 10. Thus, the
alleged improvement provide by the method recited in claim 1 relates to the
non-technical process of inventory management, not in the computing
resources used to implement that process. That is, although “computing
efficiency and use of computing resources (e.g., processor device usage,
memory usage, database usage for tracking and updating inventory) may be
improved with the second implementation” (see Spec. ¶ 30), “relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.” See OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Appellant’s reliance on BASCOM is also misplaced. The Federal
Circuit recognized that Bascom’s installation of an Internet content filter at a
particular network location is “a technical improvement over prior art ways
of filtering such content” because such an arrangement advantageously
allows the Internet content filter to have “both the benefits of a filter on a
local computer and the benefits of a filter on the ISP server” and “give[s]
users the ability to customize filtering for their individual network
accounts.” BASCOM, 827 F.3d at 1350, 1352 (emphasis added). According
to the panel, Bascom’s claims “do not preempt the use of the abstract idea of
filtering content on the Internet or on generic computer components
performing conventional activities.” Id. Instead, Bascom’s claims “carve
out a specific location for the filtering system (a remote ISP server) and
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require the filtering system to give users the ability to customize filtering for
their individual network accounts.” Id.
In contrast to Bascom, Appellant’s claims and Specification are “not
related to a particular computer arrangement of hardware, but rather, related
to the abstract algorithm used to determine an optimal inventory number
based on a set of variable parameters, to find an optimum solution that best
reduces lost profits and maintains a desired service level.” Ans. 11.
Contrary to Appellant’s assertion, “the tracking and management via
computing resources of the flow of items in, within, and out of storage
space” (Appeal Br. 9) is not rooted in computer technology. Nor does it (1)
provide any technical solution to a technical problem as required by DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); (2)
provide any particular practical application as required by Bascom; or (3)
entail an unconventional technological solution to a technological problem
as required by Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2016). Rather, as recognized by the Examiner, there is no
indication that the claims provide any “improvement to the computer.” Ans.
11.
Indeed, the only additional elements recited merely implement the
abstract idea on generic computing elements (i.e., computer system, memory
device, and processors, shown in Figures 4 and 5). Such a method (or
system), as recited here, does not provide a particular transformation (or
particular machine). Rather, the use of a generic computer device does not
alone transform an otherwise abstract idea into patent-eligible subject
matter. As our reviewing court has observed, “after Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
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otherwise ineligible claim patent-eligible.” DDR, 773 F.3d at 1256 (citing
Alice, 573 U.S. at 223). In summary, claim 1 does not integrate the recited
judicial exception into a practical application. Thus, we proceed to step 2B.

Step 2B Well-Understood, Routine, Conventional Activity
In Step 2B, we determine whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field. See Memorandum.
Appellant argues that “the Examiner fails to identify any evidence at
step 2B of the Alice analysis of the alleged ‘conventional’ nature of the
ordered combination of the additional claims elements.” Appeal Br. 13,
Reply Br. 12. Specifically, Appellant asserts that “additional claim elements
. . . relate to inventive programming, as described in the specification at
least at paragraphs [0029]–[0034].” Reply Br. 12.
We disagree because Appellant’s Specification (paragraphs 29–34)
identifies the computing resources generically and identifies that the
algorithm of the invention shown in Figures 6 and 7, although “reducing the
use of computing resources,” can be performed merely by using “computing
resources (e.g., processor device usage, memory usage, database usage for
tracking and updating inventory)” (Spec. ¶ 30), thus indicating that
implementation of the abstract idea is performed using known computers.
Although we agree claim 1 recites numerous process steps implemented on a
computer, the majority of these steps are steps that are part of the abstract
idea recited in claim 1. Claim 1 does not recite anything significantly more
than executing this abstract idea on a generic computing system.
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We have considered all of Appellant’s arguments in support of the
patent eligibility of claim 1, but find them unpersuasive. Independent claim
5 (computer-readable storage media) and independent claim 14 (system) fall
with claim 1.
As to dependent claims 2–4, 6–13, and 15–20, Appellant asserts that
no analysis is provided “for why the Examiner finds the dependent claims to
be subject matter ineligible.” Appeal Br. 14; see also Reply Br. 13. The
Examiner’s discussion of the dependent claims groups them with each
respective independent claim. See Final Act. 3, 7–8.
Appellant provides no substantive explanation as to how any of the
dependent claims recites something significantly more than the mental
process recited in its respective independent claim. See Appeal Br. 14. We
agree with the Examiner “the computer elements (i.e., ‘the inventory
management system’ of claims 1–4, ‘the non-transitory computer-readable
storage media’ of claims 5–13, and the ‘memory’ and ‘processor’ of claims
14–20) are merely recited with a high level of generality.” Final Act. 7.
Moreover, the specific limitations recited in the dependent claims
merely expand upon the abstract idea set forth in the corresponding
independent claims without adding anything significantly more. For
example, claim 2 excludes certain units of the item from being reserved for
either the subscription channel or regular channel. Creating such an internal
designation in an inventory management system is merely an extension of
the mental process of evaluating recited in independent claim 1. Claim 3
further defines “generating the decision” to include “comparing” and
“adjusting,” which are also merely extensions of the mental process
discussed above regarding claim 1. Claim 4 recites computing an
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adjustment to the total quantity to meet a threshold, and claim 6 recites
“setting,” “estimating” and “determining,” which limitations are also merely
extensions of a mental process of evaluating as discussed above regarding
claim 1. In claim 7, a quantity of items is adjusted based on the service
level, in claim 8, orders are generated based on a period of peak demand,
and in claim 9, orders are based on quality of service, each of which is an
extension of the mental process of claim 1, executed on the computer-
readable storage media of claim 5. Claims 10, 11, 12, and 13 include at least
one of “setting,” “computing,” “providing,” “generating,” and “determining”
which limitations are also merely extensions of the mental process discussed
above regarding claim 1, and executed on the computer-readable storage
media of claim 5. Similarly, claims 15 and 16 require the instructions to
“compute,” “generate”, and “determine,” variables associated with inventory
control, which are extensions of the mental process of claim 1, executed on
the processor of claim 14. The same description applies to claims 17 and 18,
which merely further extend the abstract idea by including adding, detecting,
and updating steps executed on the processor of claim 14. In claim 19,
orders are fulfilled during a given time period, which is an extension of the
abstract idea of claim 1, executed on the processor of claim 14. Claim 20
recites “estimating,” “determining,” and “is computed” which limitations are
extensions of the mental process discussed above in claim 1, and executed
on the processor of claim 14.
We see no technological improvement, improvement in the
functioning of a computer, particular machine, or transformation recited by
the corresponding independent claim, and Appellant does not contend that
any of these is recited. The dependent claims merely implement the abstract
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idea using known computers to perform generic computer functions such as
“setting,” “computing,” “providing,” and “generating,” and all of these
functions merely extend the abstract idea discussed above regarding claim 1.
Accordingly, we are not apprised of error in the Examiner’s determination
that dependent claims 2–4, 6–13, and 15–20 are patent-ineligible.
Accordingly, we sustain the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Because our conclusion is based on findings of fact and reasoning that differ
from and expand upon the rejection articulated by the Examiner, we
designate our affirmance of claims 2–4, 6–13, and 15–20 as a NEW
GROUND OF REJECTION under 37 C.F.R. § 41.50(b) to provide
Appellants with a full and fair opportunity to respond to the rejection. See In
re Biedermann, 733 F.3d 329, 336—337 (Fed. Cir. 2013) (Appellants are
entitled to a fair opportunity to react to the thrust of the rejection).
Rejection II
In rejecting claims 1–4 as indefinite, the Examiner finds that
Appellant inadvertently has “not amended one instance of the term
‘computer system’ in claim 1 (in the ‘estimating’ limitation). Consequently,
‘the computer system’ does not have proper antecedent basis.” Final Act. 8.
Appellant argues that “the scope of claim 1 is clear in light of the
previous amendments to claim 1 such that a person of ordinary skill in the
art would understand that ‘the computer system’ refers to the previously
amendments of ‘the inventory management system.’” Appeal Br. 14.
The Examiner responds that “the claim, on its face, is inconsistent and
confusing; one of ordinary skill in the art would not clearly understand what
computer system (if any) Applicant is referencing.” Ans. 15–16.
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Appellant’s argument is not persuasive. As the Examiner correctly
notes, any potential ambiguity should be resolved during prosecution. See
Ans. 15. The Specification supports the Examiner’s position that these
claims are unclear because it discloses that the “inventory management
system may compute, or some other computing system may compute and
provide [data] to the inventory management system.” Spec. ¶ 86. Because
claim 1 recites both “inventory management system” and “computing
system,” which, in light of the Specification, could be the same or different
systems, one of ordinary skill in the art would not understand to which
system Appellant refers. We sustain the Examiner’s rejection of claims 1–4
as indefinite.
DECISION
The Examiner’s decision rejecting claims 1–20 under 35 U.5.C. § 101
as being directed to non-statutory subject matter is affirmed, and we
designate our affirmance of the rejection of claims 2–4, 6–13, and 15–20 a
new ground of rejection.
The Examiner’s decision rejecting claims 1–4 under 35 U.5.C.
§ 112(b) as being indefinite is affirmed.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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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 the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C. F. R. § 41.50(b)