BASF SE

Patent Trials and Appeals Board

Nov 10, 2020

14780569 - (D) (P.T.A.B. Nov. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/780,569 09/28/2015 Zhenguo Liu 29827/I74833 6637
4743 7590 11/10/2020
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
HOCK, ELLEN SUZANNE
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
11/10/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZHENGUO LIU, DAI WATANABE,
HUI WANG, and SIMON KNIESEL
____________

Appeal 2020-000501
Application 14/780,569
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 6–12.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM IN PART and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies BASF SE as the real party in interest.
Appeal Brief filed May 29, 2019 (“Appeal Br.”) at 3.
2 Final Office Action entered October 5, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a method of forming a shaped article (independent
claim 6) and a shaped article (independent claim 9). Appeal Br. 7–8.
Independent claims 6 and 9 illustrate the subject matter on appeal, and read
as follows:
6. A method of forming a shaped article of a composition
consisting of
i) a polyalkylene terephthalate,
ii) a (polyalkylene isophthalate)-co-(polyalkylene
terephthalate),
iii) a polyalkylene terephthalate-reinforcing fiber, and
iv) optionally, one or more additives selected from the
group consisting of lubricants, thermal antioxidants, nucleating
agents, pigments, and combinations thereof,
wherein the alkylene in component i) is selected from the
group consisting of a methylene group, ethylene group,
propylene group, butylene group, and cyclohexene dimethylene
group, the alkylene in component ii) is selected from the group
consisting of methylene, ethylene, propylene, and butylene, and
the composition has a melting point in a range from 182°C to
220°C,
the method comprising:
melt-forming the composition together with one or more
additional thermoplastic materials to form the shaped article,
wherein at least one of the additional thermoplastic
materials is polyvinyl chloride, and
wherein the shaped article has a composite structure
between (i) the composition and (ii) the one or more additional
thermoplastic materials.

9. A shaped article comprising:
(a) a composition consisting of
i) a polyalkylene terephthalate,
ii) a (polyalkylene isophthalate)-co-(polyalkylene
terephthalate),
iii) a polyalkylene terephthalate-reinforcing
fiber, and
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iv) optionally, one or more additives selected from the
group consisting of lubricants, thermal antioxidants, nucleating
agents, pigments, and combinations thereof,
wherein the alkylene in component i) is selected from the
group consisting of methylene group, ethylene group, propylene
group, butylene group, and cyclohexene dimethylene group,
the alkylene in component ii) is selected from the group
consisting of methylene, ethylene, propylene, and butylene, and
the composition has a melting point in a range from 182°C to
220°C; and
(b) one or more additional thermoplastic materials, wherein
at least one of the additional thermoplastic materials is
polyvinyl chloride;
wherein the shaped article has a composite structure
between (i) the composition and (ii) the one or more additional
thermoplastic materials.

Appeal Br. 24–25 (Claims Appendix) (emphasis and spacing added).
REJECTION
The Examiner maintains the rejection of claims 6–123 under 35
U.S.C. § 103 as unpatentable over Aluplast4 (EP 2431152 A2, published

3 Although the heading for this rejection lists claims 6–10 as rejected under
35 U.S.C. § 103, the body of the rejection refers to claims 6–12. We,
therefore, treat the listing of claims 6–10 in the heading as an inadvertent
typographical error.
4 The Examiner cites numerous paragraphs of “Aluplast” in the Final Action.
Final Act. 2. This patent application was published in German, however,
and a full-length English translation of the application is not of record.
Appellant did submit a copy of the Aluplast application with an Information
Disclosure Statement filed September 28, 2015, but the copy submitted by
Appellant included only an English abstract, with the remainder of the
application being in German. The particular document cited by the
Examiner in the Final Action that forms the basis of the Examiner’s
rejection, therefore, is not apparent on the record before us. Appellant
indicates in the Appeal Brief that Appellant’s citations to Aluplast “are
based on the English machine translation of Aluplast available from the
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March 21, 2012) in view of Uno (US 6,660,789 B2, issued December 9,
2003) and Wust et al. (US 2010/0319843 Al, published December 23,
2010)5 in the Answer entered August 12, 2019 (“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 9–12 under 35 U.S.C. § 103, but designate our affirmance as
including new grounds of rejection, for the reasons discussed below. We
reverse the Examiner’s rejection of claims 6–8 under 35 U.S.C. § 103 for
reasons set forth in the Appeal and Reply Briefs, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).

European Patent Office.” Appeal Br. 9, Fn. 1. We, therefore, also refer in
this decision to the English machine translation of Aluplast available from
the European Patent Office. In the event of further prosecution of this
application, however, we advise the Examiner to make of record the
Aluplast document relied upon by the Examiner in the Final Action.
5 Although the heading for this rejection does not list Wust as an applied
prior art reference (Final Act. 2), the body of the rejection discusses Wust as
if it were being applied as prior art (Final Act. 3), which Appellant
acknowledges. Appeal Br. 9, Fn. 2. We, therefore, treat the omission of
Wust from the heading as an inadvertent typographical error.

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Appellant argues claims 6–12 as a group. Appeal Br. 9–23. We,
however, address independent claim 6 and its dependent claims 7 and 8
separately from independent claim 9 and its dependent claims 10–12, due to
the differing nature of claims 6 and 9, discussed below.
Claims 9–12
As discussed above, Appellant does not separately argue any of the
pending claims. Appeal Br. 9–23. We, therefore, select independent claim 9
as representative of claims 9–12, and decide the appeal as to claims 9–12
based on claim 9 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Independent claim 9 recites, in part, a shaped article comprising (a) a
composition consisting of i) a polyalkylene terephthalate, ii) a (polyalkylene
isophthalate)-co-(polyalkylene terephthalate), and iii) a reinforcing fiber, and
(b) one or more additional thermoplastic materials, at least one of which is
polyvinyl chloride.
Aluplast discloses co-extrusion molding a first thermoplastic material
and a second (reinforcing) plastic material to produce a plastic profile
(shaped article). Aluplast p. 1, ll. 10–15; Abst. Aluplast discloses that the
first thermoplastic material can be polyvinyl chloride, and the second
(reinforcing) plastic material can be polybutylene terephthalate,
polyethylene terephthalate, or mixtures thereof. Aluplast p. 4, ll. 128–133;
p. 8, ll. 320–321; Abst. Aluplast discloses that the polyvinyl chloride,
polybutylene terephthalate, and polyethylene terephthalate are each
preferably fiber-reinforced. Aluplast p. 8, ll. 312–313.
The Examiner finds that “Aluplast is silent with regard to the
composition comprising a (polyalkylene isophthalate)-co-(polyalkylene
terephthalate),” and the Examiner relies on Uno for suggesting use of such a
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copolymer in combination with polybutylene terephthalate as Aluplast’s
second plastic material. Final Act. 2–3.
Uno discloses a thermoplastic resin composition having excellent
alkali resistance that comprises (A) a polybutylene terephthalate resin
containing polybutylene terephthalate/isophthalate copolymer, (B) a
polycarbonate resin, (C) an elastomer, and (D) a fibrous reinforcing material.
Uno col. 2, ll. 5–13, 38–55. Uno discloses that the polybutylene
terephthalate resin may be a mixture of a polybutylene terephthalate resin
and a polybutylene terephthalate/isophthalate copolymer, or may be the
polybutylene terephthalate/isophthalate copolymer alone. Uno col. 3, ll. 48–
52. Uno discloses that the resin composition may be molded by known
methods of molding thermoplastic resins, such as extrusion molding. Uno
col. 7, ll. 18–22.
In view of these disclosures in Uno, the Examiner concludes that “it
would have been obvious to one of ordinary skill in the art . . . to utilize the
blend of polybutylene terephthalate and (polyalkylene isophthalate)-co-
(polyalkylene terephthalate) of Uno as the reinforcing composition of
Aluplast motivated by the expectation of forming an article that has
enhanced alkali resistance.” Final Act. 3.
Appellant argues that Uno teaches that all four components of Uno’s
thermoplastic resin composition are essential for achieving improved
alkaline resistance. Appeal Br. 12–15, 17–22 (citing Uno col. 2, ll. 5–14;
col. 3, ll. 11–16, 37–47; col. 4, ll. 37–43; col. 4, l. 64–col. 5, l. 3; cols. 7–13
(Tables 1–3)). Appellant argues that, consequently, in order to impart
enhanced alkali resistance to Aluplast’s composition, a “skilled artisan must
use Uno’s composition including polybutylene terephthalate resin,
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polycarbonate resin, elastomer, and fibrous reinforcing material as the
reinforcing composition that is coextruded with PVC in Aluplast’s method.”
Appeal Br. 14. Appellant argues that, however, “the polycarbonate resin and
elastomer components are excluded by the closed ‘consisting of’ transition
from the recited composition,” and “the skilled artisan would not have a
reasonable expectation of success in achieving improved alkaline resistance
without the polycarbonate resin and elastomer materials.” Appeal Br. 12–15
(citing KSR, 550 U.S. 398, 416 (2007); In re Merck & Co., Inc., 800 F.2d
800 F.2d 1091, 1097 (Fed. Cir. 1986)). Appellant argues that “the skilled
artisan following the teachings of Uno to improve Aluplast would be led in a
direction divergent from the path that was taken by the appellant” because
“the skilled artisan would have included the polycarbonate resin and
elastomer components from Uno in hopes of obtaining the improved alkali
resistance in the modified composition of Aluplast,” and “[t]his divergent
path constitutes a teaching away and precludes a prima facie conclusion of
obviousness.” Appeal Br. 12–13, 15 (citing In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006)).
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, however, for reasons that follow.
A “comprising” transitional phrase between the preamble and body of
a claim opens the claim to inclusion of unrecited materials or components.
Gillette Co. v. Energizer Holdings, Inc. 405 F.3d 1367, 1371–1372 (Fed.
Cir. 2005) (“The word ‘comprising’ transitioning from the preamble to the
body signals that the entire claim is presumptively open-ended.”); In re
Baxter, 656 F.2d 679, 686–87 (CCPA 1981) (“As long as one of the
monomers in the reaction is [the claimed] propylene, any other monomer
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may be present, because the term ‘comprises’ permits the inclusion of other
steps, elements, or materials.”).
Use of “consisting of” within the body of a claim, rather than
immediately following the preamble, closes only the element preceded by
“consisting of,” and does not negate the open nature of a “comprising”
transition present in the claim between the preamble and body.
Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279,
1282 (Fed. Cir. 1986) (confirming that the phrase “consisting of” appearing
in a clause of a claim specifically limits only the element set forth in that
clause); In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004) (“Crish’s
principal argument here that the claims also contain the closed-ended
transition term ‘consists,’ and that that term narrows the entire claim, is
unpersuasive. The reasonable interpretation of the claims containing both of
the terms ‘comprising’ and ‘consists’ is that the term ‘consists’ limits the
‘said portion’ language to the subsequently recited numbered nucleotides,
but the earlier term ‘comprising’ means that the claim can include that
portion plus other nucleotides.”).
In the present case, the recitation of “consisting of” within the body of
claim 9 limits the components included in composition (a) to only the
explicitly recited components i), ii), iii), and iv). Like the situation in Crish
set forth above, however, the “consisting of” phrase in the body of claim 9
does not negate the open nature of the claim imparted by the “comprising”
transition that immediately follows the preamble. Crish, 393 F.3d at 1257.
Interpreting “consisting of” recited in the body of claim 9 as closing
the claim to inclusion of unrecited materials would effectively change the
“comprising” transition following the preamble of claim 9 to a “consisting
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of” transition, contrary to the principles of Mannesmann and Crish set forth
above. Consequently, although the “consisting of” transition recited in the
body of claim 9 requires inclusion of only the explicitly recited materials in
composition (a), the “comprising” transition that immediately follows the
preamble of claim 9 opens the claim to inclusion of unrecited materials in
the claimed article. Claim 9, therefore, does not exclude unrecited materials
from being included in the claimed article in combination with composition
(a) and one or more additional thermoplastic materials (b) at least one of
which is polyvinyl chloride; consequently, claim 9 does not exclude the
polycarbonate resin and elastomer disclosed in Uno.
Because Appellant’s arguments are all premised on the incorrect
assertion that claim 9 excludes Uno’s polycarbonate resin and elastomer,
Appellant’s arguments do not identify reversible error in the Examiner’s
rejection, which we accordingly sustain. We designate our affirmance as
including new grounds of rejection, however, because our reasons for
affirmance differ materially from those expressed by the Examiner (Final
Act. 2–4). In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere
reliance on the same statutory basis and the same prior art references, alone,
is insufficient to avoid making a new ground of rejection where the Board
relies on new facts and rationales not previously raised to the applicant by
the examiner.”).
Claims 6–8
Independent claim 6 recites, in part, a method of forming a shaped
article of a composition consisting of i) a polyalkylene terephthalate,
ii) a (polyalkylene isophthalate)-co-(polyalkylene terephthalate),
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iii) a reinforcing fiber, and iv) optionally, one or more additives selected
from the group consisting of lubricants, thermal antioxidants, nucleating
agents, pigments, and combinations thereof, comprising melt-forming the
composition together with one or more additional thermoplastic materials, at
least one of which is polyvinyl chloride. Although claim 6 does not exclude
additional unrecited method steps due to the “comprising” transition that
separates the preamble from the body of the claim, claim 6 nonetheless
requires the claimed method to include the step of melt-forming a
composition that includes only components i), ii), iii), and iv) together with
one or more additional thermoplastic materials, at least one of which is
polyvinyl chloride.
As discussed above, Aluplast discloses co-extrusion molding fiber-
reinforced polyvinyl chloride and a second (reinforcing) plastic material,
such as fiber-reinforced polybutylene terephthalate, polyethylene
terephthalate, or mixtures thereof, and Uno discloses a thermoplastic resin
composition having excellent alkali resistance that comprises (A) a mixture
of a polybutylene terephthalate resin and a polybutylene terephthalate/
isophthalate copolymer, (B) a polycarbonate resin, (C) an elastomer, and (D)
a fibrous reinforcing material. Aluplast p. 1, ll. 10–15, p. 4, ll. 128–133, p.
8, ll. 312–313, 320–321, Abst; Uno col. 2, ll. 5–13, 38–55.
As also discussed above, the Examiner determines that “it would have
been obvious to one of ordinary skill in the art . . . to utilize the blend of
polybutylene terephthalate and (polyalkylene isophthalate)-co-
(polyalkylene terephthalate) of Uno as the reinforcing composition of
Aluplast motivated by the expectation of forming an article that has
enhanced alkali resistance.” Final Act. 3.
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On the record before us, however, the Examiner does not establish
that one of ordinary skill in the art reasonably would have utilized Uno’s
mixture of polybutylene terephthalate and (polyalkylene isophthalate)-co-
(polyalkylene terephthalate) as the second (reinforcing) plastic material in
Aluplast’s composition to enhance the alkali resistance of Aluplast’s
composition without also including the polycarbonate resin and elastomer
components of Uno’s composition in Aluplast’s composition, for reasons
expressed by Appellant and discussed below.
As discussed above, Appellant argues that Uno teaches that all four
components of Uno’s thermoplastic resin composition are essential for
achieving improved alkaline resistance. Appeal Br. 12–15, 17–22 (citing
Uno col. 2, ll. 5–14; col. 3, ll. 11–16, 37–47; col. 4, ll. 37–43; col. 4, l. 64–
col. 5, l. 3; cols. 7–13 (Tables 1–3)). Uno’s polycarbonate resin and
elastomer components, however, are excluded from the composition recited
in claim 6 by the “consisting of” transition in the body of the claim.
The Examiner responds to Appellant’s arguments in the Answer by
indicating that Uno “states that ‘when the isophthalic acid content is less
than 3 mol%, the alkali resistance is insufficient, failing to attain the object
of the invention. On the other hand, if it exceeds 30 mol%, it is not
preferred since the moldability is lowered.” Ans. 6 (citing Uno col. 3, ll. 42–
46). The Examiner asserts that this disclosure “provides evidence [that]
regardless of the other components of the composition if the polybutylene
terephthalate/ isophthalate copolymer has non preferred amounts of
isophthalic acid content the invention will fail,” and, therefore, “[t]he
polybutylene terephthalate/isophthalate copolymer provides the composition
with the alkali resistance and the moldability.” Id.
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Appellant, however, points to Uno’s further disclosure that the
amount of polycarbonate resin included in Uno’s thermoplastic resin
composition is determined “in view of the balance between the alkali
resistance and the fluidity.” Appeal Br. 17 (citing Uno col. 4, ll. 37–43).
Appellant also points to Uno’s disclosure that the amount of elastomer
included in Uno’s thermoplastic resin composition is determined “in view of
the balance between the alkali resistance, the mechanical strength and the
moldability. Appeal Br. 17 (citing Uno col. 4, l. 64–col. 5, l. 3). Uno also
discloses that if the amount of polybutylene terephthalate resin included in
Uno’s thermoplastic resin composition is too high, the content of the
remaining components of the composition—the polycarbonate resin,
elastomer, and reinforcing fibers—“is relatively lowered excessively and the
alkali resistance and the mechanical resistance are deteriorated.” Uno col. 4,
ll. 10–17.
Appellant also points out that Uno’s experimental examples
demonstrate that an isophthalic acid content of 3–30 mol% alone (in the
polybutylene terephthalate/isophthalate copolymer) is insufficient to impart
alkali resistance to Uno’s thermoplastic resin composition, and also
demonstrate that both the polycarbonate resin and the elastomer
components, along with the polybutylene terephthalate/isophthalate
copolymer, must be present in the composition to achieve satisfactory alkali
resistance. Appeal Br. 17–19 (explaining that a comparison of Uno’s
Comparative Examples 2 and 6 shows that the polybutylene
terephthalate/isophthalate copolymer (having an isophthalic acid content of
3–30 mol%) alone is insufficient to impart alkali resistance; explaining that a
comparison of Uno’s Example 1 and Comparative Example 9 shows that a
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polycarbonate resin is essential for achieving alkali resistance; and
explaining that a comparison of Uno’s Example 1 and Comparative Example
7 shows that an elastomer is essential for achieving alkali resistance); see
also Uno col. 7, l. 34–col. 13, l. 48.
The Examiner’s response to Appellant’s arguments in the Answer
(discussed above) ignores these teachings in Uno and focuses only on Uno’s
disclosure that “when the isophthalic acid content is less than 3 mol%, the
alkali resistance is insufficient, failing to attain the object of the invention.”
Ans. 6. The Examiner, consequently, does not appear to consider Uno’s
disclosures as a whole, and what those disclosures reasonably would have
suggested to one of ordinary skill in the art—that satisfactory alkali
resistance is only achieved if all four components of Uno’s thermoplastic
resin composition are included in the composition. In re Applied Materials,
Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (“[a] reference must be
considered for everything that it teaches, not simply the described invention
or a preferred embodiment.”); see also In re Mercier, 515 F.2d 1161, 1165
(CCPA 1975) (“[A]ll of the relevant teachings of the cited references must
be considered in determining what they fairly teach to one having ordinary
skill in the art.”).
Although the Examiner does respond to Appellant’s comparison
between Uno’s Example 1 and Comparative Example 9 in the Answer, the
Examiner asserts—without providing any objective evidence to support the
assertion—that one of ordinary skill in the art would have considered the
results of only one of the two alkali resistance tests provided for the
composition of Comparative Example 9 (AR-1). Ans. 6–7. The Examiner
asserts that the results of alkali resistance test 1 (AR-1) indicate that the
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alkali resistance of the composition of Comparative Example 9, which did
not include a polycarbonate resin, was satisfactory. Id. As Appellant points
out, however, Uno explicitly states that “the alkali resistance” of the
composition of Comparative Example 9 “was insufficient,” as determined by
the results of both alkali resistance tests (AR-1 and AR-2). Appeal Br. 20–
22 (citing Uno col. 11, l. 21). Contrary to the Examiner’s assertions,
Comparative Example 9 thus evidences that inclusion of a polycarbonate
resin in combination with a polybutylene terephthalate/isophthalate
copolymer, an elastomer, and reinforcing fibers is required for satisfactory
alkali resistance, as indicated by the combined results of both alkali
resistance tests (AR-1 and AR-2).
Considering Uno’s disclosures as a whole—including those
disclosures identified by Appellant discussed above—the Examiner does not
provide sufficient reasoning having rational underpinning that explains why
one of ordinary skill in the art would have included only the mixture of
polybutylene terephthalate and (polyalkylene isophthalate)-co-(polyalkylene
terephthalate) from Uno’s thermoplastic resin composition in Aluplast’s
composition in order to enhance the alkali resistance of Aluplast’s
composition, without also including the polycarbonate resin and elastomer
components of Uno’s thermoplastic resin composition, so as to arrive at a
composition as recited in claim 6.
Because the Examiner’s rejection of claim 6 is premised on such a
combination, we do not sustain the Examiner’s rejection of claim 6, and
claims 7 and 8, which each depend from claim 6, under 35 U.S.C. § 103. In
the event of further prosecution of this application, however, we encourage
the Examiner and Appellant to consider whether Uno’s polycarbonate resin
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and elastomer are encompassed by the “additional thermoplastic materials”
recited in claim 6.
CONCLUSION

Claims
35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
New
Ground
6–8 103 Aluplast, Uno 6–8
9–12 103 Aluplast, Uno 9–12 9–12
Overall
Outcome 9–12 6–8 9–12

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that 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 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
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. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection(s), the
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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 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.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)