DUNLOP SPORTS CO. LTD.

Patent Trials and Appeals Board

Aug 24, 2021

2021002253 (P.T.A.B. Aug. 24, 2021)

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.
15/292,559 10/13/2016 Hironori TAKIHARA 3673-0576PUS1 1034
2292 7590 08/24/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/24/2021 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIRONORI TAKIHARA and TAKAHIRO SAJIMA
____________

Appeal 2021-002253
Application 15/292,559
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Non-Final Office Action (dated Mar. 10, 2020, hereinafter
“Non-Final Act.”) rejecting claims 1, 2, 4, 5, 9–13, 16, and 17 under 35

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. SUMITOMO RUBBER INDUSTRIES, LTD. is identified as
the real party in interest in Appellant’s Appeal Brief (filed Aug. 7, 2020,
hereinafter “Appeal Br.”). Appeal Br. 1.
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U.S.C. § 103 as being unpatentable over Yamaguchi,2 Maruoka,3 and
Ohama.4,5 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION of
claims 1, 2, 4, 5, 9–13, 16, and 17 pursuant to our authority under 37 C.F.R.
§ 41.50(b).

INVENTION
Appellant’s invention is directed to “two-piece golf balls including a
core and a cover.” Spec. 1, l. 13.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A two-piece golf ball including a solid core and a cover
positioned outside the solid core, wherein
a value V calculated by the following mathematical
formula is equal to or greater than 800 Hz but equal to or less
than 1040 Hz,
V = NF(2)2 - 2/3 * NF(2)1,
wherein NF(2)1 represents a secondary natural frequency of the
solid core, and NF(2)2 represents a secondary natural frequency
of the golf ball,
an amount of compressive deformation Df2 of the two-
piece golf ball obtained from a state of applying an initial load
of 98N to a state of applying a final load of 1274N is equal to or
greater than 4.23 mm to 5.0 mm,

2 Yamaguchi et al., US 6,123,629, issued Sept. 26, 2000.
3 Maruoka et al., US 6,589,124 Bl, issued July 8, 2003.
4 Ohama et al., US 2008/0045360 Al, published Feb. 21, 2008.
5 Claims 3, 6–8, 14, and 15 are canceled. Appeal Br., Claims App. 1–2.
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a Shore D hardness H2 of the cover is equal to or greater
than 50 but equal to or less than 59; and
a thickness T2 of the cover is equal to or greater than 0.80
mm but equal to or less than 1.70 mm.

Appeal Br., Claims App. 1.

ANALYSIS
The Examiner finds that Yamaguchi discloses many of the limitations
of independent claim 1, but does not disclose a compressive deformation
Df2 of 4.23 to 5.0 mm when applying an initial load of 98 N and a final load
of 1274 N. Non-Final Act. 3 (citing Yamaguchi, col. 3, ll. 29–42, col. 6, ll.
6–7, Fig. 1). Nonetheless, the Examiner finds that Yamaguchi’s golf ball
would inherently have some compressive deformation when applying an
initial load of 98 N and a final load of 1274 N. Id. The Examiner further
finds that Maruoka discloses a golf ball exhibiting a compressive
deformation of Df2 greater than 4.0 mm when applying an initial load of 98
N and a final load of 1274 N. Id. at 3–4 (citing Maruoka, col. 4, ll. 14–21).
Accordingly, the Examiner concludes that it would have been obvious for a
person of ordinary skill in the art
to modify Yamaguchi to use . . . a compression of 4.00 mm as
taught by Maruoka . . . because doing so would be use of a known
technique (using . . . a compression of 4.0 mm) to improve a
similar product (a two-piece golf ball having . . . an inherent . . .
compression) in the same way (using . . . a compression of 4.0
mm so that the ball is not too hard and also has sufficient rebound
ability . . .).

Id. at 4 (citing Maruoka, col 4, ll. 14–21). The Examiner also determines
that Maruoka’s golf ball compressive deformation Df2 “is a result-effective
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variable used to optimize feel and rebound characteristics,” and, thus, the
compressive deformation Df2 “can be optimized or found though routine
experimentation.” Id. at 4 (citing Maruoka, col. 4, ll. 14–21). As such,
according to the Examiner, “using a compression value of 4.23 over that
of 4.00” would have been obvious for a skilled artisan because “where the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”
Id. at 4–5 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
In response, Appellant argues Maruoka “teaches away from using a
compressive deformation higher than 4.0 mm.” Appeal Br. 7. According to
Appellant, Maruoka’s “golf ball compressive deformation is in the range
of 2.0-4.0 mm, preferably 2.5-3.2 mm,” and, moreover, “it is noted that if
the value is above 4.0 mm, then inferior ‘rebound characteristics’ result.”
Id. (citing Maruoka, col. 4, ll. 14–17).
In response, the Examiner relies on MPEP § 2144.05(III)(B) to note
that “even if a preference for a range is given in the prior art, if the reference
provides motivation for one of ordinary skill in the art to look at values
outside that range, the reference ‘falls far short of the kind of teaching away’
that is necessary.” Examiner Answer (dated Sept. 8, 2020, hereinafter
“Ans.”) 8 (citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)).
Thus, according to the Examiner, even though “Maruoka generally
teaches a range of 2.0 to 4.0 mm,” nonetheless, “Maru[oka] provides
motivation [to look] outside the range by directly stating that moving outside
the range changes feel and rebound characteristics.” Id. at 7–8. As such, the
Examiner takes the position that because “it is well known in the art that the
compression can be optimized based on feel and rebound characteristics,” as
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evidenced by prior art,6 “using a value of 4.23 mm on the ball compression
would be completely expected as a viable compression value.” Id. at 8. In
addition, the Examiner notes that “[A]ppellant gives no criticality to the
lesser claimed value of 4.23 to 5.0 mm over that of the disclosed 3.5 to 6.0
mm.” Id. (citing Spec. 17, ll. 14–25).
Teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject
matter merely by disclosing a different solution to a similar problem unless
the prior art also criticizes, discredits, or otherwise discourages the solution
claimed). In this case, Maruoka specifically discloses that “[w]hen the
deformation amount is larger than 4.0 mm, the golf ball is too soft, and thus
the rebound characteristics are degraded. On the other hand, when the
deformation amount is smaller than 2.0 mm, the golf ball is too hard, thus
shot feel is poor.” Maruoka, col. 4, ll. 17–21. We appreciate the Examiner’s
position that Maruoka’s golf ball compressive deformation parameter Df2
influences feel and rebound characteristics; however, Maruoka is specific
that such an influence is negative when the value is outside the 2.0 to 4.0
mm.
Thus, even though the golf ball compressive deformation Df2 is a
result-effective variable that “can be optimized based on feel and rebound

6 The Examiner relies on Fushihara et al. (US 2002/0032082 A1, published
Mar. 14, 2002, hereinafter “Fushihara ’082”), para. 38 (2.2–4.5 mm);
Fushihara (US 2002/0045500 A1, published Apr. 18, 2002, hereinafter
“Fushihara ’500”), para. 16 (3.1–5.0 mm); and Fushihara et al. (US
2003/0064830 A1, published Apr. 3, 2003, hereinafter “Fushihara ’830”),
para. 37 (2.2–4.5 mm).
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characteristics” (see Ans. 8), nonetheless, a skilled artisan, upon reading
Maruoka, “would be led in a direction divergent from the path that was
taken by Appellant.” See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001) (emphasis added). In particular, because Maruoka is specific that
“[w]hen the deformation amount is larger than 4.0 mm, the golf ball is too
soft, and thus the rebound characteristics are degraded,” a person of ordinary
skill would choose a compressive deformation value within the disclosed of
2.0–4.0 mm range, rather than outside the disclosed range, i.e., above 4.0
mm. In contrast to Geisler, which provided incentive to a skilled artisan to
look at values outside a disclosed range, here, not only does the Examiner
fail to point to any statement in Maruoka that would suggest to a skilled
artisan to explore compressive deformation values above the disclosed upper
limit of 4.0 mm, but also, Maruoka itself discourages such an exploration.
Furthermore, even though the Examiner relies on various prior art
references as evidence (see footnote 6) to illustrate compressive deformation
ranges that encompass the claimed value of 4.23 mm, nonetheless, the
Examiner’s position is untenable because it does not explain why a skilled
artisan would consider the ranges disclosed by the cited prior art references
rather than Maruoka’s disclosed range. After all, the Examiner’s rejection is
based on the combined teachings of Yamaguchi and Maruoka, not on the
teachings of Yamaguchi and Fushihara ’082, Fushihara ’500, or Fushihara
’830. Moreover, the Examiner does not adequately explain what benefit a
skilled artisan would reasonably expect to obtain when modifying
Yamaguchi’s ball to have a compressive deformation value above
Maruoka’s upper limit of 4.0 mm. See Winner Int'l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
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motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”).
In conclusion, for the foregoing reasons and because the Examiner’s
use of the Ohama disclosure does not remedy the deficiency of the
Yamaguchi and Maruoka combination discussed supra (see Non-Final Act.
5), we do not sustain the rejection under 35 U.S.C. § 103 of independent
claim 1, and its dependent claims 2, 4, 5, 9–13, 16, and 17, as unpatentable
over Yamaguchi, Maruoka, and Ohama.

NEW GROUND OF REJECTION
Claims 1, 2, 4, 5, 9–13, 16, and 17 are rejected under 35 U.S.C. § 103
as being unpatentable over Yamaguchi, Maruoka, as evidenced by Sullivan,7
Fushihara ’500,8 and Ohama.9
In regards to independent claim 1, Yamaguchi discloses a golf ball
including, inter alia, a cover and a solid core, wherein the cover has a
thickness T2 in the range of 1 to 5 mm and the solid core exhibits a core
secondary natural frequency NF(2)1 in the range of 850–2700 Hz. See
Yamaguchi, col. 3, ll. 29–42, col. 6, ll. 6–7, Fig. 1. Yamaguchi further
discloses that when the core secondary natural frequency NF(2)1 is below
850 Hz “the golf ball produces very low hit sound when hit” and when it

7 Sullivan et al., US 5,971,870, issued Oct. 26, 1999.
8 For simplicity we employed only the disclosure of Fushihara ’500, but
either of Fushihara ’082 or Fushihara ’830 could have been used as well.
9 Claims 16 and 17 depend from canceled claim 15. Appeal Br., Claims
App. 1.
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“exceeds 2700 Hz, the golf ball produces very high hit sound like a metallic
sound.” See id., col. 3, ll. 32–36, 39–42.
Although, Yamaguchi’s golf ball inherently has some second natural
frequency, Yamaguchi does not specifically disclose a golf ball secondary
natural frequency NF(2)2 such that a value V calculated by the following
formula V = NF(2)2 - 2/3 * NF(2)1 is in the range of 800–1040 Hz.
Maruoka discloses a hollow core golf ball exhibiting a secondary
natural frequency NF(2)2 in the range of 2000–5000 Hz, which provides for
an optimum shot feel. See Maruoko, col. 3, ll. 61–63, col. 4, ll. 9–13 (if the
secondary natural frequency is larger than 5000 Hz, the shot feel is poor
because the ball is too hard, and if it is below 2000 Hz, the ball is too soft
and the rebound characteristics are degraded). Maruoka also discloses that a
solid core golf ball exhibits a secondary natural frequency NF(2)2 at 3700
Hz and 4200 Hz. See id., Table 5, Comparative Examples 3, 4.
Furthermore, a skilled artisan would know from prior art, as evidenced by
Sullivan, solid core golf balls have in general a secondary natural frequency
above 2000 Hz, and, in particular, exhibit a secondary natural frequency
at 2575 Hz. See Sullivan, Fig. 10. Thus, Sullivan reinforces Maruoka’s
disclosure that a solid core golf ball, like a hollow core golf ball, has a
secondary natural frequency NF(2)2 in the range of 2000–5000 Hz, that is,
particularly around 2500 Hz.
As such, it would have been obvious for a person of ordinary skill in
the art to modify Yamaguchi’s solid core golf ball to exhibit Maruoka’s
secondary natural frequency range of 2000–5000 Hz, in particular, 2500 Hz,
in order to provide for an optimum shot feel and rebound characteristics.
See Maruoka, col. 4, ll. 9–13. Such a modification is merely the application
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of a known technique (i.e., a known secondary natural frequency range of
2000–5000 Hz and a value of 2500 Hz) to a piece of prior art ready for the
improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Therefore, the resulting golf ball of Yamaguchi, as modified by Maruoka,
with evidence from Sullivan, exhibits a core secondary natural frequency
NF(2)1 of 2400 and a ball secondary natural frequency NF(2)2 of 2500 Hz.
See Yamaguchi, col. 3, ll. 28–38 (NF(2)1 = 850–2700 Hz); Maruoka, col. 4,
ll. 9–13 (NF(2)2 = 2000-5000 Hz); Sullivan, Fig. 10 (NF(2)2 = 2575 Hz).
Accordingly, the value V of the resulting golf ball of Yamaguchi, as
modified by Maruoka, with evidence from Sullivan, has a value of 900 Hz,
calculated as V = NF(2)2 - 2/3 * NF(2)1 = 2500-2/3*2400 = 900 Hz, which
is in the claimed range of 800–1040 Hz.
Furthermore, although Yamaguchi’s golf ball inherently has some
compressive deformation when applying an initial load of 98 N and a final
load of 1274 N, nonetheless, the combined teachings of Yamaguchi and
Maruoka, as evidenced by Sullivan, fail to disclose specifically a golf ball
compressive deformation Df2 in the range of 4.23 to 5.0 mm. The combined
teachings of Yamaguchi and Maruoka, as evidenced by Sullivan, also fail to
disclose a golf ball cover hardness in the range of 50–59 Shore D.
Fushihara ’500 discloses a solid core golf ball exhibiting a
compressive deformation Df2 in the range of 3.1–5.0 mm when applying an
initial load of 98 N and a final load of 1274 N, which encompasses the
claimed golf ball compressive deformation value of 4.23 mm. See Fushihara
’500, paras. 3, 16, 18. Fushihara ’500 further discloses that the 3.1–5.0 mm
golf ball compressive deformation range provides for an optimum shot feel
and rebound characteristics. See id. at par. 16.
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Ohama discloses a two-piece golf ball having a cover hardness H2 in
the range of 50–70 Shore D, which encompasses the claimed range of 50–59
Shore D. See Ohama, paras. 66, 70. Ohama further discloses that the
disclosed golf ball cover hardness range provides for an optimum feel at
impact. See id. at para. 70.
As such, it would have been obvious for a skilled artisan to modify the
solid core golf ball of Yamaguchi and Maruoka, as evidenced by Sullivan, to
exhibit (1) a ball compressive deformation Df2 range, as taught by Fushihara
’500 and (2) a cover hardness H2 range, as taught by Ohama, in order to
provide for optimum shot feel and rebound characteristics, and feel at
impact, respectively. Such a modification is merely the application of a
known technique (i.e., a known golf ball compressive deformation Df2 range
and a cover hardness H2 range) to a piece of prior art ready for the
improvement. See KSR, 550 U.S. at 417.
Furthermore, the core secondary natural frequency NF(2)1 (as per
Yamaguchi), the golf ball secondary natural frequency NF(2)2 (as per
Maruoka), the golf ball compressive deformation Df2 (as per Fushihara
’500), and the golf ball cover hardness H2 (as per Ohama) are result-
effective variables that optimize hit sound, shot feel, rebound characteristics,
and feel at impact. See Yamaguchi, col. 3, ll. 28–42; Maruoka, col. 4, ll. 9–
13; Fushihara ’500, para. 16; Ohama, para. 70. Therefore, such variables
can be optimized or found though routine experimentation, and, thus, the
claimed ranges would have been obvious for a skilled artisan because
“where the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Moreover,
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if the relevant comparison between disputed claim limitations and the prior
art pertains to a range of overlapping values, the Federal Circuit has
“consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003). As is the case here, where a variable is known to affect a particular
desirable result, i.e., a “result-effective” variable, the “overlap itself provides
sufficient motivation to optimize the ranges,” and “it is not inventive to
discover the optimum or workable ranges by routine experimentation,”
because the desire to improve results would motivate skilled artisans to
experiment with, and improve upon, known conditions in the prior art. In re
Applied Materials, Inc., 692 F.3d 1289, 1295–96 (Fed. Cir. 2012) (citations
and quotations omitted).
In regards to claims 2, 12, 13, 16, and 17, Ohama discloses a hardness
H1s of the surface of the core in the range of 65–90 Shore C; a hardness H1o
at the central point of the core in the range of 45–70 Shore C; and a hardness
difference H1s-H1o of 10–25 units. See Ohama, paras. 59–61. Ohama
further discloses that the disclosed ranges provide for optimum resilience
performance, flight distance (suppress ball spin), and feel at impact. See id.
Therefore, it would have been obvious for a skilled artisan to modify further
the solid core golf ball of Yamaguchi, Maruoka, as evidenced by Sullivan,
Fushihara ’500, and Ohama, to exhibit Ohama’s ranges for hardness H1s,
hardness H1o, and hardness difference H1s-H1o, noted above, in order to
provide for optimum resilience performance, flight distance (suppress ball
spin), and feel at impact. Such a modification is merely the application of a
known technique to a piece of prior art ready for the improvement.
Moreover, because Ohama’s hardness H1s, hardness H1o, and hardness
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difference H1s-H1o, noted above, are result-effective variables used to
optimize resilience performance, flight distance (suppress ball spin), and feel
at impact, such variables can be optimized or found though routine
experimentation, and, thus, the claimed ranges would have been obvious for
a skilled artisan.
With respect to claim 4, the resulting golf ball of Yamaguchi, as
modified by Maruoka, as evidenced Sullivan, Fushihara ’500, and Ohama
exhibits a core secondary natural frequency NF(2)1 of 2400 and a ball
secondary natural frequency NF(2)2 of 2500 Hz. See Yamaguchi, col. 3,
ll. 28–38 (NF(2)1 = 850–2700 Hz), Table 2, Example 11 (NF(2)1 = 2400
Hz); Maruoka, col. 4, ll. 9–13 (NF(2)2 = 2000-5000 Hz); Sullivan, Fig. 10
(NF(2)2 = 2575 Hz). Accordingly, the resulting value V is 900 Hz,
calculated as V = NF(2)2 - 2/3 * NF(2)1 = 2500-2/3*2400 = 900 Hz, which
is within the claimed range of less than 1000 Hz.
As to claim 5, Ohama discloses a core compressive deformation Df1
range of 3.0–5.0 mm, when applying an initial load of 98 N and a final load
of 1274 N, which is within Appellant’s claimed range of “equal to or less
than 6.5 mm.” See Ohama, paras. 62; see also Appeal Br., Claims App. 1.
Ohama further discloses that the taught range provides for optimum
resilience, spin rate and feel at impact. See Ohama, paras. 62. Hence, it
would have been obvious for a skilled artisan to modify further the solid
core golf ball of Yamaguchi, Maruoka, as evidenced by Sullivan, Fushihara
’500, and Ohama, to have a core compressive deformation Df1 range of 3.0–
5.0 mm in order to provide for optimum resilience performance, spin rate,
and feel at impact. Such a modification is merely the application of a known
technique to a piece of prior art ready for the improvement. Moreover,
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because the core compressive deformation Df1 is a result-effective variable
used to optimize resilience performance, spin rate, and feel at impact, such a
variable can be optimized or found though routine experimentation and,
thus, the claimed range would have been obvious for a skilled artisan.
Regarding claim 9, Yamaguchi discloses a two-piece golf ball having
a cover made from “a mixture of [an] ionomer and other thermoplastic
resins.” See Yamaguchi, col. 5, ll. 27–28. Ohama discloses that combining
a styrene block-containing thermoplastic elastomer with an ionomer
provides for adequate feel at impact and strength of a golf ball. See Ohama,
paras. 66, 73. Therefore, it would have been obvious for a skilled artisan to
modify further the solid core golf ball of Yamaguchi, Maruoka, as evidenced
by Sullivan, Fushihara ’500, and Ohama, to mix a styrene block-containing
thermoplastic elastomer with Yamaguchi’s ionomer to provide for adequate
feel at impact and strength of the golf ball.
With respect to claims 10 and 11, Yamaguchi’s core is formed by
crosslinking a rubber material and the diameter of its core is in the 32.7–40.7
mm range, which partially encompasses the claimed range of 39.0–41.0 mm.
See Yamaguchi, col. 3, ll. 22–23, 65–67, col. 5, ll. 9–10.

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CONCLUSION

Claim(s)
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed New
Ground of
Rejection
1, 2, 4, 5,
9–13, 16,
17
103 Yamaguchi,
Maruoka,
Ohama
1, 2, 4, 5,
9–13, 16,
17

1, 2, 4, 5,
9–13, 16,
17
103 Yamaguchi,
Maruoka,
Sullivan,
Fushihara
’500, Ohama
1, 2, 4, 5,
9–13, 16,
17
Overall
Outcome
1, 2, 4, 5,
9–13, 16,
17
1, 2, 4, 5,
9–13, 16,
17

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
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 [E]xaminer, in which event the prosecution
will be remanded to the [E]xaminer. The new ground of
rejection is binding upon the [E]xaminer unless an amendment
or new Evidence not previously of Record is made which, in
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the opinion of the [E]xaminer, overcomes the new ground of
rejection designated in the decision. Should the [E]xaminer
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. MPEP § 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).

REVERSED; 37 C.F.R. § 41.50(b)