DUNLOP SPORTS CO. LTD.Download PDFPatent Trials and Appeals BoardAug 24, 20212021002253 (P.T.A.B. Aug. 24, 2021) Copy Citation 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. Appeal 2021-002253 Application 15/292,559 2 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. Appeal 2021-002253 Application 15/292,559 3 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 Appeal 2021-002253 Application 15/292,559 4 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 Appeal 2021-002253 Application 15/292,559 5 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). Appeal 2021-002253 Application 15/292,559 6 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 Appeal 2021-002253 Application 15/292,559 7 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. Appeal 2021-002253 Application 15/292,559 8 “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 Appeal 2021-002253 Application 15/292,559 9 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. Appeal 2021-002253 Application 15/292,559 10 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, Appeal 2021-002253 Application 15/292,559 11 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 Appeal 2021-002253 Application 15/292,559 12 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, Appeal 2021-002253 Application 15/292,559 13 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. Appeal 2021-002253 Application 15/292,559 14 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 Appeal 2021-002253 Application 15/292,559 15 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) Copy with citationCopy as parenthetical citation