Ex Parte AlRawi

Patent Trial and Appeal Board

Jan 3, 2017

13026195 (P.T.A.B. Jan. 3, 2017)

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.
1505-0231 4335
EXAMINER
LIU, KENDRICK X
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
13/026,195 02/11/2011
28078 7590 01/03/2017
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
Saieb AlRawi
01/03/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAIEB ALRAWI
Appeal 2016-000144
Application 13/026,195
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 filed an appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1—8, 13, 14, 16—20, 23, and 24. We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
1 Our decision refers to Appellant’s Specification filed Feb. 11, 2011
(Spec.), the Final Office Action mailed Aug. 5, 2014 (Final Act.),
Appellant’s Appeal Brief filed Feb. 5, 2015 (Appeal Br.), the Examiner’s
Answer mailed July 17, 2015 (Ans.), and Appellant’s Reply Brief filed Sept.
17,2015 (Reply Br.).
2 Appellant identifies the real party of interest as Landis+Gyr, Inc. Appeal
Br. 2.
Appeal 2016-000144
Application 13/026,195
We AFFIRM and enter NEW GROUNDS OF REJECTION under
37 C.F.R. § 41.50(b).
The claims on appeal are directed to arrangements for use in an
electricity meter and to oscillator circuits (see, e.g., claims 1, 8, and 16).
Appellant discloses oscillator clock circuits including a crystal oscillator are
widely used in electronic devices, such as in electricity meters. Spec. 1:9—
11. Electricity meters may include a communication circuit to allow meter
information to be gathered remotely. Id. at 2:16—18. However, such
communication devices can introduce electromagnetic interference in meter
circuits, such as by inducing noise in the circuit of the crystal oscillator,
which results in clock errors. Id. at 2:22—23, 3:13—14. Figure 4 of
Appellant’s disclosure is reproduced below:
10
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Application 13/026,195
Figure 4 depicts a prior art oscillator circuit that includes a crystal
resonator (crystal) and two load capacitors Cl,* * 3 C2 connected to ground. Id.
at 3:15—22. Appellant discloses that RF noise can couple to the oscillator
circuit through the capacitors because they provide a relatively low
impedance path or through traces between the crystal oscillator circuit and
the microprocessor of the meter. Id. 5:1—6.
Appellant discloses there is a suggestion in the art “to connect a ferrite
bead between ground and a node, and connecting the capacitors to each
other at that node” but this has been found to provide insufficient noise
suppression. Id. at 5:7—11. Therefore, Appellant discloses embodiments
that reduce noise in oscillator circuits by introducing high impedance in
circuit loops that include load capacitors. Id. at 5:13—16.
Independent claim 1 is illustrative of the subject matter on appeal.
Claim 1 is reproduced from the Claims Appendix of the Appeal Brief:
1. An arrangement for use in an electricity meter comprising:
a metrology circuit operably coupled to detect and
measure electrical signals provided to a load, the metrology
circuit including a processing unit configured to generate
metering information based on the measured electrical signals;
an oscillator circuit including a crystal resonator coupled
between a first node and a second node, and a further element
coupled between the first node and the second node, a first
capacitor coupled between the first node and ground, and a first
impedance element in a first circuit path from the first node to
ground through the first capacitor, and
wherein each circuit path through the first node, the first
capacitor and the second node passes through the first
impedance element, and
3 Throughout this Opinion, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
3
Appeal 2016-000144
Application 13/026,195
wherein the first impedance element is configured to
attenuate RF signals that are radiated onto at least portions of the
oscillator circuit.
Appeal Br. 25 (emphasis added).
The claims on appeal stand rejected as follows:4
(1) Claims 8, 13, 14, 16-18, 20, 23, and 24 under 35 U.S.C. §
103(a) as unpatentable over AAPA5 in view of Takayanagi;6
(2) Claims 1—7 under 35 U.S.C. § 103(a) as unpatentable over
Porter7 in view of Yamamoto8 and Cook;9
(3) Claims 8, 13, 16—18, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Yamamoto in view of Cook;
(4) Claim 19 under 35 U.S.C. § 103(a) as being unpatentable over
4 The rejection of claim 19 under 35 U.S.C. § 112, second paragraph, has
been withdrawn and is not before us on appeal. Ans. 2. Appellant requests
withdrawal of the objection to the drawings in view of the withdrawal of the
§ 112 rejection. Appeal Br. 8—9. However, objections such as the objection
to the drawings and the objection to claims 8, 23, and 24, are petitionable
matters properly raised by a petition under 37 C.F.R. §1.181. 37 C.F.R. §
1.144 (2013). Petitionable matters are not appealable to the Patent Trial and
Appeal Board. In re Berger, 279 F.3d 975, 984—985 (Fed. Cir. 2002) (citing
In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)); see also MPEP §
1201.
5 Appellant Admitted Prior Art (“AAPA”). The Examiner identifies
Appellant’s Figure 4 and page 1, line 9, to page 5, line 11 of the
Specification as the AAPA.
6 Takayanagi et al., JP 02-189957 A, published July 25, 1990
(“Takayanagi”).
7 Porter et al., US 6,903,699 B2, issued June 7, 2005 (“Porter”).
8 Yamamoto, US 2001/0006357 Al, published July 5, 2001 (“Yamamoto”).
9 Cook et al., US 2010/0190435 Al, published July 29, 2010 (“Cook”).
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Application 13/026,195
AAPA in view of Takayanagi and further in view of Fujimoto;10
(5) Claim 23 under 35 U.S.C. § 103(a) as being unpatentable over
Yamamoto in view of Cook and further in view of the AAPA;
(6) Claim 14 under 35 U.S.C. § 103(a) as being unpatentable over
Yamamoto in view of Cook and further in view of Sears;* 11
(7) Claim 19 under 35 U.S.C. § 103(a) as being unpatentable over
Yamamoto in view of Cook and further in view of Fujimoto; and
(8) Claim 24 under 35 U.S.C. § 103(a) as being unpatentable over
Yamamoto in view of Cook and further in view of the AAPA.
OPINION
Rejection of claims 8, 13, 14, 16—18, 20, 23, and 24 over AAPA and
Takayanagi
Claims 8, 13, 14, 16—18, 20, 23, and 24 are rejected under 35 U.S.C. §
103(a) as unpatentable over AAPA in view of Takayanagi. Appellant does
not argue the claims separately. Appeal Br. 23. We select claim 8 as
representative for resolving the issues on appeal. Claim 8 recites an
oscillator circuit comprising, inter alia, “a first ferrite bead in a first circuit
path from the first node to ground through the first capacitor” and “a second
ferrite bead in a second circuit path from the second node to ground through
the second capacitor.”
The Examiner finds Figure 4 and paragraphs 3—15 of the publication
of Appellant’s application (US 2011/0193569 Al, published August 11,
2011) are admitted prior art (AAPA). Final Act. 7—8. Paragraphs 3—15 of
10 Fujimoto, JP 04-129303 A, published Apr. 30, 1992 (“Fujimoto”).
11 Sears, US 5,617,084, issued Apr. 1, 1997 (“Sears”).
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Application 13/026,195
the publication correspond to page 1, line 9, through page 15, line 11, of the
Specification. The Examiner finds the AAPA includes an amplifier coupled
between first and second nodes, a crystal resonator, a first capacitor, a
second capacitor, a first circuit path from the first node to ground through
the first capacitor, and a second circuit path from the second node to ground
through the second capacitor. Id. at 8.
Citing page 5, lines 7—9, of the Specification (which corresponds to
paragraph 14 of the publication of Appellant’s application), the Examiner
finds the AAPA discloses the use of ferrite beads but does not disclose a first
ferrite bead in the first circuit path and a second ferrite bead in the second
circuit path. Id. at 8—9. Nonetheless, the AAPA discloses that “[i]n the art,
it has been suggested to connect a ferrite bead between ground and a node,
and connecting the capacitors to each other at that node.” Spec. 5:7—8.
Appellant does not dispute this finding because Appellant states “[a]s noted
at page 5, lines 7—11 of the specification, AAPA actually teaches to place a
ferrite bead between a ground node and connecting the capacitors to each
other at that node.” Appeal Br. 11 (emphasis omitted).
Because the AAPA discloses connecting “a ferrite bead between
ground and a node,”12 the ferrite bead is located in a circuit path from a node
to ground, as recited for the first and second paths of claim 8. Moreover, the
AAPA discloses connecting a capacitor to the node.13 As a result, the
AAPA not only discloses the use of ferrite beads but connecting the ferrite
beads to a circuit path that extends between a ground and a node and through
a capacitor. Thus, the circuit path extending between ground and a node
12 Spec. 5:7-8.
13 “. . . connecting the capacitors to each other at that node.” Spec. 5:8.
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Application 13/026,195
extends through the capacitor, which is connected to the node. We note the
language of claim 8 regarding the locations of the ferrite beads14 merely
requires a circuit path extending from a node to a ground also extends
through a capacitor. In other words, claim 8 does not require a particular
position for the capacitor in the circuit path.
The Examiner finds “Takayanagi teaches an arrangement for
preventing high frequency noise from influencing a frequency-dependent
circuit may comprise ferrite inductors at all points of contact where noise
may enter said circuit.” Final Act. 9. The disclosure of Takayanagi,
including the abstract and drawings of Takayanagi, support the Examiner’s
finding. Further, we find the AAPA discloses “RF noise can couple to the
oscillator circuit either through the crystal oscillator load capacitors ... or
directly to the traces between the external crystal oscillator circuit and the
microprocessor.” Spec. 5:1—6. In other words, Takayanagi suggests using
ferrite beads at multiple locations where high frequency noise may enter a
circuit and the AAPA discloses such locations include oscillator load
capacitors.
Based on the foregoing, we conclude it would have been obvious to
one of ordinary skill in the art to include a ferrite bead in each circuit path of
the AAPA including an oscillator capacitor so high frequency noise is
prevented from affecting the circuit.
Appellant argues that there would have been no reasonable
expectation of success to modify the AAPA in view of Takayanagi because
14 “a first ferrite bead in a first circuit path from the first node to ground
through the first capacitor” and “a second ferrite bead in a second circuit
path from the second node through the second capacitor.”
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Application 13/026,195
one of ordinary skill in the art would have recognized placement of ferrite
beads (as impedance elements) at every entry location of a circuit as a
problem that would have destroyed the circuit of the AAPA for its intended
purpose. Appeal Br. 11—12; Reply Br. 4—6.
Appellant’s argument is not persuasive of reversible error because the
AAPA discloses connecting ferrite beads to a circuit path extending between
a node and ground with a capacitor connected to the ground. The disclosure
of Takayanagi demonstrates use of ferrite beads where noise may enter a
circuit, which the AAPA discloses as including the capacitors in an
oscillation circuit. Moreover, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSRInt'l. Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). Thus, one of ordinary skill in the art would not have
needlessly placed a ferrite bead at every entry point for noise in a circuit,
particularly in view of the guidance provided by the AAPA for where
radiofrequency noise may couple to an oscillator circuit. In addition,
Appellant provides no evidence or technical reasoning to support their
argument that placement of ferrite beads at every entry location of a circuit
would have destroyed the circuit of the AAPA for its intended purpose.
Appellant next argues the Examiner has not explained how the prior
art supports a reasonable expectation of a specific strategy for placing ferrite
beads because Takayanagi regards a single semiconductor element while the
AAPA is directed to a complex circuit presumably including thousands of
semiconductor elements. Reply Br. 2—3. This argument is also not
persuasive of reversible error because Takayanagi and the AAPA provide
guidance for where ferrite beads can be located, as discussed above, to
prevent noise from high frequency (e.g., radiofrequency) sources.
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Application 13/026,195
Appellant further argues Takayanagi is non-analogous art because
Takayanagi is not in the same field of endeavor as the claimed oscillator
circuit and because Takayanagi is not reasonably pertinent to the problem
faced by the inventor, which relates to errors in a clock circuit of a metering
processing chip due to high frequencies developed on a ground plane.
Appeal Br. 13—14; Reply Br. 7—8. The Examiner responds by finding
Takayanagi is reasonably pertinent to the problem faced by the inventor
because the inventor dealt with high frequency noise propagating into an
oscillating circuit through connection to ground. Ans. 9.
“A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). If
a reference disclosure relates to the same problem as that addressed by the
claimed invention, “that fact supports use of that reference in an obviousness
rejection. An inventor may well have been motivated to consider the
reference when making his invention.” Id. Here, we agree with the
Examiner that the problem faced by the inventor regards frequency noise
propagating into an oscillating circuit through connection to ground. Ans. 9.
Takayanagi’s teaching addresses high frequency noise entering a circuit at
contact points and eliminating the noise via ferrite beads. Ans. 10;
Takayanagi abstract. Thus, to the extent that Takayanagi may be in a
different field of endeavor than oscillation circuits for metering devices,
Takayanagi would have commended itself to an inventor’s attention when
considering the inventor’s problem due to Takayanagi’s use of ferrite beads
to prevent high frequency noise.
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Application 13/026,195
Appellant additionally argues Takayanagi is directed to a power
device. Appeal Br. 10. However, as stated by the Examiner at page 4 of the
Answer, there is no support for this argument because Takayanagi discloses
a semiconductor device subject to external high frequency noise.
As Appellant has not identified reversible error in the Examiner’s
rejection, we will sustain this rejection although our reasoning differs from
that of the Examiner in certain aspects. As such, pursuant to our authority
under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 8,
13, 14, 16—18, 20, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over
AAPA in view of Takayanagi.
Rejection of claims 1—7 over Porter, Yamamoto, and Cook
Claims 1—7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Porter in view of Yamamoto and Cook. Appellant does not argue the claims
separately. Appeal Br. 23. We select claim 1 as representative for resolving
the issues on appeal.
The Examiner finds Porter discloses an arrangement for use in an
electricity meter including a metrology circuit but does not disclose an
oscillator circuit as recited in claim 1. Final Act. 21—22. The Examiner
finds Yamamoto discloses an oscillator circuit including a crystal resonator
coupled between nodes, an amplifier circuit coupled between the nodes, a
capacitor, and a circuit path from a first node to ground through the
capacitor. Id. at 23. The Examiner concludes it would have been obvious to
modify the arrangement of Porter to include the oscillator circuit of
Yamamoto to provide a stable reference signal for operating a processor
and/or wireless communication circuitry. Id. at 24.
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Application 13/026,195
We note Yamamoto further discloses noise can be caused by an
alternating current power supply and due to switching noise from a
semiconductor integrated circuit. Yamamoto 112. Yamamoto teaches that
this noise is transmitted from capacitors of an oscillation circuit, as well as
from the power supply, when an oscillation circuit is mounted to a printed
circuit board including the semiconductor integrated circuit. Id. at 1 13. To
alleviate such noise, Yamamoto discloses using anti-noise elements, such as
a ferrite bead. Id. at 114.
However, the Examiner finds Yamamoto does not disclose a first
impedance element in the first circuit path from the node to ground through
the capacitor. Final Act. 24. The Examiner finds Cook discloses “an
arrangement for preventing high frequency noise from influencing a
frequency-dependent circuit comprising ferrite beads at all points of contact
where noise may enter said circuit.” Id. Cook relates to wireless charging
devices and discloses rectifier circuits operating at high frequency may
experience unwanted harmonics. Cook H 9, 75. Cook discloses the use of
high frequency (HF) shielding and ultra-high frequency (UHF) ferrite beads
to block harmonics content at circuit terminals. Id. at 176. Thus, Cook
discloses the use of ferrite beads at circuit terminals to block ultra-high
frequency harmonics.
It would have been obvious to one of ordinary skill in the art to
include ferrite beads as anti-noise elements at circuit terminals in the circuit
path of the oscillation circuit of Porter as modified by Yamamoto (i.e., at
nodes) to block ultra-high frequency harmonics.
Appellant contends the combination of Porter, Yamamoto, and Cook
does not disclose a circuit path through a first node, a capacitor, and a
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Application 13/026,195
second node that passes through a first impedance circuit, as recited in claim
1, because Cook does not teach using ferrite beads at all points of contact
where noise may enter a circuit, as found by the Examiner. Appeal Br. 15—
16. Appellant also asserts the combination of the applied references would
result in placing ferrite beads at terminals of a rectifier circuit in Yamamoto,
not in a clock circuit, which leads one away from the claimed arrangement
when one considers the applied references as a whole. Id. at 16—18.
Appellant’s arguments are not persuasive of a reversible error. The
Examiner finds Yamamoto discloses high frequency noise can be
transmitted through capacitors from the ground, which is superimposed on
an oscillation signal generated by an oscillation circuit, which in turn
adversely influences a resulting clock signal. Ans. 11. The Examiner finds
Cook discloses the use of ferrite beads to prevent high frequency noise from
entering a circuit where the noise may cause undesired interference,
particularly at circuit terminals. Id. at 12. Moreover, the Examiner notes
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton” and that an obviousness determination requires consideration of
“the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 15, citing 550 U.S. at 418, 421. The Examiner
concludes, in view of the disclosures of Yamamoto and Cook and the
creativity of one of ordinary skill in the art, it would have been obvious to
use ferrite beads at contact points where high frequency noise may enter the
oscillator circuit, such as between the ground and a first capacitor, not only
at terminals of a rectifier circuit. Id. at 15. Appellant has not responded to
the Examiner’s findings and therefore has not directed us to a reversible
error in the Examiner’s position.
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Application 13/026,195
Appellant further contends Cook is non-analogous because it is not in
the same field of endeavor and is not reasonably pertinent to the problem
faced by the inventor. Appeal Br. 18. Specifically, Appellant argues Cook
is a wireless power transfer device, not an oscillator circuit, and relates to
high frequency harmonics created by hard current switching from
rectification, not problems due to radio frequency noise in a clock circuit.
Appeal Br. 18—20; Reply Br. 8—9.
The Examiner finds the inventor was faced with the problem of high
frequency noise propagating into an oscillating circuit and adversely
influencing its operation. Ans. 18. The Examiner finds Cook is reasonably
pertinent to the inventor’s problem because Cook regards the problem of
high frequency noise propagating into a sensitive circuit and causing
interference. Id. at 18—19. To the extent that Cook may be in a different
field of endeavor than oscillation circuits, Cook would have commended
itself to an inventor’s attention when considering the inventor’s problem due
to Cook’s disclosure of ferrite beads to prevent interference from high
frequency noise. Therefore, Appellant has not demonstrated Cook is non-
analogous art.
In addition, Appellant argues Cook solves a problem not present in
Yamamoto and therefore there would have been no reason to modify
Yamamoto in view of Cook. Appeal Br. 20—22; Reply Br. 10. This
argument does not direct us to a reversible error in the rejection because
Cook discloses the use of ultra-high frequency ferrite beads to suppress
harmonics and Yamamoto discloses high frequency signals as a problem in
paragraph 15, as found by the Examiner in the Answer. Ans. 11—12.
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Application 13/026,195
As Appellant has not identified reversible error in the Examiner’s
rejection, we will sustain this rejection although our findings and reasoning
differ from that of the Examiner in certain aspects. As such, pursuant to our
authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of
claims 1—7 under 35 U.S.C. § 103(a) as unpatentable over Porter in view of
Yamamoto and Cook.
Remaining Rejections under § 103(a)
Rejections (3)—(8), as set forth above remain unaddressed. For the
rejection of independent claims 8 and 16 under § 103(a) over the
combination of Yamamoto and Cook, Appellant cites the arguments made
for the rejection of claim 1 under § 103(a) over the combination of Porter,
Yamamoto, and Cook. Appeal Br. 22—23. Appellant further argues claims
13, 14, 17—20, 23, and 24 depend from one of independent claims 1, 8, or 16
and because the rejections of the independent claims should be reversed, the
rejections of the dependent claims should be as well. Id. at 23.
For the reasons discussed above, the arguments against the rejection
of claim 8 over the combination of the AAPA and Takayanagi and the
rejection of claim 1 over the combination of Porter, Yamamoto, and Cook
do not present a reversible error. Therefore, we sustain the remaining §
103(a) rejections. However, because claims 13, 14, 17—20, 23, and 24
depend from one of independent claims 1, 8, or 16 and those independent
claims are subject to a new ground of rejection, our decision to sustain
rejections (3)—(8) also amounts to a new ground of rejection.
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DECISION
On the record before us, we affirm the Examiner’s decision rejecting
claims 1—8, 13, 14, 16—20, 23, and 24 as unpatentable under 35 U.S.C. §
103, but because our findings and reasoning differ from that of the
Examiner, we designate the affirmance as involving new grounds of
rejection.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2014). This section provides that “[a] new ground of rejection . .
. shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the 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. . . .
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) (2014).
AFFIRMED:
NEW GROUND OF REJECTION. 37 C.F.R, $ 41.50(b)
15