Ex Parte Basche

Patent Trial and Appeal Board

Oct 30, 2013

11710245 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TODD BASCHE
____________

Appeal 2011-011624
Application 11/710,245
Technology Center 3600
____________

Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
BART A. GERSTENBLITH, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Todd Basche (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-6, 13-18, 20, 22, 23, 29-35, 39-41,
43-50, 52-58, and 60-63. Claims 51 and 59 have been withdrawn and claims
7-12, 19, 21, 24-28, 36-38, and 42 have been canceled. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to “combination locking devices having
textual combinations.” Spec. 1, para. [0002] and fig. 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A word-based combination lock device, comprising:
a body;
a locking member operably coupled to the body; and
at least two wheels operatively coupled to the locking
member and to the body, each of the wheels being rotatable
relative to the body between a locked position wherein the
locking member is locked relative to the body and an unlocked
position wherein the locking member is unlocked relative to the
body, wherein each wheel includes a plurality of letters at a
plurality of letter positions spaced apart on the wheel, wherein
the letters on each wheel are movable relative to the body upon
rotating the wheels to align adjacent letter positions of adjacent
wheels so the letters at the adjacent letter positions form at least
one aligned letter sequence across the adjacent letter positions
relative to the body, and wherein the aligned letter sequence on
the adjacent wheels is configured to spell a first word displayed
on a first row of letters;
wherein the wheels are configured with the letters on the
wheels being in a selected arrangement whereby the wheels are
positionable relative to each other to align adjacent letter
positions with the letters thereon to display one or more
selected sequences of letters at the first row to spell any one
word of a plurality of words that can be used as a combination
for the locking member; and
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wherein the wheels are configured with the letters on the
wheels being in the selected arrangement of letters with
selected letters excluded therefrom whereby the wheels can be
in any position to align any series of adjacent letter positions
with the letters thereon and the selected sequence of letters
along the adjacent letter positions will not spell any one of a
predetermined group of excluded words including words that
could be deemed offensive to any race, religion, sex, ethnic
group or nationality.

REJECTIONS
The following rejections are before us for review:1
I. The Examiner rejected claims 1-6, 13-18, 20, 22, 23, 29-35, 39-
41, 43-50, 52-58, and 60-63 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement.2
II. The Examiner rejected claims 29-35 and 58 under 35 U.S.C.
§ 112, second paragraph, for being indefinite.3
III. The Examiner rejected claims 1-6, 13, 14, 16, 18, 23, 29-33, 35,
39-41, 43-50, 52, 62, and 63 under 35 U.S.C. § 103(a) as
unpatentable over Basche (US 6,621,405 B1, issued Sep. 16,
2003), Hurwitt (US 3,906,758, issued Sept. 23, 1975), Design

1 Claims 54, 62, and 63 are objected to by the Examiner. See Ans. 4.
However, the Examiner’s objection is a petitionable matter and as such, it is
not within the jurisdiction of the Board. In re Mindick, 371 F.2d 892, 894
(CCPA 1967).
2 The rejection of claims 51 and 59 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement has
been withdrawn by the Examiner. See Ans. 3.
3 The rejection of claims 54, 62, and 63 under 35 U.S.C. § 112, second
paragraph, for being indefinite, has been withdrawn by the Examiner. See
id.
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Choice, and in the alternative, either of Lutnick (US
2008/0167106 A1, published Jul. 10, 2008), Ellis (US
2004/0111353 A1, published Jun. 10, 2004), or Poslinski (US
2006/0048184 A1, published Mar. 2, 2006).
IV. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Basche, Hurwitt, Design Choice, and in the
alternative, either of Lutnick, Ellis, or Poslinski, and either of
Atkinson (US 3,611,761, issued Oct. 12, 1971) or Baker (US
1,238,247, issued Aug. 28, 1917).
V. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Basche, Hurwitt, Design Choice, and in the
alternative, either of Lutnick, Ellis, or Poslinski, and Baker.
VI. The Examiner rejected claim 34 under 35 U.S.C. § 103(a) as
unpatentable over Basche, Hurwitt, Design Choice, and in the
alternative, either of Lutnick, Ellis, or Poslinski, further in view
of Watts (US 3,497,059, issued Feb. 24, 1970) and Hoover (US
3,554,367, issued Jan. 12, 1971).
VII. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Basche, Hurwitt, Design Choice, and in the
alternative, either of Lutnick, Ellis, or Poslinski, and Freedman
(US 2007/0003912 A1, published Jan. 4, 2007).
VIII. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Basche, Hurwitt, Design Choice, and in the
alternative, either of Lutnick, Ellis, or Poslinski, and Pimpo (US
6,021,653, issued Feb. 8, 2000).
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IX. The Examiner rejected claims 53 and 55-58 under 35 U.S.C.
§ 103(a) as unpatentable over Basche, Design Choice, and in
the alternative, either of Lutnick, Ellis, or Poslinski.
X. The Examiner rejected claim 54 under 35 U.S.C. § 103(a) as
unpatentable over Basche, Design Choice, and in the
alternative, either of Lutnick, Ellis, or Poslinski, and Hurwitt.
XI. The Examiner rejected claim 60 under 35 U.S.C. § 103(a) as
unpatentable over Basche, Design Choice, and in the
alternative, either of Lutnick, Ellis, or Poslinski, and Craske
(US 4,249,469, issued Feb. 10, 1981).
XII. The Examiner rejected claim 61 under 35 U.S.C. § 103(a) as
unpatentable over Basche, Design Choice, and in the
alternative, either of Lutnick, Ellis, or Poslinski, and either
Atkinson or Baker.

SUMMARY OF DECISION
We AFFIRM and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

ANALYSIS
Rejection I
The Examiner found that the original disclosure fails to support the
limitation of “words that could be deemed offensive to any race, religion,
sex, ethnic group or nationality.” Ans. 5. According to the Examiner,
“‘words that could be deemed offensive to any race, religion, sex, ethnic
group or nationality’ goes beyond ‘swear,’ ‘vulgar’ and ‘objectionable’
words.” Ans. 12.
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In response, Appellant argues that because the Specification describes
“vulgar,” “swear,” and “objectionable” words, Appellant’s Specification
“include[s] language that could be deemed offensive to any race, religion,
sex, ethnic group or nationality.” App. Br. 15; see also Spec. 8, para.
[0025]. Appellant further notes that Section 608 of THE MANUAL OF
PATENT EXAMINING PROCEDURE (MPEP) “acknowledges that
‘language that could be deemed offensive to any race, religion, sex, ethnic
group, or nationality’ constitutes ‘objectionable’ language.”4 Reply Br. 2;
see also App. Br. 14-15.
It is well settled that the fundamental factual inquiry is whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, applicant was in possession of the invention as
now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991). “The invention is, for purposes of the ‘written description’
inquiry, whatever is now claimed.” Id.
Here, Appellant’s Specification describes “objectionable, vulgar or
obscene words” (see Spec. 8, para. [0025]), wherein “objectionable words
include at least one of swear words and vulgar words” (see Spec. 15, [c8]).
Appellant’s Specification further provides several examples of
“objectionable, vulgar or obscene words.” See Spec. 8, para., [0025]. Thus,
Appellant’s Specification does not provide a description for “objectionable”
words beyond that of swear, vulgar, and obscene words. As such, we do not
agree with Appellant that “objectionable” words, as used in Appellant’s

4 “If during the course of examination of a patent application, an
examiner notes the use of language that could be deemed offensive to any
race, religion, sex, ethnic group, or nationality, he or she should object to the
use of the language as failing to comply with the Rules of Practice.” MPEP,
8th ed., Rev. 9, August 2012.
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Specification, constitute words “that could be deemed offensive to any race,
religion, sex, ethnic group or nationality.” See Reply Br. 2. Stated
otherwise, “words that could be deemed offensive to any race, religion, sex,
ethnic group or nationality” do not have to be swear, vulgar, and obscene
words, as described in Appellant’s Specification. Common, everyday words
that are not swear, vulgar, or obscene words can have secondary meanings
that “could be deemed offensive to any race, religion, sex, ethnic group or
nationality.” We thus agree with the Examiner that “‘words that could be
deemed offensive to any race, religion, sex, ethnic group or nationality’ goes
beyond ‘swear,’ ‘vulgar’ and ‘objectionable’ words.” Ans. 12.
In conclusion, for the foregoing reasons, Appellant’s Specification
does not reasonably convey to those skilled in the art that Appellant had
possession of the subject matter of claims 1-6, 13-18, 20, 22, 23, 29-35, 39-
41, 43-50, 52-58, and 60-63 as of the filing date of the present application.
Therefore, we sustain the rejection of claims 1-6, 13-18, 20, 22, 23, 29-35,
39-41, 43-50, 52-58, and 60-63 under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement.

Rejection II
Claims 29-35
Appellant does not set forth any arguments with respect to the
Examiner’s rejection of claims 29-35 for being indefinite. See App. Br. 10
n.1, 15-16. We therefore summarily affirm the Examiner’s rejection of
claims 29-35 under 35 U.S.C. § 112, second paragraph, for being indefinite.

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Claim 58
The Examiner found that “[t]he scope of claim 58 is unclear, as to
what constitutes a text messaging acronym, and what does not.” Ans. 5.
According to the Examiner, because “an on-line list of acronyms is
constantly subject to change . . . the claiming of a text messaging acronym is
too subjective, and not known to everyone.” Ans. 12-13.
Although we appreciate the Examiner’s position that acronyms can
change, nonetheless, the test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). In this case, an ordinary and customary meaning of the
term “acronym” is “a word (as NATO, radar, or laser) formed from the
initial letter or letters of each of the successive parts or major parts of a
compound term; also: an abbreviation (as FBI) formed from initial letters.”
Merriam Webster’s Collegiate Dictionary (10th Ed. 1997). Appellant’s
Specification provides examples of acronyms, such as, “4EVER (meaning
‘forever’), 2NITE (meaning ‘tonight’), and 14AAA41 (meaning ‘one for all
and all for one’).” Spec. 11, para. [0032]. We thus agree with Appellant
that the phrase “‘text messaging acronym’” is sufficiently clear and definite
as to apprise one of ordinary skill in the art of the claim’s scope.” App. Br.
17. As such, we shall not sustain the indefiniteness rejection of claim 58
under 35 U.S.C. § 112, second paragraph.

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Rejection III
Claim 1
The Examiner found that Basche discloses a customizable
combination locking system having tumblers with 10 positions and letters
thereon that can spell a plurality of words. Ans. 6; see also Basche, Abstract
and fig. 2. Basche also discloses that the letters on the tumblers are chosen
based on a frequency count of each letter within words determined from a
list of desired words. Ans. 6; see also Basche, col. 3, ll. 6-20 and col. 4, ll.
50-53. However, according to the Examiner, Basche fails to disclose
excluding specific letters used to spell words “that could be deemed
offensive to any race, religion, sex, ethnic group or nationality.” Ans. 6.
Nonetheless, the Examiner concluded that excluding specific letters from the
tumblers of Basche “is regarded as an obvious matter of design choice, and
the particular words allowed or excluded is regarded as printed matter, or a
lack of printed matter, of no patentable significance.” Id. (citing In re
Montgomery, 102 USPQ 248 (CCPA 1954)). In the alternative, the
Examiner found that each of Lutnick, Ellis, and Poslinski discloses “that it is
well known to exclude objectionable words.” Ans. 7. Thus, the Examiner
concluded that it would have been obvious for a person of ordinary skill in
the art “to exclude objectionable words when choosing the word listings of
Basche et al., in view of the teaching of either Lutnick et al, Ellis et al or
Poslinski et al, to provide expected results, particularly since Basche teaches
a use intended for children.” Id. (citing Basche, col. 1, ll. 34-35).
First, Appellant argues that Basche fails to disclose “restricting the
letter sequences to [e]nsure that [an] offensive word cannot be spelled” (see
App. Br. 27) and moreover, Basche teaches against restricting letters
because Basche wants to “maximize the number of words that appear on the
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wheels” (see App. Br. 28 and 35). This argument is not persuasive because
Appellant cannot show nonobviousness by attacking Basche individually
when the rejection is based on a modification or a combination of Basche
with another reference and furthermore, Appellant does not point to any
passage in Basche that “criticize[s], discredit[s] or otherwise discourage[s]”
restricting objectionable words when creating a list of desired words. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Second, Appellant argues that the Examiner has failed to establish a
prima facie case of obviousness for the claimed subject matter on the ground
that Appellant’s lock is a matter of design choice, because the Examiner has
not provided any reason to support this conclusion. App. Br. 28-29.
According to Appellant, the Examiner’s reliance on In re Montgomery is
improper because “[t]he claims . . . do not expressly claim[] which letter
must be excluded from which wheel,” but rather the “structural attribute of
the relationship between the wheels” (see App. Br. 31), namely, “the
orientation and structural interaction of the wheels and the letter sequences
. . . in locked and unlocked positions” (see App. Br. 30).
We are not persuaded by Appellant’s arguments because although we
appreciate that independent claim 1 does not require that specific letters be
excluded, nonetheless, it requires that the selected letters “will not spell any
one of a predetermined group of excluded words including words that could
be deemed offensive to any race, religion, sex, ethnic group or nationality.”
App. Br., Clms. App’x. Thus, claim 1 does require that specific words be
excluded, namely, “words that could be deemed offensive to any race,
religion, sex, ethnic group or nationality.” Determining whether a word
“could be deemed offensive to any race, religion, sex, ethnic group or
nationality” involves a distinction that is discernible only within the human
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mind and therefore does not patentably distinguish the claimed locking
device of independent claim 1 over the locking mechanism of Basche. See
In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969)). Furthermore, whether specific letters
are included or excluded from the wheels of the locking device of
independent claim 1 has no bearing on the lock’s ultimate function and the
locking device would function in the same manner, namely, by physical
alignment of the wheels. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004). Therefore, for the foregoing reasons, we do not agree with
Appellant’s position that the “letters [of independent claim 1] do in fact
define structural features” (see App. Br. 30) and hence, we are not persuaded
that the Examiner’s reliance on In re Montgomery was improper. We thus
agree with the Examiner that choosing letters for each of Basche’s tumblers
would have been obvious to a person of ordinary skill in the art because “the
particular words allowed or excluded [are] regarded as printed matter, or a
lack of printed matter, of no patentable significance.” Ans. 14.
Third, Appellant argues that neither of Lutnick, Ellis, nor Poslinski
discloses “intentionally excluding single letters to ensure proactively that
objectionable words cannot be spelled in the first place.” App. Br. 32.
Thus, according to Appellant, the Examiner’s proposed combination of
Basche, Hurwitt, and either Lutnick, Ellis, or Poslinski “would teach one
skilled in the art to inspection/screening/filtering the lock after the words
have been created.” Id. We disagree with Appellant’s argument because
obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981). As noted by the Examiner, each of
Lutnick, Ellis, and Poslinski discloses “that it is well known to exclude
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objectionable words.” Ans. 7 (citing Lutnick, para. [0117]; Ellis, para.
[0049]; and Poslinski, para. [0078]). Thus, we agree with the Examiner that
the combined teachings of Basche, Hurwitt, and either Lutnick, Ellis, or
Poslinski would teach one skilled in the art to exclude objectionable words
from Basche’s list of desired words. See id.
Fourth, Appellant argues that the Examiner only arrives at the
conclusion of obviousness due to hindsight. App. Br. 33-34. However, the
Examiner has provided a reason (to exclude objectionable words) with
rational underpinning (the locking device is used by children). See Ans. 7;
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Appellant has not persuasively argued that the Examiner’s conclusion lacks
rational underpinning.
Lastly, Appellant argues that even if objectionable words are excluded
from the word list of Basche, it “would not ensure that objectionable words
could not be spelled with the remaining letters selected from the remaining
words in a manner based on letter frequency” (see App. Br. 36) because
“selected letters are [not] excluded from the wheels” (see Reply Br. 8).
However, for the reasons set forth supra, whether specific letters are
included or excluded from the wheels of the locking device of independent
claim 1 has no bearing on the lock’s ultimate function and the locking device
would function in the same manner, namely, by physical alignment of the
wheels. Moreover, Appellant has not shown that excluding letters that form
objectionable words would have been beyond the technical grasp of a person
of ordinary skill in the art. Therefore, we agree with the Examiner that a
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person of ordinary skill in the art would recognize that improving Basche’s
customized lock, specifically when customized for use by children (see
Basche, col. 1, ll. 34-36), would consider the teachings of Lutnick, Ellis, or
Poslinski “to ensure that words cannot be spelled which would be offensive
to children.” Ans. 13.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Basche,
Hurwitt, Design Choice, and in the alternative, either of Lutnick, Ellis, or
Poslinski.

Claims 2-6, 13, 14, 16, 18, 23, 29-33, 35, 39-41, 43-50, 52, 62, and 635
Appellant fails to make any other substantive arguments. App. Br.
37-39. Accordingly, for the foregoing reasons, we likewise sustain the
rejection of claims 2-6, 13, 14, 16, 18, 23, 29-33, 35, 39-41, 43-50, 52, 62,
and 63 over the combined teachings of Basche, Hurwitt, and Design Choice
or in the alternative either of Lutnick, Ellis, or Poslinski.

Rejections IV, V, and VII-XII
Appellant relies on the arguments presented supra. App. Br. 39-41
and 43-45. Accordingly, for the same reasons, we likewise sustain these
rejections.

5 Appellant incorrectly includes claim 53. However, claim 53 is not
part of this rejection. Compare App. Br. 38-39 with Ans. 5. Appellant also
fails to consider claim 52 as part of this rejection. Compare App. Br. 39
with Ans. 5. For the purpose of this Appeal, we shall consider Appellant’s
omission as a typographical error.
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Rejection VI
Appellant argues that “[n]one of the references . . . teach or suggest
packaging a lock as claimed so that at least two or more words are
simultaneously displayed and visible to a person looking at the package.”
App. Br. 42-43. Such an argument appears to be holding the Examiner to
the old TSM standard; such a teaching is not required. KSR, 550 U.S. at 415
(“We begin by rejecting the rigid [application and requirement of a TSM to
combine known elements in order to show obviousness].”). The proper
inquiry is whether the Examiner has articulated adequate reasoning based on
a rational underpinning to explain why a person of ordinary skill in the art
would have been led to combine Basche, Hurwitt, Design Choice, and in the
alternative, either of Lutnick, Ellis, or Poslinski, Watts, and Hoover. See
KSR, 550 U.S. at 418. In this case, we agree with the Examiner that:
surrounding substantially the entire body of the
lock of Basche et al as modified by Hurwitt with a
packaging material in view of the teaching of
Watts, and further including modifying such
packaging material to be transparent as taught by
Hoover, would clearly teach at least two letter
sequences as being visible to a person looking at
the packaged lock of Basche et al.
Ans. 16.
Appellant has not provided any persuasive evidence or technical reasoning
to show error in the Examiner’s position. Therefore, we sustain the rejection
of claim 34 under 35 U.S.C. § 103(a) as unpatentable over Basche, Hurwitt,
Design Choice, and in the alternative, either of Lutnick, Ellis, or Poslinski,
Watts, and Hoover.

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NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Claims 1-6, 13-18, 20, 22, 23, 29-35, 39-41, 43-50, 52-58, and 60-63
are rejected under 35 U.S.C. § 112, second paragraph, for being indefinite.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must make it clear what subject matter the claims encompass. In re
Hammack, 427 F.2d 1378 (CCPA 1970). The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted).
Independent claims 1, 29, 39, 40, 44, and 53 require a word (as per
claim 44), words (as per claims 1, 29, 39, 40), or symbol sequences (as per
claim 53) that “could be deemed offensive to any race, religion, sex, ethnic
group or nationality.” Appellant’s Specification describes “objectionable,
vulgar or obscene words” (see Spec. 8, para. [0025]), wherein “objectionable
words include at least one of swear words and vulgar words” (see Spec. 15,
[c8]). Appellant’s Specification further provides several examples of
“objectionable, vulgar or obscene words” (see Spec. 8, para., [0025]).
However, Appellant’s disclosure does not provide any indication as to what
constitutes a word (as per claim 44), words (as per claims 1, 29, 39, and 40),
or symbol sequences (as per claim 53) that “could be deemed offensive to
any race, religion, sex, ethnic group or nationality.” Common, everyday
words that are not swear, vulgar, or obscene words can have secondary
meanings that “could be deemed offensive to any race, religion, sex, ethnic
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group or nationality.” A word regarded as offensive by one person may not
be considered offensive by another person. Moreover, the phrase “could be
deemed offensive” reflects a highly subjective determination. In other
words, we conclude that the limitations of a word (as per claim 44), words
(as per claims 1, 29, 39, and 40), or symbol sequences (as per claim 53) that
“could be deemed offensive to any race, religion, sex, ethnic group or
nationality,” as used in the claims, when construed in view of Appellant’s
disclosure, lack sufficient precision to permit one endeavoring to practice the
invention to determine the metes and bounds thereof.
In light of the above, we conclude that independent claims 1, 29, 39,
40, 44, and 53 and dependent claims 2-6, 13-18, 20, 22, 23, 30-35, 41, 43,
45-50, 52, 54-58, and 60-63 are indefinite under 35 U.S.C. § 112, second
paragraph, for failing to particularly point and distinctly claim the subject
matter which Appellant regards as the invention.

SUMMARY
The Examiner’s decision to reject claims 1-6, 13-18, 20, 22, 23, 29-
35, 39-41, 43-50, 52-58, and 60-63 is affirmed.
We enter a new ground of rejection of claims 1-6, 13-18, 20, 22, 23,
29-35, 39-41, 43-50, 52-58, and 60-63 under 35 U.S.C. § 112, second
paragraph, for being indefinite.
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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
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the following two options with respect to the new grounds 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), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the 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; 37 C.F.R. § 41.50(b)

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