Ex Parte Bond

Patent Trial and Appeal Board

Aug 31, 2015

12767199 (P.T.A.B. Aug. 31, 2015)

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.
12/767,199 04/26/2010 Jonathan Bond 016169.086047 3200
61494 7590 09/01/2015
Ober, kaler, Grimes & Shriver
100 Light Street
BALTIMORE, MD 21202
EXAMINER
CHAMBERS, MICHAEL S
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/01/2015 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 JONATHAN BOND
____________

Appeal 2012-010094
Application 12/767,199
Technology Center 3700
____________

Before NEAL E. ABRAMS, MICHAEL L. HOELTER,
and THOMAS F. SMEGAL, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Jonathan Bond (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–9 and 11–20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and add a new rejection under 37 C.F.R.
§ 41.50(b).
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THE INVENTION
The claimed invention is directed to a sports equipment stick handle.
Claims 1, 19, and 20, reproduced below, is illustrative of the subject
matter on appeal.
1. A sports equipment stick handle, comprising:
a tubular shaft having a cross section comprising at least
a first wall and a second wall that intersect at a corner, the
corner having at least one reinforcement portion defined by a
buildup of material running lengthwise along the interior corner
of said first wall and second wall and occupying an included
angle there between that makes a thickness of shaft at said
corner greater than a thickness of said first and second walls.
19. A sports equipment stick handle, comprising:
a tubular shaft having a polygonal cross section defined
by a plurality of elongate wall sections integrally joined at a
corresponding plurality of linear junctures, thereby defining a
corresponding plurality of elongate corners running end-to-end,
said tubular shaft having a corresponding plurality of
reinforcing fillets occupying an included angle of each of said
corners from end-to-end and increasing a thickness of shaft at
said corner in excess of a thickness of said first and second
walls.
20. A sports equipment stick handle, comprising:
a tubular shaft having a polygonal cross section defined
by a plurality of elongate wall sections integrally joined at a
corresponding plurality of linear junctures, thereby defining a
corresponding plurality of elongate corners running end-to-end,
said tubular shaft having a corresponding plurality of
reinforcing beads occupying an included angle of each of said
corners from end-to-end and increasing a thickness of shaft at
said corner in excess of a thickness of said first and second
walls.

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THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Dornier US 1,928,009 Sep. 26, 1933
Robinson
Wilcox
Hoult
Lewis
Kuebler
Brine
US 1,930,285
US 1,963,057
US 3,702,702
US 4,739,994
US 5,749,798
US 6,752,730 B1
Oct. 10, 1933
June 12, 1934
Nov. 14, 1972
Apr. 26,1988
May 12, 1998
Jun. 22, 2004

THE REJECTIONS
The following rejections stand under 35 U.S.C. § 102(b):
Claims 1–6, 9, and 16–18 on the basis of Wilcox.
Claims 1–6, 9, and 16–18 on the basis of Dornier.
The following rejections stand under 35 U.S.C. § 103(a):
Claims 1–9 and 11–17 on the basis of Brine and Dornier.
Claim 18 on the basis of Brine, Dornier and Lewis.
Claims 1–9 and 11–18 on the basis of Brine and Robinson.
Claim 18 on the basis of Brine, Robinson and Lewis.
Claim 19 on the basis of Kuebler and Hoult.
Claim 20 on the basis of Brine and Lewis.
OPINION
Claims 1–6, 9, and 16–18
Anticipation – Wilcox
Wilcox is directed to a method of forming tubular structural elements,
and discloses in Fig. 8, a tube having a circular cross-section 23 which is
crimped together at four locations 21. The Examiner has designated the base
of each crimped portions as a “corner,” at which first and second walls meet,
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and has taken the position that each of the crimped portions constitute a
“reinforcement portion” as recited in claim 1. See Ans. 5–6 and 10–11.
Appellant argues that the Wilcox cylindrical tube does not have first
and second wall portions “that intersect at a corner,” nor “a buildup of
material running lengthwise along the interior corner of said first wall
and…occupying an included angle there between,” as required by claim 1.
Br. 6.
We agree with Appellant, and this rejection of independent claim 1
and dependent claims 2–6, 9, and 16–18 is not sustained.
Claims 1–6, 9, and 16–18
Anticipation – Dornier
All of the claims in this rejection depend from claim 1. Separate
arguments are provided only for claims 4, 6, 9, and 16.
The extent of Appellant’s arguments regarding this rejection (in which
the Examiner references Dornier Figure 11 (Final Act. 3)) is that it fails
because Dornier is not analogous art since it is directed to aircraft wing
construction, whereas Appellant’s claims are to a sports stick handle, and the
Examiner has ignored the claim preamble, which limits the invention to a
sports equipment stick, and thus disqualifies Dornier as a reference. See Br.
8–9.
With regard to the matter of nonanalogous art, as explained in MPEP
Section 2131.05:
“Arguments that the alleged anticipatory prior art is
‘nonanalogous art’ or ‘teaches away from the invention’ or is
not recognized as solving the problem solved by the claimed
invention, [are] not ‘germane’ to a rejection under section 102.”
Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct.
1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1,
7 (CCPA 1982)). See also State Contracting & Eng’ g Corp. v.
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Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d
1481, 1488 (Fed. Cir. 2003) (The question of whether a
reference is analogous art is not relevant to whether that
reference anticipates. A reference may be directed to an entirely
different problem than the one addressed by the inventor, or
may be from an entirely different field of endeavor than that of
the claimed invention, yet the reference is still anticipatory if it
explicitly or inherently discloses every limitation recited in the
claims.).
We agree with the Examiner that all of the structure recited in the
body of Appellant’s independent claim 1 is anticipated by Dornier, and
therefore Appellant’s arguments regarding Dornier being nonanalogous art
are not persuasive.
In Section 2111.02II, the MPEP also provides guidance regarding the
matter of the effect of the preamble of the claim upon the patentability of the
claim:
If the body of a claim fully and intrinsically sets forth all of the
limitations of the claimed invention, and the preamble merely
states, for example, the purpose or intended use of the
invention, rather than any distinct definition of any of the
claimed invention’s limitations, then the preamble is not
considered a limitation and is of no significance to claim
construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See
also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553
(Fed. Cir. 1997) (“where a patentee defines a structurally
complete invention in the claim body and uses the preamble
only to state a purpose or intended use for the invention, the
preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d
at 152, 88 USPQ2d at 480-81 (preamble is not a limitation
where claim is directed to a product and the preamble merely
recites a property inherent in an old product defined by the
remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591,
54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (holding that the
preamble phrase “which provides improved playing and
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handling characteristics” in a claim drawn to a head for a
lacrosse stick was not a claim limitation).
The body of Appellant’s claim 1 recites a structurally complete
invention comprising a tubular shaft having at least two sides intersecting to
form a corner, and a reinforcing portion occupying the included angle to
make the thickness of the shaft at the corner greater than the thickness of the
walls. It is our position that the preamble, which recites in its entirety “[a]
sports equipment stick handle, comprising,” merely indicates an intended
use for the tubular shaft defined in the body of the claim. Thus, Appellant’s
arguments on this subject also are not persuasive.
This rejection of independent claim 1 is sustained, as is the like
rejection of claims 2, 3, 5, 17 and 18, which depend from claim 1, and with
regard to which separate patentability has not been argued.
With regard to claim 4, Appellant argues that Dornier fails to
anticipate the recited subject matter because the reference fails to disclose a
“bead” that is a “convex easement,” as defined on page 3 of Appellant’s
Specification. Br. 9. We find no mention of a convex bead on page 3 of the
Specification, however, on page 7, in paragraph 28, it is explained that the
reinforcement “may be a concave easement (‘fillet”), convex easement
(“bead”), or diagonal easement” (emphasis added). In this regard:
Though understanding the claim language may be aided by
explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69
USPQ2d 1865, 1868 (Fed. Cir. 2004).
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That is the case here. The common applicable definition of
“bead” is “a projecting rim, band, or molding.”1 There is no
requirement in claim 4 that the “bead” be convex. It is our view that
the thickened portion at the joinder of the two walls in Dornier
constitutes a “bead,” for it occupies the included angle between the
intersecting walls and projects therefrom as would a molding. Thus, it
meets the claim language, which is broader than the description of the
bead provided in the discussion of embodiments disclosed in the
Specification. Further, regarding the terms “concave” and “convex,”
Appellant has not provided a frame of reference to employ when
ascertaining their meaning.
This rejection of claim 4 is sustained.
With regard to claim 6, Appellant argues that Dornier fails to disclose
that the reinforcement portion comprises “an elongate diagonal easement
occupying said included angle.” Id. We do not agree, for from our
perspective this limitation is clearly shown in Dornier’s Fig. 11.
This rejection of claim 6 is sustained.
Claim 9 depends from claim 1 through claim 4, and requires that “said
bead,” which is recited in claim 4, “has a convex surface contour about said
included angle,” which is set forth in claim 1 as comprising an “interior
corner” defined by two walls. The Examiner has found this limitation to be
disclosed by Dornier in the embodiment shown in Figure 10. Ans. 6.
Appellant urges that Dornier fails to disclose this limitation in the manner
required by the language of the claim. Br. 10. We agree. Although
Dornier’s Figure 10 discloses a reinforcing member 37 having an inwardly

1 See, for example, www.merriam-webster.com/dictionary/bead.
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projecting convex surface, it is located along the interior wall of a cylindrical
beam, and therefore is not in an included angle between walls, as required by
the claim. Moreover, the Examiner has not explained how this feature from
Figure 10 applies to the embodiment shown in Figure 11, in the context of
this Section 102 rejection.
This rejection of claim 9 is not sustained.
Regarding dependent claim 16, which depends from claim 6,
Appellant urges that Dornier fails to show “a surface contour” that
comprises “a straight line across said included angle,” as required by this
claim. Id. From our perspective, this feature is clearly disclosed in Donier’s
Figure 11.
This rejection of claim 16 is sustained.
In summary, this rejection of claims 1–6 and 16–18 is sustained, while
that of claim 9 is not sustained.
Claims 1–9 and 11–17
Obviousness – Brine and Dornier
All of the claims in this rejection depend from claim 1. Separate
arguments have not been provided for any of the dependent claims.
In this rejection of claim 1, the Examiner finds all of the structure to
be disclosed by Brine, except for the internal reinforcement elements.
However, it is the Examiner’s view that such is taught by Dornier, and it
would have been obvious to add internal corner reinforcements to the Brine
lacrosse stick “in order to provide the user with a sturdy device and increase
the ability of the device to not be damaged during play.” Ans. 6.
Appellant again argues that Dornier is nonanalogous art, and therefore
should not be applied against this claim, and that the Examiner’s position is
based upon hindsight, for no evidence has been offered that the problem of
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reinforcing sports sticks at the internal intersection of side walls was a
problem known in the art. See Br. 10–11.
A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention (even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). In order for a reference to be "reasonably pertinent"
to the problem, it must "logically have commended itself to an inventor's
attention in considering his problem." In re Icon Health and Fitness, Inc.,
496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d
656,658 (Fed. Cir. 1992)).
At the outset, we note that in the portion of the Specification entitled
“Description of the Background,” Appellant explains that it is desirable for
lacrosse sticks to be of light weight (spec. para. 3), that decreasing the wall
thickness to achieve lighter weight also decreases the handle’s strength,
rigidity, and durability (id. at para. 4), and that lacrosse sticks encounter
edge-to-edge impacts during play (id.). We therefore consider this to be
information that would have been known by one of ordinary skill in the
sports stick art at the time of Appellant’s invention. In furtherance of
providing a solution to these problems, Appellant has directed his inventive
efforts to providing a sports stick handle with “a substantial degree of
strength, rigidity, and durability to withstand these impacts and resist dents
(that lead to handle failure) while also minimizing stick weight.” Id. at Para.
4.
Dornier is directed to hollow beams “having thin walled webs,” and
teaches that the beam “is provided with thicker walls in those places which
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are subjected to particularly high stresses.” See page 1, ll. 1–23. A number
of manifestations of Dornier’s inventive concept are shown and described,
including in Figure 11 a hollow polygonal tube wherein reinforcement
elements are provided in each of the interior corners 38, which results in
thicker portions to resist high stresses at those points. Although Dornier
states that the disclosed beams are “particularly fit” for use in the
construction of aircraft (id. at ll. 10–12), the invention is not limited to this
use, as evidenced by the title of the invention, the opening lines of the
Specification, and the breadth of the claims, each of which are directed to
“[a] hollow structural metal beam.” It therefore is our view that Dornier
would have commended itself to Appellant in his quest to solve the problem
of strengthening hollow sports equipment stick handles, which are hollow
beams, against high stresses, while minimizing stick handle weight. Thus,
Dornier constitutes analogous art.
Brine is directed to a hollow handle for a lacrosse stick, and discloses
as prior art a stick handle comprising a polygonal cross section having eight
walls and internal corners. Col. 3, ll. 33-50; Figs. 1A and 1B. The
improvement provided by Brine is the addition of eight longitudinal ridges
40, the stated purpose of which is to improve the user’s grip to inhibit the
hands from rotating around the handle. Col. 1, ll. 44 -54; Figs. 2A and 2B.
From our perspective, one of ordinary skill in the art, seeking to solve the
known problem of strengthening a light weight handle to counter the stresses
applied thereon during the playing of games such as lacrosse, would have
found it obvious to strengthen the stick handles disclosed by Brine in
Figures 2A and 2B (as well as that in Figures 1A and 1B) by adding
longitudinal reinforcement elements at the internal intersections of the walls,
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occupying included angles therebetween, in view of the teachings of
Dornier.
Such being the case, this rejection of independent claim 1 is sustained.
In the absence of argument of the separate patentability of dependent claims
2–9 and 11–17 (see Br. 10–11), the like rejection of those claims also is
sustained.
Claim18
Obviousness – Brine, Dornier and Lewis
Claim 18 adds to claim 1 the requirement that the cross section of the
stick handle varies along its length. Appellant has not disputed the
Examiner’s finding that this is disclosed in Lewis, and that it would have
been obvious to have employed this feature in the modified Brine handle.
See Br. 11. This rejection is sustained.
Claims 1–9 and 11–18
Obviousness – Brine and Robinson
In this rejection of claim 1 the Examiner concludes that it would have
been obvious “to have employed the internal reinforcement portion of
Robinson with the [Brine] apparatus in order to provide the user with a
sturdy device and increase the ability of the device not to be damaged during
play,” citing Robinson’s Figures 6, 7 and 14. Ans. 7–8.
Appellant argues that the Brine handle is a single ply tube, whereas
Robinson’s reinforcement portions “comprise wires wrapped between layers
of a 2-ply cylindrical tube,” and that the resulting combination “fails to meet
the express limitations of claim 1,” and would simply provide a tubular stick
with internal wires providing no reinforcement. Br. 12. Appellant also
asserts that the Examiner has “failed to articulate how or why a person of
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ordinary skill in the art would modify the combined prior art teachings to
obtain the claimed invention.” Id. at 12.
In response to Appellant’s arguments, the Examiner focuses on the
embodiment shown in Robinson’s Figure 7, stating:
Robinson merely discloses that placing reinforcement members
on the interior of the sport handle is not novel. It would make
no sense to attempt to use a double walled member having wire
between the members with an extruded shaft. What would make
sense to one of ordinary skill in the art at the time of the
invention is to take the idea of additional internal
reinforcements from Robinson and include that idea when
extruding the shaft through an extrusion die.
Id. at 17.
A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have established the claimed subject
matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048,
1051 (CCPA 1976). Rejections on obviousness cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). It is our
view that the Examiner’s statement of the rejection, and the response to
Appellant’s arguments regarding the inapplicability of Robinson’s teaching
of reinforcing by means of wires wrapped between a two-ply tube, are not
supported by evidence or persuasive argument, and therefore constitute mere
conclusory statements upon which a rejection of obviousness cannot be
sustained.
Thus, a prima facie case of obviousness has not been established with
regard to the subject matter recited in Appellant’s independent claim 1, and
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this rejection of the parent claim and dependent claims 2–9 and 11–18 is not
sustained.
Claim 18
Obviousness – Brine, Robinson and Lewis
Claim 18 depends from claim 1, the rejection of which on the basis of
Brine and Robinson has not been sustained, for the reasons set forth supra.
The deficiencies in the rejection of claim 1 are not cured by consideration of
Lewis, which was added for its teaching of varying the cross section along
the length of the stick handle. This rejection is not sustained.
Claim 19
Obviousness – Kuebler and Hoult
In the statement of the rejection, the Examiner takes the position that
Hoult discloses the use of internal reinforcement portions, and concludes
that “[t]he exact position of [the] reinforcement portion [in the Kuebler
handle] would be a design choice.” Ans. 9. The Examiner goes on to state
that:
Kubeler clearly demonstrates a polygonal tubular shaft
but it does not have internal reinforcement members. Hoult
demonstrates that internal reinforcement members are well
known in the sports shaft art. The reinforcement members on
the exterior of the Kubeler device are at the intersection of the
corners of the octagonal shaft. One would assume if the
Kuebler artisan had determined an optimal place for these
members on the exterior of the shaft was at the intersection of
the corners, simple experimentation with the interior members
would have shown an optimal place for the interior
reinforcement members would also be at the intersection of the
corners.
Ans. 18.
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Appellant argues that the rejection is in error because Hoult’s fillets
are located in the middle of the walls and not at the corners, as claimed, and
asserts that:
To support a conclusion that a claim is directed to obvious
subject matter, i.e., that a feature is an obvious matter of design
choice, an Examiner must present a 'convincing line of
reasoning' as to why one of ordinary skill in the art would have
found the claimed feature to have been obvious. Ex parte Clapp,
227 U.S.P.Q. 972, 973 (BPAI 1985). No such line of reasoning
is here presented.
Br. 14.
Clearly, the strengthening ribs (44) shown in Hoult’s Figure 5, to
which the Examiner refers, do not occupy the “included angle” of each of
corners where wall sections are “integrally joined at a corresponding
plurality of linear junctures,” as required by claim 19. Nevertheless, the
Examiner has concluded that to position them in the locations specified in
claim 19 would have been an obvious matter of design choice. However, as
was the case in the rejection of claims 1–9 and 11–18 as being obvious in
view of Brine and Robinson, supra at 11–12, it is our view that the
Examiner’s conclusion is not supported by evidence or persuasive argument,
and therefore amounts to no more than conclusory statements which cannot
form the basis for a rejection.
The rejection of claim 19 is not sustained.

Claim 20
Obviousness – Brine and Lewis
The Examiner’s expression of the rejection of claim 20 is that, with
reference to Figure 3, “[i]t would have been obvious . . . to have employed
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the reinforcement projection of Lewis with the [Brine] apparatus in order to
provide the user with a sturdy device and increase user satisfaction with the
device” (Ans. 9), and that one of ordinary skill in the art would have simply
experimented until an optimal position was determined (Ans. 19).
Claim 20 differs from claim 19 by stating that the reinforcing
members are “beads.” As was the case with Hoult’s reinforcing members,
those disclosed in Lewis (32) also are not located in the manner required by
the claim, and therefore we agree with Appellant that the Examiner has
based the rejection on unsupported conclusory statements, and therefore it
will not be sustained.
NEW REJECTION UNDER 37 C.F.R. § 41.50(b)
Claims 19 and 20 are newly rejected under 35 U.S.C. § 102(b) as
being anticipated by Dornier U.S. Patent No. 1,928,009, issued September
26, 1933. At the outset, we reiterate our views, expressed supra at 5–6 with
regard to the Examiner’s rejections, that Dornier constitutes analogous art,
and that the preambles of Appellant’s claims 19 and 20 (“A sports
equipment stick handle”) are merely statements of intended use rather than
any distinct definition of any of the claimed invention’s limitations.
That being said, Dornier is directed to improvements in hollow metal
beams “made of a thin walled seamless tube” which can be of “any desired
polygonal section.” Page 1, ll. 13–16. Dornier teaches that “the finished
beam is provided with thicker walls in those places which are subjected to
particularly high stresses.” Id. at ll. 21–23. It is clear that Dornier discloses
in Figure 11 the cross section of a tubular shaft that meets all of the
requirements recited in Appellant’s claim 19. Specifically, the
reinforcement elements shown in each corner occupy the included angles at
the corners, increasing the thickness of the shaft at the corners in excess of
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the thickness of the walls. With regard to the requirement in claim 19 that
the reinforcing elements be “fillets,” we point out that among the common
applicable definitions of “fillet” is “a strip to reinforce the corner where two
surfaces meet.”2 The reinforcement corner elements shown in Dornier’s
Figure 11 meet this definition.
Claim 20 differs from claim 19 only in that the reinforcing is
accomplished by “beads” rather than “fillets.” As explained supra at page 7,
the common applicable definition of “bead” is “a projecting rim, band, or
molding.” Although in paragraph 28 of the Specification Appellant has
described a bead as being a “convex easement,” there is no requirement in
claim 20 that the “bead” be convex. This being the case, because the corner
reinforcing elements in Dornier’s Figure 11 “project” from the point of
joinder of the two adjacent walls, it is our view that they fall within the
definition of the term “bead,” and thus meet the claim language.
Furthermore, we note in passing that Dornier also discloses a plurality of
different configurations of the inwardly facing exposed surfaces of
reinforcement elements, including a concave embodiment in Figure 8 and a
convex one in Figure 10.
DECISION
The rejection of claims 1–6, 9 and 16–18 as being anticipated by
Wilcox is reversed.
The rejection of claims 1–6 and 16–18 as being anticipated by Dornier
is affirmed.
The rejection of claim 9 as being anticipated by Dornier is reversed.

2See, for example, www.merriam-webster.com/dictionary/fillet.
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The rejection of claims1–9 and 11–17 as being unpatentable over
Brine and Dornier is affirmed.
The rejection of claim 18 as being unpatentable over Brine, Dornier
and Lewis is affirmed.
The rejection of claims 1–9 and 11–18 as being unpaintable over
Brine and Robinson is reversed.
The rejection of claim 18 as being unpatentable over Brine, Robinson
and Lewis is reversed.
The rejection of claim 19 as being unpatentable over Kuebler and
Hoult is reversed.
The rejection of claim 20 as being unpatentable over Brine and Lewis
is reversed.
At least one of the Examiner’s rejections having been sustained for all
claims except claims 19 and 20, the decision of the Examiner is affirmed-in-
part.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains a new ground of rejection of claims 19 and 20
under 35 U.S.C. § 102(b) pursuant to 37 C.F.R. § 41.50(b) (2008).
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
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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