Ex Parte Brady et al

Board of Patent Appeals and Interferences

Nov 25, 2003

09590805 (B.P.A.I. Nov. 25, 2003)

1 The appellants’ specification states that “[f]or the
purposes of this specification, a ‘device’ is defined as a
transistor (i.e., both the operating transistor and a parasitic
transistor, if one exists) and the surrounding materials (e.g.,
the field oxide, the gate dielectric, etc.) that affect the
1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FREDERICK T. BRADY and MURTY S. POLAVARAPU
__________
Appeal No. 2003-1208
Application 09/590,805
___________
ON BRIEF
___________
Before THOMAS, OWENS and GROSS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from final rejection of claims 1-7 and 22-25,
which are all of the claims pending in the application.
THE INVENTION
The appellants claim an integrated circuit comprising two
devices,1 one of which has an effective threshold voltage which
Appeal No. 2003-1208
Application 09/590,805

operating parameters (e.g., the effective threshold voltage, VT,
etc.) of the transistor” (page 7, line 29 - page 8, line 2).
2
is more susceptible than that of the other to being lowered by
ionizing radiation. Claim 1 is illustrative:
1. An integrated circuit comprising:
a first device comprising a first lead, a second lead, and a
third lead, wherein said third lead of said first is electrically
connected to ground; and
a second device comprising a first lead, a second lead, and
a third lead, wherein said third lead of said second device is
electrically connected to ground, and wherein said first lead of
said second device is electrically connected to said first lead
of said first device;
wherein the effective threshold voltage of said first device
is more susceptible to be lowered by ionizing radiation than is
the effective threshold voltage of said second device.
THE REFERENCES
Tursky et al. (Tursky) 5,294,843 Mar. 15, 1994
Kalnitsky 5,589,708 Dec. 31, 1996
Murdock et al. (Murdock) 5,748,412 May 5, 1998
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1, 2, 4-7 and 22-25 over Kalnitsky or Murdock, in view of
the appellants’ admitted prior art, and claim 3 over Kalnitsky or
Murdock, in view of the appellants’ admitted prior art and
Tursky.
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3
OPINION
The rejection of claims 1, 2, 4-7 and 22-25 over Kalnitsky
in view of the appellants’ admitted prior art is affirmed as to
claims 1, 2, 4, 5 and 7, procedurally reversed as to claim 6, and
reversed as to claims 22-25. The rejection of claim 3 over
Kalnitsky in view of the appellants’ admitted prior art and
Tursky is reversed. The rejection of claims 1, 2, 4-7 and 22-25
over Murdock in view of the appellants’ admitted prior art, and
the rejection of claim 3 over Murdock in view of the appellants’
admitted prior art and Tursky, are reversed. Under the
provisions of 37 CFR § 1.196(b) we enter new grounds of rejection
of claim 6.
The appellants state that the claims stand or fall in the
following groups: 1) claims 1 and 2; 2) claim 3; 3) claims 4
and 5; 4) claims 6 and 7; 5) claims 22 and 25; 6) claims 23
and 24 (brief, pages 4-5). We therefore limit our discussion of
the affirmed rejections to one claim in each relevant group,
i.e., claims 1, 5 and 7. See In re Ochiai, 71 F.3d 1565, 1566
n.2, 37 USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR
§ 1.192(c)(7)(1997). As for the reversed rejections, we need to
address only the independent claims, i.e., claims 1 and 22, and
dependent claims 3 and 6.
Appeal No. 2003-1208
Application 09/590,805

2 The appellants’ claim 1 does not require that the third
leads of the first and second devices are electrically connected
directly to ground.
3 The radiation hard transistor is rendered resistant to
radiation by implanting it with silicon ions that function as
electron traps (col. 2, line 58 - col. 3, line 7).
4 There is no dispute as to whether the effective threshold
voltage of Kalnitsky’s standard transistor is more susceptible to
being lowered by ionizing radiation than is the effective
threshold voltage of Kalnitsky’s radiation-hard transistor.
4
Rejection of claims 1, 2, 4-7 and 22-25 over Kalnitsky
in view of the appellants’ admitted prior art
Claim 1
Kalnitsky discloses an integrated circuit having thereon two
transistors (col. 3, lines 32-34). It is undisputed that each of
the transistors necessarily has three leads, one of which is
connected directly or indirectly to ground.2 One of the
transistors (which corresponds to the appellants’ first device)
is a standard transistor and the other transistor (which
corresponds to the appellants’ second device) is a radiation-hard
(i.e., increased radiation resistance) transistor (col. 3,
lines 32-37).3,4 Due to their difference in radiation
sensitivity, the two transistors degrade or recover from ionizing
radiation at different rates (col. 3, lines 37-39). After the
two transistors have been formed on the integrated circuit,
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5
[a] sensor located on the chip could then determine the
difference between the two types of transistors and
sense the accumulated dose of radiation. A “self
adapting” circuit could be used to compensate for the
loss of performance due to the ionizing radiation. For
example, a substrate biasing circuit composed of the
two types of transistors could be used to sense the
different degradation characteristics of the
transistors and a differential signal could then be
used to adjust for the radiation-induced loss of
performance. [col. 3, lines 39-47]
The disclosures that 1) the sensor is on the chip (i.e., the
integrated circuit), 2) the sensor determines the difference
between the degradation characteristics of the two types of
transistors, and 3) a differential signal based upon that
difference is used to adjust for the radiation-induced loss of
performance of the standard transistor, would have indicated to
one of ordinary skill in the art that the transistors are
electrically connected in parallel with a common input (i.e.,
first leads electrically connected as required by the appellants’
claim 1) such that the difference in radiation-induced
degradation characteristics is sensed and the differential signal
based upon that difference is generated.
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5 We consider the appellants’ admitted prior art to be
cumulative.
6
For the above reasons, Kalnitsky would have rendered the
integrated circuit claimed in the appellants’ claim 1 prima facie
obvious to one of ordinary skill in the art.5
The appellants argue that their fabrication procedure
produces a dose-soft (reduced radiation resistance) transistor,
whereas Kalnitsky produces a dose-hard (enhanced radiation
resistance) transistor (brief, page 7). This argument is not
well taken because the appellants’ claim 1 does not require that
the first device is dose soft. What the claim requires is that
the first device is more susceptible than the second device to
ionizing radiation. This claim requirement can be met by a
standard first device and a dose-hard second device such as
Kalnitsky’s silicon ion-implanted transistor.
The appellants argue (reply brief, page 4) that
in Kalnitsky, the hot lead of a radiation-hard
transistor and the hot lead of a radiation-soft
transistor cannot be connected to one another. If they
were connected, then the sensor could not sense any
difference between the two types of transistors. Note
Kalnitsky’s language concerning “a differential
signal.” Essentially, Kalnitsky is disclosing
attaching the two different transistors to a
differential amplifier. Clearly, two transistors that
are connected to a differential amplifier are not
electrically connected to one another.
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6 See McGraw-Hill Electronics Dictionary 146 (McGraw-Hill,
5th ed. 1994), a copy of which is provided to the appellants with
this decision.
7

This argument is not persuasive because the difference in
radiation-induced degradation characteristics can be sensed if
the transistors are electrically connected in parallel. Even if
Kalnitsky’s device for generating a differential signal (col. 3,
line 46) is a differential amplifier as argued by the appellants,
such a differential amplifier has two input leads.6 Each of
these two leads necessarily is capable of being connected to an
output lead from each of two transistors electrically connected
in parallel.
For the above reasons we conclude that the prima facie case
of obviousness of the integrated circuit claimed in the
appellants’ claim 1 has not been effectively rebutted by the
appellants. Accordingly, we affirm the rejection of claim 1 and
claim 2 that stands or falls therewith.
Claim 5
The appellants’ claim 5, which depends from claim 1,
requires that the integrated circuit further comprises an
arrangement of memory cells operatively coupled to an address
decoder. The appellants merely assert that this claim feature is
Appeal No. 2003-1208
Application 09/590,805

7 Both the first lead, as recited in claim 1, and the second
lead, as recited in claim 6 which depends therefrom, are
connected to ground.
8
not disclosed or suggested by Kalnitsky or the admitted prior art
(brief, page 11).
Kalnitsky’s structure for determining the effect of
radiation on integrated circuits is broadly applicable to
integrated circuits generally. Hence, Kalnitsky would have
fairly suggested, to one of ordinary skill in the art, forming
the structure on any integrated circuit containing conventional
structures such as memory cells operatively coupled to an address
decoder. We therefore affirm the rejection of claim 5 and
claim 4 that stands or falls therewith.
Claim 6
The appellants’ claim 6, which depends from claim 1,
requires that “said second lead of said first device is connected
to ground,[7] said first lead of said first device is connected to
power, and said first lead of said second device is connected to
power.”
The appellants’ original claim 6 required that “said second
lead of said first device is connected to ground, said third lead
of said first device is connected to power, and said third lead
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9
of said second device is connected to power.” The claim, which
was inconsistent with claim 1 which required that the third lead
of each device was electrically connected to ground, was changed
to its present form in the amendment filed February 12, 2002
(paper, no. 7, page 2). The wording of original claim 6 is the
same as that of the description of the relevant embodiment in the
appellants’ specification (page 5, lines 23-25).
The appellants’ original disclosure does not disclose an
integrated circuit in which the second and third leads of the
first device are connected to ground and the first leads of the
first and second devices are connected to power. The original
disclosure, therefore, indicates that the integrated circuit
claimed in the present claim 6 is not subject matter which the
appellants regard as their invention. Consequently, we do not
reach the issue of whether this subject matter would have been
obvious to one of ordinary skill in the art.
Accordingly, we procedurally reverse the obviousness
rejection of claim 6. We emphasize that this is not a reversal
on the merits.
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Claim 7
The appellants’ claim 7, which depends from claim 1,
requires that the first device shorts power to ground when the
device has been exposed to ionizing radiation. The appellants
argue that Kalnitsky and the admitted prior art do not disclose
or suggest that two devices having different radiation
susceptibility should be connected in the manner recited in
claim 7 (brief, page 12).
Kalnitsky’s standard transistor, because it is more
sensitive to radiation than the radiation hard transistor,
necessarily shorts power to ground when exposed to sufficient
ionizing radiation. Hence, we affirm the rejection of claim 7.
Claim 22
Independent claim 22 requires a safeguard device and a utile
device. The safeguard device is one which is designed to
interrupt the functioning of all or part of an integrated circuit
when the integrated circuit is exposed to ionizing radiation,
thereby completely or partially destroying the functionality of
the integrated circuit (specification, page 8, line 29 - page 9,
line 2). The utile device is “a device that processes an
information-bearing signal” (specification, page 8, lines 3-4).
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The examiner argues that although Kalnitsky does not
explicitly state that upon exposure to a sufficient amount of
ionizing radiation a first device turns on before a second device
and thus affects operation of the second device, these features
are inherent in Kalnitsky because Kalnitsky’s hard device turns
on after the regular device, and when one device turns on, it
naturally affects the operation of a second device connected
thereto (answer, page 7).
The appellants’ claim 22 requires that when the integrated
circuit is exposed to a sufficient amount of radiation, the
safeguard device turns on before the utile device. Kalnitsky
discloses the reverse of this requirement. Kalnitsky’s
transistor which is radiation unhardened corresponds to the
appellants’ utile device and, when the integrated circuit is
exposed to a sufficient amount of radiation, turns on before the
radiation-hard transistor. Kalnitsky’s radiation-hard
transistor, therefore, is not a safeguard device. Kalnitsky’s
radiation-unhardened transistor cannot be a safeguard device, as
that term is defined by the appellants, because it is not
“designed to interrupt the functioning of all or part of an
integrated circuit when the integrated circuit is exposed to
ionizing radiation” (specification, page 8, lines 30-31).
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Instead, Kalnitsky’s radiation-unhardened transistor is designed
to carry out the function of the integrated circuit.
The examiner argues that it would have been obvious to one
of ordinary skill in the art to use in Kalnitsky’s integrated
circuit a second device as a utile device and a first device as a
safeguard device in order to use the utile device in an
application which requires circuit protection (answer, page 8).
For a prima facie case of obviousness to be established, the
teachings from the prior art itself must appear to have suggested
the claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The mere fact that the prior art could be modified as
proposed by the examiner is not sufficient to establish a prima
facie case of obviousness. See In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
The examiner’s proposed modification of Kalnitsky requires
that Kalnitsky’s radiation-hard transistor, which is used to
measure the radiation-induced degradation of the radiation-
unhardened transistor, be replaced by a radiation-soft transistor
that protects the radiation-unhardened transistor against the
effects of radiation. The examiner has not explained why
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13
Kalnitsky’s disclosure of the use of a radiation-hard transistor
would have led one of ordinary skill in the art to make this
modification.
The admitted prior art relied upon by the examiner is a
disclosure of two electrically connected devices, each of which
has three leads (answer, pages 5-6). The examiner does not rely
upon the admitted prior art for any disclosure which would have
led one of ordinary skill in the art to replace Kalnitsky’s
radiation-hard transistor with a radiation-soft transistor.
The record, therefore, indicates that the motivation for
modifying Kalnitsky so as to arrive at the integrated circuit
claimed in the appellants’ claim 22 comes from the appellants’
disclosure rather than coming from Kalnitsky. Consequently, the
record indicates that the examiner used impermissible hindsight
in rejecting the appellants’ claim 22 over Kalnitsky in view of
the admitted prior art. See W.L. Gore & Associates v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse the
rejection over Kalnitsky in view of the admitted prior art of
claim 22 and claims 23-25 that depend therefrom.
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14
Rejection of claim 3 over Kalnitsky in view of
the appellants’ admitted prior art and Tursky
The appellants’ claim 3, which depends from claim 1,
requires that “said first device comprises a field oxide that has
been implanted with a material that traps positive charge when
said first device is exposed to ionizing radiation and said
second device has not been implanted with said material.”
Tursky discloses “a freewheeling diode device for a
switchable device component including a commutator branch”
(col. 1, lines 6-8). Tursky teaches that “[a] freewheeling diode
is essentially a rectifier diode connected across an inductive
load to carry a current resulting from the energy stored in the
inductance when no power is being supplied by the source to the
load and until all the energy in the inductance has been
dissipated or until the next voltage” (col. 1, lines 38-43). The
freewheeling diode device includes, in parallel, a first
diode (12) having soft recovery behavior and a second diode (14)
having snappy switching behavior (col. 3, lines 39-48; col. 4,
lines 56-60; col. 6, lines 7-9). Each diode has n+, n–
and p zones between metallization zones (col. 8, lines 7-33;
figures 9 and 10).
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The examiner argues (answer, page 9):
Tursky et al. teach forming a first device with a field
oxide that has been implanted with a material that
traps positive charge when the first device is exposed
to ionizing radiation and the second device has not
been implanted with the material (column 9, lines 31-
51). It would have been obvious to a person of
ordinary skill in the art at the time the invention was
made to form a first device with a field oxide that has
been implanted with a material that traps positive
charge in prior art’s device, in order to obtain a soft
diode with a well known alternative method.

The portion of Tursky relied upon by the examiner teaches that
the diode soft recovery behavior can be obtained by irradiation
with protons. This portion does not, however, say anything about
field oxide or ionizing radiation. Nor does it disclose that the
protons trap positive charge, and the examiner has not provided
evidence or technical reasoning which shows that the protons trap
positive charge. Also, the examiner has not established that
this portion of Tursky would have indicated, to one of ordinary
skill in the art, a correlation between soft recovery behavior of
a diode and resistance of a transistor to ionizing radiation.
Moreover, even if Tursky’s protons trap positive charge, the
examiner has not explained why one of ordinary skill in the art
would have been led by the applied prior art to substitute those
protons for Kalnitsky’s silicon ions that trap negative charge
rather than positive charge (col. 2, line 67 - col. 3, line 3).
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16
The examiner has not explained how the admitted prior art
remedies the above-discussed deficiency in Kalnitsky and Tursky.
We therefore reverse the rejection of claim 3 over Kalnitsky
in view of the admitted prior art and Tursky.
Rejection of claims 1, 2, 4-7 and 22-25 over Murdock
in view of the appellants’ admitted prior art
Claim 1
Murdock discloses a method and an apparatus for preventing
damage to a magnetoresistive sensor element (34) of a
magnetoresistive head assembly (28) caused by electrostatic
discharge (col. 1, lines 12-15). The head is electrically
connected to detection circuitry (16) via electrical conductors
(18a and 18b) (col. 3, lines 60-64). A diode assembly (30)
electrically connects the conductors (col. 5, lines 44-45). When
the electrical potential or voltage across the magnetoresistive
sensor element and between the conductors exceeds a selected
voltage protection threshold in either direction, the diode
assembly shorts current between the conductors away from the
magnetoresistive sensor element to electrically short
electrostatic discharge current pulses away from the
magnetoresistive sensor element (col. 6, lines 53-60). Murdock
teaches that soft diodes which may conduct at less than the
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operating voltage of the magnetoresistive sensor element can be
produced by doping thermally-deposited polysilicon, and that the
voltage at which the diodes conduct can be raised by using a
plurality of them in series or by laser recrystallizing the
polysilicon before it is doped (col. 10, lines 26-45).
The examiner argues that “Murdock et al. teach in figure 2
and related text an integrated circuit comprising a first
device 30c (figure 3c) and a second device 34 (column 10,
lines 26-29) electrically connected to one another (figure 2c)
wherein the effective threshold voltage of the first device 30c
is more susceptible to be lowered by ionizing radiation than is
the effective threshold voltage of the second device 34
(column 10, lines 26-45)” (answer, page 5).
Murdock’s component 30c is a circuit configuration for a
diode assembly (30), comprising two pluralities of diodes (70 and
72) connected in parallel across electrical conductors (18a and
18b) and between a magnetoresistive sensor element (34) and
detection circuitry (16) (col. 7, lines 6-18; figure 3c). Thus,
Murdock’s 30c and 34 cannot be first and second devices as argued
by the examiner because component 34 is part of circuit
configuration 30c. Also, Murdock’s circuit configuration 30c and
magnetoresistive sensor element 34 are not devices, as that term
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is used by the appellants, because the appellants’ devices are
transistors (specification, page 7, line 29). Murdock’s diodes
themselves cannot be the appellants’ devices for the additional
reason that diodes have only two leads whereas, although the
appellants’ claim 1 does not specify to what the second leads of
the devices are attached, the claim requires that the devices
have three leads. Additionally, contrary to the examiner’s
argument, the portion of Murdock relied upon by the examiner says
nothing about ionizing radiation. Murdock’s teaching is that
doping the diodes causes them to conduct at a lower voltage than
the magnetoresistive sensor element (col. 10, lines 26-29). The
examiner has not provided evidence or technical reasoning which
shows that Murdock’s doping of the diodes causes the diodes to be
more sensitive than the magnetoresistive sensor element to
ionizing radiation.
The examiner argues that interpreting the appellants’ term
“device” as meaning “transistor” requires reading a limitation
from the specification into the claims (answer, page 11). This
argument is not well taken because a patent specification “acts
as a dictionary when it expressly defines terms used in the
claims or when it defines terms by implication”, Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1577
Appeal No. 2003-1208
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8 Although we are not able to reach the merits of the
rejection of claim 6 over Kalnitsky in view of the admitted prior
art due to failure of this claim to comply with 35 U.S.C. § 112,
second paragraph, we are able to reverse the rejection of claim 6
over Murdock in view of the admitted prior art because claim 6
depends from claim 1 and the rejection of claim 1 over Murdock in
19
(Fed. Cir. 1996), and the appellants’ specification defines a
“device” as “a transistor (i.e., both the operating transistor
and a parasitic transistor, if one exists) and the surrounding
materials (e.g., the field oxide, the gate dielectric, etc.) that
affect the operating parameters (e.g., the effective threshold
voltage, VT, etc.) of the transistor” (page 7, line 29 - page 8,
line 2). Thus, the term “device” in the appellants’ claim 1 does
not encompass Murdock’s diode assembly or magnetoresistive sensor
element.
The above-discussed deficiency in Murdock is not remedied by
the admitted prior art disclosure relied upon by the examiner of
first and second devices having three leads (answer, page 5).
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the integrated circuit claimed in the appellants’
claim 1. We therefore reverse the rejection over Murdock in view
of the admitted prior art of this claim and claims 2-7 that
depend therefrom.8
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view of the admitted prior art is reversed.
20
Claim 3
Because the examiner does not rely upon Tursky for any
disclosure that remedies the above-discussed deficiency in
Murdock and the admitted prior art as to claim 1 from which
claim 3 depends, we reverse the rejection of claim 3 over Murdock
in view of the admitted prior art and Tursky.
Claim 22
The examiner argues that although Murdock and the admitted
prior art do not explicitly state that upon exposure to a
sufficient amount of ionizing radiation a first device turns on
before a second device and thus affects operation of the second
device, these features are inherent in Murdock because soft
devices turn on before regular devices, and hard devices turn on
after regular devices, and when one device turns on, it naturally
affects the operation of a second device connected thereto
(answer, page 7).
As discussed above regarding the rejection of claim 1 over
Murdock in view of the admitted prior art, Murdock’s soft diodes
conduct at a lower voltage than the magnetoresistive sensor
element, and Murdock says nothing about the effect of ionizing
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radiation. The examiner has not established that Murdock’s
doping of the diodes to lower the voltage at which they conduct
electricity renders them more susceptible to ionizing radiation.
Also, as discussed above regarding claim 1, Murdock’s diode
assembly circuit configuration and magnetoresistive sensor
element which the examiner relies upon as being, respectively,
the appellants’ safeguard device and utile device, are not
devices as that term is used by the appellants, and Murdock’s
diodes do not have the required three leads. The admitted prior
art which shows first and second devices having three leads does
not remedy these deficiencies in Murdock’ disclosure of diodes
and a magnetoresistive sensor element.
Accordingly, we reverse the rejection over Murdock in view
of the admitted prior art of claim 22 and claims 23-25 which
depend therefrom.
New grounds of rejection
Claim 6 is rejected under 35 U.S.C. § 112, second paragraph,
as failing to claim subject matter which the appellants regard as
their invention.
As discussed above regarding the rejection of claim 6 over
Kalnitsky in view of the admitted prior art, the appellants’
original disclosure does not disclose an integrated circuit in
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which the second and third leads of the first device are
connected to ground and the first leads of the first and second
devices are connected to power. The original disclosure,
therefore, indicates that the integrated circuit claimed in the
present claim 6 is not subject matter which the appellants regard
as their invention. Accordingly, claim 6 is rejected under
35 U.S.C. § 112, second paragraph.
Claim 6 is rejected under 35 U.S.C. § 112, first paragraph,
as containing subject matter which was not described in the
specification in such a way as to convey to one skilled in the
relevant art that the inventors, at the time the application was
filed, had possession of the claimed invention.
The appellants’ original claim 6 required that “said second
lead of said first device is connected to ground, said third lead
of said first device is connected to power, and said third lead
of said second device is connected to power.” This wording is
the same as that of the description of the relevant embodiment in
the appellants’ specification (page 5, lines 23-25). Hence, the
appellants’ original disclosure does not indicate that the
appellants were in possession of the integrated circuit claimed
in present claim 6 wherein the second and third leads of the
first device are connected to ground and the first leads of the
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first and second devices are connected to power. Claim 6,
therefore, is rejected under 35 U.S.C. § 112, written description
requirement.
DECISION
The rejection of claims 1, 2, 4-7 and 22-25 over Kalnitsky
in view of the appellants’ admitted prior art is affirmed as to
claims 1, 2, 4, 5 and 7, procedurally reversed as to claim 6, and
reversed as to claims 22-25. The rejection of claim 3 over
Kalnitsky in view of the appellants’ admitted prior art and
Tursky is reversed. The rejection of claims 1, 2, 4-7 and 22-25
over Murdock in view of the appellants’ admitted prior art, and
the rejection of claim 3 over Murdock in view of the appellants’
admitted prior art and Tursky, are reversed. Under the
provisions of 37 CFR § 1.196(b), new grounds of rejection of
claim 6 have been entered.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
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Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision . . . .
37 CFR § 1.196(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 proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellants elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(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.
Appeal No. 2003-1208
Application 09/590,805

25
If the appellants elect 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 Board of
Patent Appeals and Interferences 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 CFR
§ 1.136(a).
AFFIRMED-IN-PART, 37 CFR § 1.196(b)
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
TJO/ki
Appeal No. 2003-1208
Application 09/590,805

26
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