Ex Parte Causse et al

Board of Patent Appeals and Interferences

Jul 29, 2011

11603195 (B.P.A.I. Jul. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LISA D. CAUSSE, BRETT W. NORDIN,
JOAN PARK, BILL MARMADUKE, KATHLEEN GEORGE,
MORTEN LASSEN, and HENRY GORDON MINNS JR.
____________________

Appeal 2009-011853
Application 11/603,195
Technology Center 3700
____________________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI,
and KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Lisa D. Causse et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 24, 28, 31, 32, 82, 84, 85, and 92-97.
Claims 1-23, 25-27, 29, 30, and 33-81 have been canceled. Claims 83, 86-
91, and 98-107 have been withdrawn from consideration. An oral hearing
was held on June 7, 2011. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

THE INVENTION
Appellants’ claimed invention pertains to an automatic portable
pattern cutter. Spec. 2, para. [0007]. Claim 24, reproduced below, is
representative of the subject matter on appeal.
24. A pattern cutting system for cutting patterns from a
substantially planar work piece, comprising:
a pattern cutting apparatus comprising:
(i) a housing,
(ii) a platform for supporting the substantially
planar work piece,
(iii) a work piece cutter supported by the housing
and constructed to cut a pattern from the work piece, the work
piece cutter and the platform being movable relative to one
another in generally orthogonal X, Y, and Z directions,
(iv) a cutter controller operable to move the cutter
and platform relative to one another in the X, Y, and Z
directions for cutting the workpiece with the cutter, and
(v) an operator interface operatively connected to
the controller, the operator interface including a set of switches;
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a memory device removably operatively connected to the
controller, the memory device comprising a plurality of sets of
pattern cutting instructions, each useable by the controller for
moving the cutter and platform relative to one another for
cutting a corresponding pattern from the work piece, each of the
switches being associated with a corresponding one of the sets
of pattern cutting instructions; and
a first overlay sheet with a first set of pattern identifiers
provided thereon, each of the first set of pattern identifiers
being associated with a corresponding set of pattern cutting
instructions in the memory device, wherein the first overlay
sheet removably overlies the operator interface such that each
of the first set of pattern identifiers is physically associated with
a corresponding switch,
wherein the operator interface enables an operator to
select one of the sets of instructions to be used by the controller
to move the cutter and the platform relative to one another to
cut the corresponding pattern from the work piece by actuating
one of the switches that is physically associated with a desired
pattern identifier,
wherein at least the work piece cutter, the cutter
controller, and the operator interface are mounted on or in the
housing for manual transport as a portable unit, and
wherein the removable connection of the memory device
to the cutter controller and removable overlaying of the first
overlay sheet on the operator interface enable manual removal
and replacement of the memory device and the first overlay
sheet with other interchangeable memory devices and overlay
sheets.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bedell US 3,560,964 Feb. 2, 1971
Abe US 4,136,336 Jan. 23, 1979
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Markley US 4,326,193 Apr. 20, 1982
Gross US 4,439,757 Mar. 27, 1984
Logan US 4,467,525 Aug. 28, 1984
Hunter US 4,823,311 Apr. 18, 1989
Mizukoshi US 5,094,134 Mar. 10, 1992
Jambor US 5,163,759 Nov. 17, 1992
Anderka US 5,392,520 Feb. 28, 1995
Lee US 6,219,229 B1 Apr. 17, 2001

The following Examiner’s rejections are before us for review:
1. Claims 24, 28, 31, 32, and 92-951 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Anderka, Logan, and Gross;
2. Claim 82 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderka, Logan, Gross, and Lee;
3. Claims 96 and 97 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Anderka, Logan, Gross, and Hunter;
4. Claim 24 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Logan, Mizukoshi, Abe, Markley, Bedell, Anderka, and
Gross; and
5. Claims 84 and 85 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Anderka, Logan, Gross, Lee, and Jambor.

1 We, like Appellants, include the rejection of claim 32 in this first rejection,
whereas the Examiner treated it as a separate rejection. App. Br. 9; Ans. 9.
Additionally, while the Examiner’s statements of these two grounds of
rejection (Examiner’s Rejections I and III) list only claims 24, 28, and 32,
the articulations of the rejections also address claims 31 and 92-95. Final
Rej. 5, 8-9, 11 (mailed Aug. 5, 2008); Ans. 3, 7-8, 9. Appellants recognize
that all of these claims are subject to the § 103 Anderka/Logan/Gross
rejection. App. Br. 9, 10.
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OPINION
1. Claims 24, 28, 31, 32, and 92-95 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Anderka, Logan, and Gross
The Examiner found that Anderka substantially discloses the pattern
cutting system of claim 24 except that “Anderka is silent as to how the
keyboard functions to select the different typefaces and symbols” and lacks
the recited overlay sheet for the operator interface. Ans. 4, 5. We note that
the Examiner correctly found that Anderka teaches the use of removable
memory devices (program cassettes 5). Ans. 4; Anderka, col. 2, ll. 42-46.
The Examiner then found that Anderka discloses that the control unit can
correspond to the control illustrated in Logan, and the Examiner accordingly
relies on Logan for the function of the keyboard. Id. at 4-5. The Examiner
further found that Gross teaches the use of overlays in conjunction with
memory cartridges like those of Anderka’s system. Id. at 5-6, 13. The
Examiner’s proposed modification of Anderka results in the replacement of
Anderka’s keyboard with a keyboard interface and accompanying
interchangeable overlays as taught by Gross. Id. at 6.
Appellants argue that the Examiner’s proposed combination lacks the
recited “work piece cutter, the cutter controller, and the operator interface
are mounted on or in the housing for manual transport as a portable unit.”
App. Br. 15; Reply Br. 6-8. Appellants maintain that a keyboard (operator
interface) connected to the apparatus via a cable, such as Anderka’s, is not
mounted on or in the housing for transport as a portable unit. App. Br. 15;
Reply Br. 8 (“Clearly, Anderka’s ‘operator interface’ (keyboard 2) is not
‘on’ the housing because it remains separate and is connected by the flexible
cable.”) Appellants contend that the claim language “emphasizes the
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relationship that these structure are ‘on or in’ the same housing for carriage
together.” Reply Br. 8.
The Examiner found that “this limitation is met by the removable
cable which is electrically mounted to the housing.” Ans. 15. The Examiner
maintains that the interface is mounted on the housing by the cable
connection. Id. We conclude that the Examiner has applied an
unreasonably broad construction of “mounted on.” While Anderka’s
keyboard may be connected to the housing via the cable, one of ordinary
skill in the art reading claim 24 in light of Appellants’ Specification (see,
e.g., Spec. 8, para. [0050], figs. 1, 2, 11) would not conclude that the
keyboard is mounted on the housing for manual transport as a portable unit,
as is required by the claim.
We cannot sustain the rejection of independent claim 24 or of claims
28, 31, 32, and 92-95, which depend therefrom, as being unpatentable over
Anderka, Logan, and Gross.

2. Claim 82 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Anderka, Logan, Gross, and Lee and a new ground of rejection of
Claim 24 is entered under 35 U.S.C. § 103(a) pursuant to our authority
under 37 C.F.R. § 41.50(b)
Claim 82 depends directly from independent claim 24 and recites “a
movable portion on the housing is selectively movable between an open
position providing access to the operator interface for operation thereof and
a closed position concealing the operator interface for storage or transport of
the apparatus.” For this feature, the Examiner points to Lee’s teaching of a
keyboard drawer that retracts into the housing for storage and reasons that
one of ordinary skill “would have found it obvious to modify the Anderka
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housing to similarly be able to store the Anderka operator interface/keyboard
when not in use for the similar purpose of presenting a well organized and
more easily transportable system.” Ans. 10. For the reasons set forth below,
we affirm the rejection of claim 82 as being obvious in light of Anderka,
Logan, Gross, and Lee.
The Examiner’s articulation of the rejection of dependent claim 82
(second rejection) cures the deficiency in the rejection of independent claim
24 (first rejection) regarding the “mounted on or in the housing” limitation.
The Examiner’s proposed modification yields the housing of Anderka
having a keyboard mounted in the housing as taught by Lee. The Examiner
has articulated, in the context of both the first and second grounds of
rejection, findings and rational reasoning adequate to support the conclusion
of obviousness of the subject matter of claim 24 as well as its dependent
claim 82. See Ans. 3-7, 10, 13-14, and 20-21. As such, we enter a new
rejection of independent claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Anderka, Logan, Gross, and Lee. We leave it to the
discretion of the Examiner to reconsider the patentability of the dependent
claims in light of this combination of prior art. We now address Appellants’
arguments directed to the rejections of both claims 24 and 82 (first and
second rejections).
We are not persuaded by Appellants’ apparent argument that there is
no reason to make the proposed combination because the connection of the
keyboard via a cable precludes a finding that the keyboard is mounted in the
housing. App. Br. 26-27 (referring to arguments made in the context of the
first rejection). Appellants’ argument appears to ignore the inclusion of
Lee’s teaching of a cabled keyboard located in a drawer in the housing. See
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id. at 26 (Appellants, under subheading 2, neglecting to list Lee in the
combination of references); Lee, fig. 2.
Appellants argue that Lee is non-analogous art because it pertains to
computers rather than “the art of pattern cutting,” and therefore is in a
different field. App. Br. 26; see also Hrg. Tr. 12 (offering an even narrower
definition of the art by arguing that “[Lee has] nothing to do with the craft
industry.”) We are not persuaded by Appellants’ argument because it is
based on an unduly narrow definition of the pertinent field of endeavor. As
Appellants’ Specification states, under the heading “Field of the Invention,”
the “invention relates to automatic X-Y cutters.” Spec. 1, para. [0002]
(emphasis added). The cutter is “automatic” in that it utilizes a cutter
controller that follows instructions contained on the memory device. See id.
at 2, para. [0009]. Appellants’ Specification discloses, and independent
claim 24 as well as its dependent claim 82 encompass a computer controlled
pattern cutter. See, e.g., claim 1 (reciting a memory device connected to the
controller). Furthermore, Appellants describe in the Specification, under the
heading “Description of Related Art,” that computer controlled cutters and
providing cutting instruction on a floppy disk connected to a cutter are
known in “the art.” Spec. 1, paras. [0003], [0004]. As such, we are not
persuaded by Appellants’ argument that the pertinent field does not
encompass computer art. To the extent that Appellants argue that the
pertinent art is limited to the craft industry (see, e.g., App. Br. 11), this is not
commensurate with the scope of either claims 24 or 82, which do not contain
a “craft” limitation. In addition, Lee is reasonably pertinent to a problem
with which the Appellants were concerned. One problem with which
Appellants were concerned was providing a self-contained, portable
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apparatus. Spec. 2, para. [0007]. Lee’s invention is directed to forming an
integrated device that can be moved easily. Lee, col. 1, ll. 37-39, 50-54.
Lee is analogous art.
Much of Appellants’ arguments for patentability are based on the
purported distinction between PC based systems (which Appellants assert
would have been the obvious path of development) and Appellants’
invention. For example, Appellants argue that the combination of the
references’ teachings “would have defeated the primary advantage of the PC
based cutting systems preceding the Appellants’ invention, namely,
providing as many cuttable patterns as possible.” App. Br. 11. Appellants’
arguments are not commensurate with the claim language and are contrary to
the Specification’s disclosure. Claims 24 and its dependent claim 82 do not
preclude the use of a PC with the cutting apparatus. The Specification
discloses connecting the device to a computer via a USB connection 180
depicted in Figure 13 or via a wireless connection to facilitate download of
patterns from the internet. Spec. 14-17, paras. [0074]-[0082]. As such, we
are not impressed with the argument that Appellants’ device has such a
limited capability as to render it non-obvious.
Nonetheless, to the extent that some sacrifice does result from using a
cartridge based system for Appellants’ desired portability2 rather than a
system tethered to a PC, we are not convinced that this sacrifice would have
rendered the claimed subject matter non-obvious to a person having ordinary
skill in the art. Our reviewing court has recognized that a given course of

2 The only readily apparent language in claim 24 directed to portability is the
recitation “wherein [certain components] are mounted on or in the housing
for manual transport as a portable unit.”
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action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate any or all reasons to combine teachings. See Winner
Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The
fact that the motivating benefit comes at the expense of another benefit,
however, should not nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits, both lost and
gained, should be weighed against one another.”) Further, we note that
Anderka teaches that it was known in the art of pattern cutting to use on-
board program cassettes as an alternative to attaching the device to a
computer and monitor. Anderka, col. 2, ll. 39-50. Thus, even if a PC-less
device has less capability, it was still a known and obvious alternative.
Appellants argue that one aspect of the Examiner’s reasoning (that it
would be desirable to use overlays so that the same basic apparatus could be
sold in countries, including China, that do not use the “American Alphabetic
system”) teaches away from the claimed invention. Reply Br. 2-4 (quoting
Ans. 14); see also App. Br. 14. Even accepting as correct Appellants’
assertions in this regard as set forth in the Appeal Brief and in the Reply
Brief, this simply suggests that persons of ordinary skill recognized that
overlays are not cost effective when an excessive number of characters, i.e.
the over 2,000 Chinese characters, are used. See App. Br. 14; Reply Br. 3-4.
However, this does not mean that the ordinary artisan would fail to find it
obvious to use overlays in other contexts. See Reply Br. 4 (Appellants

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representing that the Johnson3 reference discloses the use of conventional
keyboards with 45 keys overlying 45 switches, and the recognition that such
a system becomes prohibitively expensive where an excessive number of
characters are to be recorded).
We determine that the Examiner has established a prima facie case of
obviousness of claims 24 and 82. However, evidence of secondary
considerations, such as that presented by the Appellants, must be considered
en route to a determination of obviousness/nonobviousness under 35 U.S.C.
§ 103. Accordingly, we consider anew the issue of obviousness under 35
U.S.C. § 103, carefully evaluating and weighing both the evidence relied
upon by the Examiner and the objective evidence of non-obviousness
provided by Appellants. For evidence of secondary considerations to be
accorded substantial weight, Appellants must establish a nexus between the
evidence and the claimed invention.
Secondary Considerations
Appellants, in presenting arguments regarding independent claim 24,
assert that the following are secondary evidence of nonobviousness :
“(1) adulation and adoption of the invention by others; (2) the fact that the
inventors proceeded contrary to the conventional wisdom; and (3) the
invention’s commercial success.” App. Br. 16. Appellants submit several
exhibits in support of their arguments, including a declaration of named-
inventor Lisa Causse. See App. Br., Evid. Appendix.

3 Appellants (App. Br. 13; Reply Br. 3) refer to Johnson (US 4,722,621,
issued Feb. 2, 1988) which was cited by the Examiner in the Response to
Arguments section of the Final Rejection (Final Rej. 3) but which is not
cited in the Answer or in any statement of a rejection before us.
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Adulation and Adoption by Others
Appellants assert that the assignee’s commercial embodiment, the
Personal Cutting System (PCS), has received the Craftrends ACE Award in
the Scrapbooking Tools category, and that this is evidence of adulation.
App. Br. 19 (citing Causse Decl., paras. 5, 7); see also Craftrends Magazine
letter attached to the Causse Decl. Appellants’ purported nexus to the
claimed invention is based on the conclusory opinion that the PCS is an
embodiment of claim 24. See Cause Decl., para. 5. The Declarant does not
describe the PCS and does not establish her qualifications to opine on
matters involving claim construction and a comparison of the claim to an
embodiment. Further, the Craftrends letter identifies several award factors
that are not indicative of the merits of the claimed invention, such as
attractiveness, clarity of instructions, and advertising/marketing support. As
such, Appellants have not established a nexus to the merits of the claimed
invention.
Appellants also argue that their competitor’s product, Provo Craft’s
Cricut™, is an embodiment of claim 24 and that Provo Craft’s marketing
efforts focus on the removable memory device and associated overlay sheet.
App. Br. 19. Appellants contend that these features are the “central part of
the invention” as they are the features that distinguish the invention over the
prior art. Id. Thus, assert Appellants, Provo Craft’s touting of its own
device constitutes adulation for the claimed invention. Id. at 19-21.
As an initial matter we note that, while some of the proffered Provo
Craft documents do mention the overlays, much of Provo Craft’s “touting”
pertains to the memory cartridges themselves. See, e.g., Provo Craft Press
Releases of Sept. 18, 2007, and Jan. 28, 2007 (attached to the Causse Decl.)
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The use of memory cartridges was known in the art of cutting devices, and
therefore is not a feature novel to Appellants’ claimed invention. See
Anderka, col. 2, ll. 39-46. Even the use of overlays in conjunction with
memory cartridges was known in the prior art, as reflected by Gross’s
teachings. We also note that Provo Craft’s marketing efforts are directed not
only to the cartridges and overlays, but also to such unclaimed features as
Provo Craft’s “proprietary blade technology” (Press Release of July 15,
2005), the ability to cut larger sizes (Press Release of Jan. 26, 2007), and the
specific content on Provo Craft’s cartridges (same). “Where the offered
secondary consideration actually results from something other than what is
both claimed and novel in the claim, there is no nexus to the merits of the
claimed invention.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011) (citing, inter alia, Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358,
1369 (Fed.Cir.2011) (“If commercial success is due to an element in the
prior art, no nexus exists.”); Ormco Corp. v. Align Tech., Inc., 463 F.3d
1299, 1312 (Fed. Cir. 2006) (“[I]f the feature that creates the commercial
success was known in the prior art, the success is not pertinent.”))
Appellants have failed to establish an adequate nexus between adulation
expressed by Provo Craft for its own device and the merits of Appellants’
claimed invention.
Contrary to Accepted Wisdom
Appellants argue that they “proceeded contrary to that conventional
wisdom [which Appellants characterize as the use of PCs connected to
cutter/plotters] through the development of a cutting system that has a more
limited repertoire of patterns, but is more user-friendly, portable, and
affordable.” App. Br. 21. It seems that Appellants’ arguments are
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erroneously premised on the belief that the only pertinent field of endeavor
is that associated with the “craft cutting industry.” Reply Br. 11 (“The fact
that the Applicants proceeded in a manner contrary to the entire craft cutting
industry is unbiased and reliable evidence of non-obviousness.”) As
discussed above, the claimed system is not limited to use in the “craft cutting
industry” and Appellants’ argument that their system is PC-less and has a
limited repertoire is not commensurate with the scope of claims 24 and 82
and is inconsistent with the Specification’s description of the invention.
Additionally, Appellants do not explain why prior art cutters, such as
Anderka’s, were not portable or “user-friendly.” See Kao, 639 F.3d at 1074
(“Because here Endo has not provided any evidence of secondary
considerations with a nexus to the novel components of claim 21, the
secondary considerations do not compel a holding of nonobviousness.”).
Lastly, as it was known in the art of pattern cutting to use on-board program
cassettes as an alternative to attaching the device to a computer and monitor
(Anderka, col. 2, ll. 39-50), we fail to see how Appellants proceeded
contrary to conventional wisdom. Rather, it seems that Appellants merely
followed one of at least two known alternative paths.
Commercial Success
Appellants argue that their product, the PCS, has enjoyed commercial
success. Reply Br. 16; see also Causse Decl., para. 5 (offering the
conclusory assertion that “[t]he PCS has obtained significant commercial
success ….”) However, Appellants offer no evidence of sales data to
support that assertion. Appellants also argue that the Craftrends Award is
evidence of commercial success. Reply Br. 16. We have addressed this
award above in the context of adulation evidence.
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Appellants argue and the Declarant opines that their competitor’s
product, Provo Craft’s Cricut™, has enjoyed commercial success as
evidenced by an exclusive deal with Michaels Stores. See App. Br. 22;
Decl., para. 10. The Declarant also refers to the competitor’s heavy
marketing of the Cricut™. Causse Decl., para. 10.
Appellants concede that they lack evidence in the form of financial
data to support a finding that the Cricut™ has enjoyed commercial success.
App. Br. 23 n.2 (“[Assignee] Xyron has no way to report accurate data on
Provo Craft’s sales.”) Thus, Appellants’ assertion of the Cricut’s™
commercial success, even assuming that there is a nexus to the claimed
invention, is merely speculation. Further, the record shows that any such
commercial success may be attributable to Provo Craft’s marketing
campaign and business acumen (particularly in securing an exclusive
arrangement with a leading retailer) rather than the merits of the claimed
invention. See Solder Removal Co. v. U.S. Intern. Trade Com’n, 582 F.2d
628, 637 (CCPA 1978) (“Commercial success due only to superior business
acumen, or effective advertising, is of no relevance to a determination of
whether the invention would have been obvious under 35 U.S.C. § 103.”)
We have reviewed Appellants’ arguments pertaining to, and evidence
of, secondary considerations, but find that Appellants’ have failed to
demonstrate an adequate nexus between that evidence and the merits of the
claimed invention. Alternatively, even if there was a nexus between the
merits of the claimed invention and Appellants’ evidence of secondary
consideration, that evidence is entitled to but little weight. We conclude that
claims 24 and 82 are unpatentable over Anderka, Logan, Gross, and Lee.

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3. Claims 96 and 97 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderka, Logan, Gross, and Hunter
Claims 96 and 97 depend from independent claim 24. The
Examiner’s proposed combination of references begins with the device of
Anderka as modified in the first rejection above (the rejection without Lee).
Ans. 11. As we have discussed, that modified device lacks an operator
interface mounted on or in the housing as required by claim 24. The
Examiner does not rely on Hunter in a manner that would remedy that
deficiency. Id. Therefore we do not sustain the rejection of claims 96 and
97 as being unpatentable over Anderka, Logan, Gross, and Hunter.

4. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Logan, Mizukoshi, Abe, Markley, Bedell, Anderka, and Gross
Appellants address this fourth rejection as if it were the same as the
first rejection with the addition of cumulative references. App. Br. 28-29;
Reply Br. 2 n.1. Appellants assert that Rejection No. 4 is in error “for
substantially the same reasons as discussed above with respect [to Rejection
No. 1],” and argues that the additionally cited references do not cure the
previously discussed purported deficiencies. App. Br. 28-29.
Appellants’ characterization of Rejection No. 4 is incorrect in that the
Examiner articulated this rejection as a modification of Logan’s apparatus,
rather than Anderka’s. Ans. 8-9. As discussed above, we cannot sustain the
first rejection because we found to be persuasive Appellants’ argument that
the Examiner erred in finding that Anderka’s cable-connected keyboard is
mounted on the housing. However, Appellants do not argue that Logan
lacks the “mounted on or in” limitation. See App. Br. 26 (Appellants
admitting that this feature is disclosed in Logan by referring to “a
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keyboard/operator interface that is mounted on or in the housing, as shown
in Logan.”), id. at 27; see Logan, fig. 1.
Because Appellants do not address Rejection No. 4 as articulated by
the Examiner and because we do not find Appellants’ other previously-made
arguments concerning claim 24 persuasive for the reasons set forth above in
the context of claim 82, Appellants have not persuaded us that the Examiner
erred in rejecting claim 24 as obvious in light of Logan, Mizukoshi, Abe,
Markley, Bedell, Anderka, and Gross. We affirm Rejection No. 4.

5. Claims 84 and 85 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderka, Logan, Gross, Lee, and Jambor
Claims 84 and 85 depend from claim 82. Appellants argue that these
claims are patentable because Jambor does not cure the deficiencies of the
underlying obviousness rejection of claim 82 based on Anderka, Logan,
Gross, and Lee. App. Br. 29. For the reasons discussed above, we have
concluded that the Appellants have not shown that the Examiner erred in
rejecting claim 82. Therefore, there are no deficiencies in that regard for the
Jambor to cure. Accordingly, Appellants have not shown that the Examiner
erred in rejecting claim 84 and 85.

DECISION
The decision of the Examiner to reject claims 28, 31, 32, and 92-97 is
reversed. The decision of the Examiner to reject claims 24, 82, 84 and 85 is
affirmed. We enter a new ground of rejection of claim 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Anderka, Logan, Gross, and Lee.

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FINALITY OF THE DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of 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 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 Appellants, 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:
(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 Appellants 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 Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
Appeal 2009-011853
Application 11/603,195

19
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 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)

mls