Ex Parte Chien et al

Board of Patent Appeals and Interferences

Apr 17, 2009

10840056 (B.P.A.I. Apr. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHAO-NAN CHIEN, LONG-SONG SHISH, WEI-FANG WU,
and CHIN-MING CHEN
____________

Appeal 2009-0035
Application 10/840,056
Technology Center 3700
____________

Decided: April 17, 2009
____________

Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Chao-Nan Chien et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-3, 7-14, and 18-19. Claims
4-6 and 15-17 are withdrawn. We have jurisdiction over this appeal under
35 U.S.C. § 6 (2002).

The Invention
Appellants' claimed invention is directed to a cooling fin structure
wherein cooling fins are connected to a substrate by welding. Specification
3:2-6. At the contact interface between a fin and the substrate, a vacant
region is defined on the fin such as to accommodate surplus solder and
welding flux for the purpose of improving weld quality and decreasing
thermal contact resistance. Specification 3:7-13.
Claims 1-3, 10, and 11, reproduced below, are illustrative of the
claimed invention.
1. A cooling fin structure connected to a substrate
with a solder, the cooling fin structure comprising:
at least one thermally conductive sheet, each
of the thermally conductive sheets being bent to
form a heat radiation part and a bonding part, the
bonding part having a flat surface in contact with
the substrate and being formed with a vacant
region;
wherein the solder is disposed between the
substrate and the bonding part, and the vacant
region exposes the squeezed solder underneath.

2. The cooling fin structure of claim 1, wherein the
vacant region is defined by notches formed on an
edge of the bonding part.
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3. The cooling fin structure of claim 1, wherein the
bonding part has a serrate edge.

10. The cooling fin structure of claim 1, wherein
the thermally conductive sheet is bent to form an
L-shape cross-section.

11. A fin assembly, comprising:
a substrate; and
a plurality of cooling fins, each of which
being bent towards one direction to form a heat
radiation part and a bonding part, the bonding part
having a flat surface soldered on a surface of the
substrate to connect the cooling fins to the
substrate;
wherein the bonding part is formed with a
vacant region such that part area[1] of the surface of
the substrate between adjacent two of the cooling
fins is not covered by the cooling fins.

12. The fin assembly of claim 11, wherein the
cooling fin is bent through sheet metal work.

18. The fin assembly of claim 11, wherein the
thermally conductive material[2] is selected from

1 The language "part area" lacks strict antecedent basis in the claim. For
purposes of this appeal, we understand the recited structure of "part area of
the surface" to mean one or more part areas, or portions, of the surface.
Appellants' drawings support one part area in fig. 4, and multiple part areas
in figs. 2 and 3.
2 The language "thermally conductive material" lacks strict antecedent basis
in the claim. For purposes of this appeal, consistent with Appellants’
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the group consisting of aluminum, copper,
aluminum alloy, copper alloy, and their
compounds.

19. The fin assembly of claim 11, wherein the
material of the cooling fin is selected from the
group consisting of aluminum, copper, aluminum
alloy, copper alloy, and their compounds.

The Rejections
Appellants seek review of the Examiner's rejection under 35 U.S.C. §
102(b) of claims 1-3, 7-14, 18, and 19 as being anticipated by Ito (US
5,558,155, issued Sep. 24, 1996)[3].

Specification, we understand the reference to "thermally conductive
material" in claim 18 to be a recitation of the material of the cooling fin.
Appellants' Specification provides: "a cooling fin structure is constructed by
a thermally conductive sheet." Specification 3:2-3. Further, "a cooling fin
… is formed by a thermally conductive sheet bent to form…." Specification
4:10-12. This interpretation begs the question of the difference in scope
between claim 18's material and the "material of the cooling fin" in claim 19,
but we need not address this issue here. In the event of further prosecution
of the subject matter of claim 18, Appellants and the Examiner should
consider taking appropriate action to amend claim 18 to include a positive
recitation that the fin is made of a "thermally conductive material."
3 Appellants do not clearly state that dependent claims 7-9, 12, and 14 are to
be reviewed on appeal in section VI - "Grounds of Rejection to be Reviewed
on Appeal." Br. 3. Appellants however state they "appeal rejected Claims
1-3, 7-14, 18 and 19," in section III - "Status of the Claims." Br. 1. Because
the dependent claims not listed in section VI are not canceled nor separately
argued, we determine that the non-listed dependent claims stand or fall in
accordance with the independent claims explicitly set out in section VI.
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SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

ISSUES
Appellants argue that Ito does not anticipate all elements of claims 1-
3, 7-14, 18, and 19. Appellants present separate arguments for claims 1, 2,
3, 10, and 11. In accordance with 37 C.F.R. § 41.37(c)(1)(viii), claims 7-9
stand or fall with claim 1. We separately address each of claims 2, 3, and
10, and we address claims 11-14, 18, and 19 together.
The issues presented in this appeal are as follows:
(1) Have Appellants demonstrated that the Examiner erred in showing Ito
describes all elements of claim 1? In particular, does Ito describe a
"bonding part having a flat surface … and being formed with a vacant
region," and does Ito describe that "the vacant region exposes the
squeezed solder underneath"? Br. 3-4. The issue turns on whether Ito
shows a vacant region that exposes the solder underneath at fig. 6
items 18g. Br. 4; Ans. 4-5.
(2) Have Appellants demonstrated that the Examiner erred in showing Ito
describes all elements of claim 11? In particular, do V-shaped
sections 18g of fig. 6 of Ito "cover" the substrate? Br. 5-6; Ans. 5-6.
(3) Have Appellants demonstrated that the Examiner erred in showing Ito
describes all elements of claim 2? In particular, does Ito describe
"notches"? This issue turns on whether V-shaped sections 18g of fig.
6 of Ito are notches. Br. 7; Ans. 6.
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(4) Have Appellants demonstrated that the Examiner erred in showing Ito
describes all elements of claim 3? In particular, does Ito describe a
"serrate edge"? This issue turns on whether V-shaped sections 18g of
fig. 6 of Ito form a serrate edge. Br. 7; Ans. 6.
(5) Have Appellants demonstrated that the Examiner erred in showing Ito
describes all elements of claim 10? In particular, does Ito describe an
"L-shaped cross-section"? This issue turns on whether fig. 3 of Ito,
with a corresponding [-shaped cross-section fin, describes an L-
shaped cross-section fin. Br. 8; Ans. 6.
(6) Does Ito describe all elements of claims 11, 12, 14, 18, and 19? In
particular, does Ito describe in fig. 2 a "part area of the surface of the
substrate … not covered by the cooling fins"? This issue turns on
whether the substrate (plate 12) is "covered" at the square notches at
the bases of projections 13f.
(7) Would the subject matter of claims 10 and 13 have been obvious in
view of Ito and Appellants' admitted prior art? In particular, would it
have been obvious to modify an L-shaped cooling fin with a bonding
part described by Ito?

FACTS PERTINENT TO THE ISSUES
FF1 Ito describes a flat surface of a bonding portion (lower edge section)
of a cooling fin 18 between items 18g in fig. 6. The bonding portion
is the part of the fin used to attach the fin to the substrate. See e.g. fig.
3.
FF2 Ito describes two V-shaped sections on the bonding portion of a
cooling fin at items 18g of fig. 6. Each section forms an empty region
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that acts as a reservoir for excess brazing material. Ito, col. 6, ll. 35-
41.
FF3 Neither claim 1 nor the specification defines the object that the solder
is intended to be exposed to or in what manner or direction it is
exposed. Specification, passim.
FF4 The V-shaped sections 18g act as a reservoir for excess brazing (FF2),
but are not closed on all sides such that brazing would be visible to an
observer at certain angles, such as a view running through the page in
fig. 6. As such, Ito describes the solder being exposed to visual
perception in fig. 6.
FF5 The V-shaped sections 18g shown in Fig. 6 of Ito overlie the substrate
to which the fin is mounted.
FF6 A person of ordinary skill in the art would have understood that
"cover" means "to place or spread something over so as to protect or
conceal." Collins English Dictionary (London 2000).
FF7 A person of ordinary skill in the art would have understood that
"notch" means "a V-shaped cut or indentation; nick." Collins English
Dictionary (London 2000).
FF8 Neither claim 2 nor the specification defines a particular quantity or
configuration of the "notches," other than the notches must be on the
edge of the bonding portion of the fin. Specification, passim.
FF9 A person of ordinary skill in the art would have understood that
"serrate" means "notched or toothed on the edge." Merriam Webster
College Dictionary (10th ed. 1997).
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FF10 Neither claim 3 nor the specification defines a particular quantity or
configuration of the "serrate edge," other than the serrate edge must be
on the bonding portion of the fin. Specification, passim.
FF11 Ito discloses a [-shaped fin (figs. 1-6, 22-26), a Z-shaped fin (figs. 7-
12), an S-shaped fin (figs. 13-15), a corrugated fin (figs. 16-18), and
an alternative [-shaped fin (figs. 19-20).
FF12 Neither claim 11 nor the specification defines the "part area" of the
surface of the substrate that is not covered by the cooling fins.
FF13 Ito describes portions of the substrate that remain uncovered by the
cooling fins in the concave notches 13d of fig. 2 and the square
notches at the base of convex tabs 13f (further described in fig. 5A by
the dashed lines near tab 13f). The concave notches 13d and 13f mate
to create an integral unit of fins. Ito, fig. 2. However, the square
notches at the base of convex tabs 13f are not filled with a mate,
leaving them open throughout the structure. An example of this is
shown in fig. 2.
FF14 Claim 11 does not require that the "not covered" portion of the
substrate take any particular form, size, or shape. According to the
specification, the "not covered" portion "can serve as an additional
space … to accommodate … flux and the surplus solder."
Specification 3:7-11; 6:18-19. Further, the "not covered" portion
allows "most of the welding flux" to be "not left on the welding area."
Specification 5:5-11. Still further, "the shape, number and area of the
vacant region is not limited." Specification 6:17-18.
FF15 Ito describes that cooling fins 13 are made from a brazing sheet plate
having a core material made of aluminum alloy. Ito, col. 5, ll. 29-32.
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This sheet plate is bent into the appropriate shape (e.g., "[," "Z," "S")
to form cooling fin 13. Ito, col. 5, ll. 38-44. Cooling fins 13 are
mounted on flat plate 12 that is also made of aluminum alloy. Ito, col.
5, ll. 23-26.
FF16 L-shaped cooling fins are admitted prior art. Figures 1A-C of the
Appellants' drawings depict an L-shaped cooling fin labeled "PRIOR
ART."

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention. Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991). It is not necessary that the reference teach what the subject
application teaches, but only that the claim read on something disclosed in
the reference, i.e., that all of the limitations in the claim be found in or fully
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772
(1984).
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
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the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l. Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007).
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at ___, 127 S. Ct. at 1740. We must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id.
Common sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes,
and in many cases a person of ordinary skill will
be able to fit the teachings of multiple patents
together like pieces of a puzzle. . . . A person of
ordinary skill is also a person of ordinary
creativity, not an automaton.
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Id. at ___, 127 S. Ct. at 1742. Moreover, an artisan must be presumed to
know something about the art apart from what the references disclose. See
In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).

ANALYSIS
Issue (1) - Anticipation of Claim 1
As noted in our findings above, Ito discloses a bonding portion of a
cooling fin that has a flat surface (FF1) and two V-shaped sections forming a
vacant portion underneath each section (FF2). Appellants argue that the V-
shaped section is a separate part of the fin in Ito, and not part of the flat
surface. Br. 4. However, claim 1 requires that the bonding portion has a flat
surface and a vacant region, not that the flat surface has a vacant region.
Claim 1 states: "the bonding part having a flat surface in contact with the
substrate and being formed with a vacant region." The grammatical structure
of the sentence allows the interpretation that the "bonding part" has two
features: a "flat surface" and a "vacant region." Ito discloses both parts of
the "bonding part" at fig. 6. FF1; FF2. Appellants' argument that the flat
surface must contain the "vacant region" fails because it requires an unduly
narrow interpretation of the claims.
Appellants further argue that the V-shaped section does not "expose"
the solder, as required by claim 1. Br. 4. Appellants do not make any
argument for a particular object the solder is supposed to be exposed to.
Claim 1 does not require that the solder be exposed in any particular way.
FF3. Instead, claim 1 merely requires that "the vacant region exposes the
squeezed solder." The solder is visible under the V-notch to an observer
viewing the cooling fins at an angle perpendicular to the plane of the fin's
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surface. FF4. Appellants' argument is not found persuasive because the
solder is exposed to visual inspection.
In light of the above, Appellants' arguments do not persuade us that
the Examiner erred in rejecting claim 1 as being anticipated by Ito, or claims
7-9, which stand or fall with claim 1.

Issue (2) - Anticipation of Claim 11
As noted above, Ito discloses a cooling fin with a bonding portion
having V-shaped sections that form vacant regions (FF2). Appellants argue
that the bonding portion having the V-shaped sections described by items
18g of fig. 6 of Ito cover the substrate. Br. 5.
The Examiner disagrees. The Examiner states that the "vacant region
is not covered, in that an unobstructed line of sight extends between the
substrate 12 and the concave sections 18g…." Ans. 5. However, we note
that claim 11 does not require that the vacant portion is "not covered."
Instead, the claim requires that the substrate is "not covered" in some "part
area." The Examiner's position that the vacant region is not covered
therefore does not address the claimed structure.
While the vacant regions beneath V-shaped sections 18g of fig. 6 of
Ito may expose the brazing material, the V-shaped sections 18g do overlie,
or cover, the substrate (plate 12). FF5; FF6. Fig. 6 does not appear to show
that the V-shaped sections 18g relied upon by the Examiner are provided
with any gaps, holes, or other structures so as to leave any portion of the
substrate (plate 12) beneath uncovered.
We agree with Appellants that the V-shaped sections 18d of Ito
illustrated in fig. 6 do not support the Examiner’s position that Ito teaches a
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cooling fin assembly wherein “part area of the surface of the substrate
between adjacent two of the cooling fins is not covered by the cooling fins,”
as called for in claim 11. Accordingly, we reverse the Examiner's 35 U.S.C.
§ 102(b) rejection of claim 11, as well as claims 12-14, 18, and 19, which
depend from claim 11, as anticipated by Ito.

Issue (3) - Anticipation of Claim 2
As shown in the findings of fact above, Ito discloses a cooling fin with
a bonding portion (FF1) having V-shaped sections that form vacant regions
(FF2). Further, a person of ordinary skill in the art would have understood
that "notch" means "a V-shaped cut or indentation." FF7. Appellants argue
that the V-shaped sections of Ito are "only defined on the ends of the fins."
Br. 7. However, claim 2 does not require any particular number or
configuration of notches. FF8. The edge of the bonding part of the fin in Ito
has two V-like shapes (FF2), which would be understood by one of ordinary
skill to be notches (FF7). Therefore, Appellants' arguments do not persuade
us that the Examiner erred in rejecting claim 2 as being anticipated by Ito.

Issue (4) - Anticipation of Claim 3
As shown in the findings of fact above, Ito discloses a cooling fin with
a bonding portion (FF1) having V-shaped sections that form vacant regions
(FF2). These V-shaped sections would be understood by one of ordinary
skill to be notches. FF7; Issue (3). Further, a person of ordinary skill in the
art would have understood that "serrate" means "notched or toothed on the
edge." FF9. The notches of Ito create a serrate edge because the bonding
portion has notches along one edge, as shown in fig. 6.
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Appellants argue that the two notches are discontinuous. Br. 7.
However, the claim does not specify any particular serrate configuration,
such as a "continuous serrate edge." FF10. Appellants further argue that a
serrate edge should "look like teeth (plural) of saw [sic]." Again, the claim
does not specify any particular serrate configuration, such as a "saw-like
serrate edge." FF10. Appellants' arguments are based on language not
found in the claim. It is well established that limitations not appearing in the
claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982). Appellants' arguments do not persuade us that the
Examiner erred in rejecting claim 3 as anticipated by Ito.

Issue (5) - Anticipation of Claim 10
As shown in the findings of fact above, Ito discloses several shaped
fins, including a [-shape. FF11. Appellants argue that a [-shaped cross
section is not an L-shaped cross section. Br. 8. The Examiner responds that
the [-shape is an L-shape with "top portions." Ans. 6.
We agree with Appellants that an L-shaped cross section is not
anticipated by a [-shaped cross section. While the [-shape can be construed
as comprising or including an L-shape, we cannot agree with the Examiner
that a [-shaped cross section can be construed as an L-shaped cross section
with an additional top section. The "top portions" alluded to by the
Examiner are additional structure that makes the cross section something
other than an L-shape. Although additional structure is permitted by the
"comprising" language of the claim, that additional structure cannot change
the cross section of the cooling fin to a shape other than an L-shape. We
agree with Appellants that Ito does not show a cooling fin with an L-shaped
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cross section at fig. 6 and reverse the Examiner's 35 U.S.C. § 102(b)
rejection of claim 10 as anticipated by Ito.

Issue (6) - Anticipation of Claims 11, 12, 14, 18, and 19 under New Grounds
of Rejection
Notwithstanding our finding above that the V-shaped sections 18g of
fig. 6 of Ito do not satisfy the limitation of a "part area" of the substrate "not
covered" by the fin, we find that Ito does describe this limitation at fig. 2.
The claim does not specify the location at which the substrate is "not
covered" by the fins. FF12. Ito discloses two locations where the fin does
not cover the substrate, the concave notches 13d of fig. 2 and the square
notches at the base of convex tabs 13f. FF13. The concave notches 13d and
13f mate to create an integral unit of fins. Id. However, the square notches
at the base of convex tabs 13f are not filled with a mate, leaving them open
throughout the structure. Id. Further, claim 11 does not specify the extent of
the substrate "not covered." FF14. The Specification advocates a broad
reading of the "not covered" portion and does not limit the portion to be of
any particular shape or size. FF14.
Appellants argue that the purpose of the vacant region is to "freely
allow flow." Br. 6. However, neither the claims nor the specification
require that the "not covered" portion be of any particular size such as to
allow free flow. FF14. Moreover, claim 11 does not call for the “not
covered” part area to freely allow flow.
Consequently, the square notches at the base of convex tabs 13f serve
as a vacant region such that a "part area" of the substrate is "not covered" by
the fins. These areas expose the substrate underneath, such that the substrate
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is "not covered" in these portions under the broadest reasonable
interpretation of the claims in light of the Specification. See FF6.
Therefore, we find that the subject matter of claim 11 is anticipated by Ito.
Although claims 12, 14, 18, and 19 were not separately argued by
Appellants or addressed by the Examiner, we briefly address them here.
Regarding claim 12, Ito describes that the fins are made by bending (i.e.
working) a metal sheet plate. FF15. Regarding claim 14, Ito describes the
edge of the bonding part of the fin as having two V-like shapes (FF2), which
would be understood by one of ordinary skill to be notches (FF7). See also
Issue (3) above. Regarding claims 18 and 19, Ito describes the fins as being
made from an aluminum alloy. FF15. Therefore, all elements of claims 12,
14, 18, and 19 are anticipated by Ito.
In light of the above, we find that the subject matter of claims 11, 12,
14, 18, and 19 is anticipated by Ito. Therefore, pursuant to our authority
under 37 C.F.R. § 41.50(b), we reject claims 11, 12, 14, 18, and 19 under 35
U.S.C. § 102(b) as anticipated by Ito.

Issue (7) - Obviousness of Claims 10 and 13 under New Grounds of
Rejection
As shown in the analysis of Issue (5) above, Ito fails to explicitly
disclose a fin with an L-shaped cross section. However, L-shaped cooling
fins are admitted by Appellants to be old and well known in the art. FF16.
It would have been obvious to a person having ordinary skill in the art at the
time of invention to modify the base portion of a standard L-shaped cooling
fin with the interlocking base portions described in Ito for the purpose of
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reducing clearance between fins and producing a more efficient cooling
apparatus. Ito, col. 2, ll. 40-46.
While Ito mainly focuses on fins formed by bending both the upper
and lower edges of the fins to form bases, Ito only requires "bending at least
one of upper and lower edge sections." Ito, Abstract. Therefore, the
modification of the shape of the fin used by Ito would yield predictable
results so long as at least one edge was bent to allow for an interlocking fin
design.
In light of the above, we find that the subject matter of claims 10 and
13 would have been obvious in view of Ito and the admitted prior art.
Therefore, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
claims 10 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Ito
and Appellants’ admitted prior art.

CONCLUSIONS OF LAW
(1) Appellants have not demonstrated that the Examiner erred in finding
Ito describes all elements of claim 1. In particular, Ito describes a
"bonding part having a flat surface … and being formed with a vacant
region," and that "the vacant region exposes the squeezed solder
underneath."
(2) Appellants have demonstrated that the Examiner erred in finding Ito
describes all elements of claim 11. In particular, Ito’s V-shaped
sections 18g shown in fig. 6 do cover the substrate (plate 11).
(3) Appellants have not demonstrated that the Examiner erred in finding
Ito describes all elements of claim 2. In particular, Ito describes
"notches."
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(4) Appellants have not demonstrated that the Examiner erred in finding
Ito describes all elements of claim 3. In particular, Ito describes a
"serrate edge."
(5) Appellants have demonstrated that the Examiner erred in finding Ito
describes all elements of claim 10. In particular, Ito does not
explicitly describe an "L-shaped cross section."
(6) The subject matter of claims 11, 12, 14, 18, and 19 is anticipated
under 35 U.S.C. § 102(b) by Ito. In particular, Ito describes a "part
area of the surface of the substrate … not covered by the cooling fins"
in fig. 2.
(7) The subject matter of claims 10 and 13 would have been obvious
under 35 U.S.C. § 103(a) in view of Ito and Appellants’ admitted
prior art.

DECISION
The Examiner's decision is affirmed as to claims 1-3 and 7-9, and
reversed as to claims 10-14, 18, and 19. A new ground of rejection of
claims 10-14, 18 and 19 is entered pursuant to 37 C.F.R. § 41.50(b).
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
“[a]ppellant 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 rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. §41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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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 ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
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
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) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b).
Appeal 2009-0035
Application 10/840,056

20

LV:

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