Ex Parte DeMarcken

Board of Patent Appeals and Interferences

May 20, 2010

10272426 (B.P.A.I. May. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL G. DEMARCKEN
____________

Appeal 2009-011006
Application 10/272,426
Technology Center 3600
____________

Decided: May 20, 2010
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on Mar.17, 2010.
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Application 10/272,426

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STATEMENT OF THE CASE
Carl G. DeMarcken (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-43. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART and add a new ground of rejection under 35
U.S.C. § 112, second paragraph.1

THE INVENTION
The invention relates to travel scheduling and pricing and involves
processing queries for air travel planning. According to current practice,
each query is handled by a single computer. “[T]here are many situations in
which it is advantageous for multiple computers to work on the same query
concurrently.” Spec. 1:24-25. Doing so can reduce response time (Spec.
1:26-27) and be more economical (Spec. 2: 1-11). According to the
Specification, the claimed method and computer program product achieve
these advantages by dividing the travel query into sub-queries for execution
by a travel-planning system to return answers satisfying the travel query.
Claims 1 and 30 are illustrative of the claimed invention.
1. A method comprising:

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 4, 2008) and Reply Brief (“Reply Br.,” filed Apr. 13, 2009),
and the Examiner’s Answer (“Answer,” mailed Feb. 19, 2009).
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dividing, by a computer system, a travel query including trip
information into sub-queries, the sub-queries, having trip information
divided into ranges.

30. A computer program product residing on a computer readable
medium comprises instructions for causing a computer to:
divide a travel query having trip information, into sub-queries,
the sub-queries having the trip information divided into ranges for
execution by a travel planning system to return answers that satisfy
the travel query.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Jones US 2002/0111935 A1 Aug. 15, 2002
Mahapatra et al., “Oracle Parallel Processing”, Aug. 2000. [Oracle]

Oracle9i & VLDB, Montse Collados Polidura, IT/DB Database
Workshop, Jul. 2001. [Oracle 9i]

The following rejection is before us for review:
1. Claims 1-43 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Oracle, Jones, and Oracle 9i.

ISSUE
The main issue is whether it would have been obvious over the cited
prior art combination to divide, by a computer system, a travel query
including trip information into sub-queries, the sub-queries, having trip
information divided into ranges.

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FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Examiner’s
Answer (See Ans. 3-22). We add that
• Figure 5 of Jones depicts a computer interface with an input
screen into which trip information can be entered. Once
entered, “the user may initiate the query by clicking ‘go’”
(Jones [0057]). “This go button [ ] will start the querying
process of the relational database ...” (Jones [0057]).
• Figure 6 of Jones shows an intermediate input screen to further
query for the best fare available by desired airline. See Jones
[0058]
• Figure 7 of Jones shows an output screen which shows a best
fare for a selected airline and a range of available dates. See
Jones [0059]. When a user inputs travel information in order to
query for a best fare, the Jones system returns a range of
available dates on which travel can take place for that fare.

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
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in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
Claim 1
Appellant’s comments regarding the prior Decision in Appeal 2007-
2473 (mailed Feb. 29, 2008) are not relevant to this appeal. Although the
claims here on appeal are the same, the references used to reject them, as
well as the Examiner’s rationale in support thereof, are not.
Unlike the rejections before us on appeal in 2007-2473 where the
Examiner had failed to show a computer dividing a travel query including
trip information into sub-queries having trip information divided into ranges,
here the Examiner has established a prima facie case of obviousness.
The Examiner has taken the position that Oracle discloses a process
whereby database queries are divided into sub-queries. Answer 4. The
Examine relied on Figures 1-1, 1-4, 1-5, and 1-8. Answer 4 (the figures are
reproduced at Answer 5-6). The Examiner explained what each Figure
relied upon teaches. Regarding Figure 1-8, for example, the Examiner states
that it “discloses the process of splitting the large query or task into smaller
sub-tasks or sub-queries in order to assign them to their own processor to be
executed individually, the result of which is the different sub-query results
being combined as a final result of the larger query.” Answer 4. In our
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view the Examiner has accurately characterized the disclosure of Oracle
represented by the Figures relied upon.
The Appellant has not adequately disputed the Examiner’s
characterization of Oracle. The Appellant does point out that “Oracle ... [is]
directed to partitioning of databases, and as such, [is] not directly applicable
to the subject matter of Claim 1.” App. Br. 10. But that point is not
commensurate with what is claimed. Claim 1 is broad in scope and does not
limit the claimed method so as to exclude databases. The claimed method
simply calls for dividing a query. Any implementation by which a query
may be divided is covered by the claim, so long as it is done by a computer.
To the extent the Appellant would argue that Oracle’s database does not
involve a computer, we would find such an argument unpersuasive. Oracle
is clearly describing a process implemented in a computer system. The
Appellant also points out that Oracle “discuss[es] generic database
partitioning” (App. Br. 11), which appears to suggest that the Appellant
views Oracle as disclosing dividing information but not dividing queries.
That point fails to address what is expressly disclosed in the Figures in
Oracle that the Examiner relied upon. Figure 1-5, for example, expressly
shows a “Large Query” divided into “Subtask 1” and “Subtask 2.” The
Appellant does not explain why that does not lead one of ordinary skill in
the art to divide a query into sub-queries as the Examiner has argued.
Given Oracle’s disclosure of dividing a query into subtasks and in
light Appellant’s insufficient argument to the contrary, we adopt the
Examiner’s position that Oracle discloses dividing queries into sub-queries
by a computer system.
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As for Oracle 9i, its disclosure is similar to that of Oracle. The
Examiner states that it shows “Range Partitioning.” Oracle 9i discloses a
process involving parallel operations to divide information in tables and that
information can be in ranges. Oracle 9i buttresses the Examiner’s position
that it was known at the time of the invention to divide information,
especially via a database.
Oracle and Oracle 9i, do not however expressly disclose dividing a
“travel” query “including trip information” into sub-queries “having trip
information divided into ranges.”
On the subject of “travel” queries “including trip information” and
“trip information divided into ranges”, the Examiner has cited Jones.
According to the Examiner, “Jones discloses the option of creating a travel
query, such as departure and destination information (trip information), and
teaching that travel information can be broken down in ranges, such as best
price and departure and arrival times (travel information divided into
ranges)(Fig. 5).” Answer 11. The Appellant disputes that, arguing that
“Jones ... fails to suggest the feature of ‘trip information divided into
ranges.’” App. Br. 12.
We have reviewed Jones and find that it supports the Examiner’s
position. Figure 5 of Jones depicts a computer interface with an input screen
into which trip information can be entered. Once entered, “the user may
initiate the query by clicking ‘go’” (Jones [0057]). “This go button [ ] will
start the querying process of the relational database” (Jones [0057]). Fig. 6
shows an intermediate input screen to further query for the best fare
available by desired airline. See Jones [0058]. An output screen is shown in
Fig. 7 which shows a best fare for a selected airline and a range of available
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dates. See Jones [0059]. When a user inputs travel information in order to
query for a best fare, the Jones system returns a range of available dates on
which travel can take place for that fare. Accordingly, as the Examiner has
argued, Jones discloses a “travel” query “including trip information” that
returns “trip information divided into ranges.” We should add that, in
disclosing an intermediate input screen after the initial travel query screen,
Jones would appear to be necessarily also disclosing narrowing a travel
query to a sub-query, both of which would include trip information.
Given Jones’s disclosure of a “travel” query “including trip
information” that returns into “trip information divided into ranges” and in
light of Appellant’s insufficient argument to the contrary, we adopt the
Examiner’s position that Jones discloses a travel query including trip
information that returns trip information divided into ranges.
The claimed subject matter differs from the cited prior art in providing
for a method that divides a travel query into sub-queries having travel
information in ranges. By contrast, the cited prior art discloses, separately,
dividing a travel query into sub-queries (Oracle) and providing a travel
query that returns “trip information divided into ranges” (Jones).
As to the level of skill in the art, that has not been addressed by either
the Examiner or the Appellant and thus is not at issue.
The factual determinations having been addressed, we now turn to the
legal conclusion of obviousness. The Examiner has stated that “[i]t would
have been obvious to one of ordinary skill in the art at the time of the
invention to modify the parallel processing of database information provided
by Oracle, with a database containing travel information taught by Jones, for
the purpose of increasing the overall efficiency of the travel process and to
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provide the user with their requested travel information faster than if it was
to be done on a single computer us[ing] only a single processor.” Answer
12. In effect, the Examiner is arguing that the claimed method simply
applies the Oracle process to the Jones’s travel query process to yield a
process that divides Jones’s travel query into sub-queries having trip
information divided into ranges. In effect, the Examiner’s rationale is that
the claimed process simply combines the teachings in Oracle (and Oracle 9i)
and Jones; that is, “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415-416.
For its part, the Appellant simply states that the Examiner’s reasoning
“clearly does not address” (App. Br. 15) the claimed method. We do not
agree. The Examiner has fully explained the scope and content of the prior
art and provided an apparent reasoning with rational underpinning for the
legal conclusion of obviousness. Appellant was thus under a burden on
appeal to the Board to demonstrate error in the Examiner's position. We
have considered Appellant’s arguments (see supra) but are not persuaded
that the prima facie case of obviousness is in error. Furthermore, the
Appellant has not come forward with any evidence of unpredictable results
or secondary considerations of nonobviousness.
Accordingly, we sustain the rejection of claim 1.

Claim 30
The Appellant argues that the claim limitation “the sub-queries ... for
execution by a travel planning system to return answers that satisfy the
travel query” is not taught on the cited prior art. App. Br. 16. The Appellant
concedes that the cited prior art combination would lead one to a technique
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whereby data would be retrieved to answer the original travel planning
query. App. Br. 16. But the Appellant disagrees that the cited art
combination would lead one to divide the travel query into sub-queries.
App. Br. 16. The Appellant argues that the “dividing of a query into sub-
queries is not for execution by a travel planning system to return answers
that satisfy the travel query.” App. Br. 16. But such an argument is not
commensurate in scope with what is claimed. The argument presumes the
claimed subject matter seeks to divide the query into sub-queries that return
something other than a range of travel information. But claim 30 is not so
limited. Moreover, Oracle discloses dividing a query into sub-queries and
Jones discloses a query that returns travel information. Accordingly, we do
not find Appellant’s argument persuasive as to error in the prima facie case.
We will therefore sustain the rejection of claim 30.

Claims 2 and 31
The Appellant argued claims 2 and 31 as a group (App. Br. 16). We
select claim 2 as the representative claim for this group, and the remaining
claim 31 stands or falls with claim 2. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant argues that these claims call for dividing trip
information having particular input specifications the prior art does not
disclose. App. Br. 16. But Jones clearly discloses a screen for inputting
specifications for retrieving particular information, such as best fares (see
discussion supra). Accordingly, whatever difference there is between the
input specifications of the claimed subject matter and that of Jones is a
matter of a difference in the nonfunctional descriptive material of the
specification. Nonfunctional descriptive material cannot render nonobvious
an invention that would have otherwise been obvious. In re Ngai, 367 F.3d
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1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). Accordingly, we will sustain the
rejection of claims 2 and 31.

Claim 3
The Appellant argues that one of ordinary skill in the art would not
have been led to execute sub-queries of travel information divided from a
travel inquiry as claimed. App. Br. 17-18. But, as we pointed out above,
Fig. 6 of Jones shows an intermediate input screen to further query for the
best fare available by desired airline. See Jones [0058]. The intermediate
screen is a sub-query generated from a travel query which, when executed,
returns answers satisfying the travel query, including answers about flights
and fares to be used with those flights. In light of this, and given that Oracle
discloses dividing a query into sub-queries and Jones otherwise discloses a
query that returns travel information, it would have been obvious one of
ordinary skill in the art to further execute the sub-queries divided from a
travel inquiry to return travel information as claimed. Accordingly, we will
sustain the rejection of claim 3.

Claims 4 and 5
Claims 4 and 5 require “concurrently executing the sub queries on
different computers” and “sequentially executing the sub queries on a single
computer,” respectively, which the Appellant argues the cited prior art does
not disclose. App. Br. 19. We agree with the Examiner that the system
disclosed in Oracle covers the use of multiple processors operating
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concurrently or sequentially. Answer 13 and 37. A user employing the
Jones’ process would query for travel information a multiple of times until
the desired result is achieved. At the time of the invention, as a matter of
efficiency, performing concurrent operations on different computers and
sequential operations on a single computer were well known alternatives to
having a computer process one single operation. For that reason, it would
have been obvious to one of ordinary skill in the art at the time of the
invention to perform Jones’s travel query a multiple of times on either
different computers that concurrently execute the sub queries or a single
computer that sequentially execute the sub queries. Accordingly the
rejection of claims 4 and 5 is sustained.

Claims 6 and 32
The Appellant argued claims 6 and 32 as a group (App. Br. 19). We
select claim 6 as the representative claim for this group, and the remaining
claim 32 stands or falls with claim 6. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant argues that these claims call for dividing a travel query
according to a time range that the cited references do not show. App. Br. 19.
The Examiner drew Appellant’s attention to Jones which the Examiner
argued showed selecting specific dates. Answer 14. Appellant argues that
“Jones discussion of ‘any day’” or “specific dates neither suggests the
claimed time range nor are they the result of dividing a travel planning
query.” App. Br. 19. But Jones specifically provides for a selection of
dates, i.e., a query by time range, in response to the initial travel query.
Accordingly, Appellant’s argument is not persuasive. We will therefore
sustain the rejection of claims 6 and 32.

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Claims 7-12 and 33-38
The Appellant argued claims 7-12 and 33-38, as a group (App. Br.
19). We select claim 7 as the representative claim for this group, and the
remaining claims 8-12 and 33-38 stand or fall with claim 7. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
These claims call for providing sub queries by dividing a travel query
according to a pair of time ranges. The Appellant focuses on Jones, arguing
that Jones does not depict a round trip travel query divided in to sub-queries
according to time range. App. Br. 20. However, the rejection is over Oracle
and Jones, not Jones alone. Oracle was cited for dividing a query into sub-
queries and Jones was cited for a travel query that yields trip information in
ranges. “The question in a §103 case is what the references would
collectively suggest to one of ordinary skill in the art. In re Simon, 461 F.2d
1387 (CCPA 1972).” In re Ehrreich, 590 F.2d 902, 909 (Emphasis
original.) We therefor sustain the rejection of claims 7-12 and 33-38.

Claims 13 and 39
The Appellant argued claims 13 and 39 as a group (App. Br. 20). We
select claim 13 as the representative claim for this group, and the remaining
claim 39 stands or falls with claim 13. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
These claims require “dividing the travel query in accordance with a
cost of executing the sub-queries.” The Appellant argues that this subject
matter is not described or suggested by the combined prior art. App. Br. 20.
However, the Appellant has not adequately rebutted the Examiner’s position,
which relies on Oracle’s disclosure that dividing a task takes time and
resources. Answer 15. The Examiner’s apparent reasoning for the legal
conclusion of obviousness is that Oracle’s disclosure that dividing a task
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takes resources would have led one of ordinary skill in the art to divide a
travel query in accordance with a cost of executing sub-queries given. We do
not find and the Appellant has not sufficiently shown this reasoning is not
logically underpinned. Also, the Appellant argues that specific algorithms
are provided to accomplish the claimed dividing but we do not see them in
the claims. App. Br. 20. Accordingly, that argument is not commensurate
in scope with what is claimed. Accordingly, the rejection of claims 13 and
39 will be sustained.

Claims 14-16
The Appellant argued claims 14-16 as a group (App. Br. 21). We
select claim 14 as the representative claim for this group, and the remaining
claims 15 and 16 stand or fall with claim 14. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
The Appellant has made an argument with respect to these claims
which simply stated, in whole or in part, that the references do not disclose
or suggest certain claimed features - without responding to the Examiner's
reasoning in establishing a prima facie case of obviousness. App. Br. 21 and
Answer 16-17. “It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.” In re Baxter Travenol Labs, 952 F.2d 388,
391 (Fed. Cir. 1991). See also In re Wiseman, 596 F.2d 1019, 1022 (CCPA
1979) (arguments must first be presented to the board). Furthermore, a
general allegation that the art does not teach any of the claim limitations is
no more than merely pointing out the claim limitations. A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii).
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Accordingly, we will sustain the rejection of claims 14-16.

Claims 32 and 39
The rejection of these claims was addressed above with respect to
representative claims 6 and 13, respectively. The Appellant also addresses
them together in a separate group. See App. Br. 21. But as with the
rejection of claims 14-16, here, too, the Appellant has made an argument
with respect to these claims which simply states, in whole or in part, that the
references do not disclose or suggest certain claimed features - without
responding to the Examiner's reasoning in establishing a prima facie case of
obviousness. App. Br. 21 and Answer 14-15.
Accordingly, we will sustain the rejection of claims 32 and 39.

Claim 17
Albeit the Appellant has reproduced the Examiner’s position (see
App. Br. 21-22), Appellant’s rebuttal argument is no more than simply
stating, in whole or in part, that the references do not disclose or suggest
certain claimed features - without responding to the Examiner's reasoning in
establishing a prima facie case of obviousness.
The Appellant also argues that the Examiner failed to address the
claim limitation of optimal division of the query for execution. App. Br. 22.
We find that the Examiner has done so. As the Examiner has explained
(Answer 41-42), the Examiner’s Answer provided an analysis of the process
Oracle discloses in dividing a query. The Examiner pointed out the reasons
Oracle gave for implementing the disclosed process, including efficiency,
among other reasons. See Answer 4. In doing so, the Examiner implicitly
addressed the optimal nature of Oracle’s query-dividing process.
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We will therefore sustain the rejection of claim 17.

Claim 18
This claim requires the use of “cost functions to arrive at a set of sub-
queries that would balance work performed by the sub-queries through
selecting values of terms in the cost functions.” The Examiner’s position is
that this would have been obvious over Oracle’s disclosure that dividing a
task takes time and resources. Answer 15. The Examiner’s apparent
reasoning for the legal conclusion of obviousness is that Oracle’s disclosure
that dividing a task takes resources would have led one of ordinary skill in
the art to use cost functions to divide a travel query into sub-queries.
Answer 20. However, as the Appellant has argued, “Oracle does not
specifically deal with [ ] cost functions that has such terms to which values
can be assigned to balance work.” App. Br. 23. Although we have found
that Oracle’s disclosure would have led one of ordinary skill in the art to use,
per se, a “cost” of executing sub-queries (see the discussion with respect to
the rejection of claims 13 and 38 supra), we do not find that one of ordinary
skill in the art given this disclosure would have have known or have been led
further to use “cost functions” as claimed.
Accordingly, the rejection of claim 18 will not be sustained.

Claims 19-22
The Appellant argued claims 19-22 as a group (App. Br. 24). We
select claim 19 as the representative claim for this group, and the remaining
claims 20-22 stand or fall with claim 19. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
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Claim 19 further defines so that sub-query optimization is
accomplished by taking into consideration, for example, airline size. The
Examiner reasoned that Jones shows a typical database which would have
information regarding airlines. Answer 19. The Appellant concedes this is
so but argues that Jones does not disclose dividing a query into a sub-query.
App. Br. But the Examiner clearly argued that Oracle shows dividing a
query into sub-queries. In that regard, the Appellant argues that Oracle
“fail[s] to mention any feature that can be construed as an optimization.”
App. Br. 24. But the rejection is not over Jones or Oracle but over their
combination. The question is whether the combination of the cited
references would have led one of ordinary skill in the art to the claimed
subject matter. In that regard, the Examiner took the position that it would
have obvious to one of ordinary skill in the art of databases, given the
combination of Oracle and Jones, to divide a travel query into sub-queries
while considering, for example, airline size to optimize the sub-query.
Answer 19-20. Accordingly, the Examiner presented a prima facie case of
obviousness. The Appellant’s response doe not adequately address the
combination of references. Accordingly, we do not find that the prima facie
case has been overcome.
Accordingly, we will sustain the rejection of claims 19-22.

Claims 23-29 and 41-43
We will reverse the rejection as to claims 23-29 and 41-43. As further
explained below, we will enter a new ground of rejection of claims 23-29
and 41-43under 35 U.S.C. § 112, second paragraph, because they are
indefinite. Therefore, their rejection over prior art must fall, pro forma, as
being necessarily based on speculative assumptions as to the scope of this
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claim. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Our decision
in this regard is based solely on the indefiniteness of the subject matter and
does not reflect on the adequacy of the prior art evidence applied in support
of the rejection.

NEW GROUNDS
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
of claims 23-29 and 41-43 under 35 U.S.C. § 112, second paragraph as being
indefinite.
The independent claims 23 and 41 call for dividing the travel query
into sub-queries according to “query difficulty for execution by [a] travel
planning system to return answers that satisfy the travel query.”
We can find no objective standard in the Specification for measuring
“query difficulty.” “Some objective standard must be provided in order to
allow the public to determine the scope of the claimed invention.” Datamize
LLC v. Plumtree Software Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005).
Without such a standard, determining a query’s difficulty is a purely
subjective exercise. “A purely subjective construction of [“query
difficulty”] would not notify the public of the patentee's right to exclude
since the meaning of the claim language would depend on the unpredictable
vagaries of any one person's opinion of [a sub-query’s ability to return the
answers satisfying one’s travel query].” Datamize, 417 F.3d 1342, 1350.
For this reason, the claims are indefinite.

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CONCLUSIONS OF LAW
We affirm the rejection of claim 1-17, 19-22, and 30-40 under 35
U.S.C. §103(a) as being unpatentable over Oracle, Jones, and Oracle 9i but
reverse the rejection of claims 18, 23-29, and 41-43 under 35 U.S.C. §103(a)
as being unpatentable over Oracle, Jones, and Oracle 9i.
We enter a new ground of rejection of claims 23-29 and 41-43 under
35 U.S.C. § 112, second paragraph.

DECISION
The decision of the Examiner to reject claims 1-43 is affirmed-in-part
and we enter a new ground of rejection of claim 23-29 and 41-43 under 35
U.S.C. § 112, second paragraph.
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.”
37 C.F.R. § 41.50(b) also provides that the 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 . .
. .
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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