Ex Parte DomanicoDownload PDFBoard of Patent Appeals and InterferencesSep 21, 201110330814 (B.P.A.I. Sep. 21, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte EDWARD J. DOMANICO ____________ Appeal 2009-014289 Application 10/330,814 Technology Center 3700 ____________ Before LINDA E. HORNER, MICHAEL W. O’NEILL, and STEFAN STAICOVICI, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014289 Application 10/330,814 2 STATEMENT OF THE CASE Edward J. Domanico (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-7, 9-15, 17, and 21-24.1 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 Appellant’s claimed invention relates to “the collection, storage and disposal of fluorescent lamps and the recovery of mercury vapors emitted from said fluorescent lamps.” Spec. 1. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A hazardous material and chemical waste storage and disposal system comprising: means for receiving an object containing a hazardous material or chemical within; means for breaking the received object to release the hazardous material or chemical; means for collecting the broken object; means for capturing a substantial amount of the released hazardous material or chemical; and means for retaining the substantial amount of the released hazardous material or chemical, said means for retaining externally disposed with respect to said means for collecting. 1 The Final Office Action from which this appeal is taken incorrectly lists the rejected claims as 1-17 and 21-24. Claim 16 has been canceled, and we find no rejection of claim 8 in this Final Office Action or in the Answer. Appeal 2009-014289 Application 10/330,814 3 THE OBJECTION AND REJECTIONS Appellant seeks review of the following objection and rejections: 1. The Examiner objected to the Specification as failing to provide proper antecedent basis for the claimed subject matter. 2. The Examiner rejected claims 1, 4, and 23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.2 3. The Examiner rejected claims 1-7 under 35 U.S.C. § 102(b) as being anticipated by Deklerow (US 5,205,497; issued April 27, 1993). 4. The Examiner rejected claims 9-11, 13, 15, 17, and 21-24 under 35 U.S.C. § 103(a) as being unpatentable over Deklerow.3 5. The Examiner rejected claims 12 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Deklerow and Perry (US 5,092,527; issued March 3, 1992). ISSUES The issues presented by this appeal are: Does Appellant’s original disclosure provide adequate support for a housing defining an undivided interior area? Does Appellant’s original disclosure provide adequate support for a housing serving as a bagless collection area? 2 The Examiner supplemented the Answer to include claim 1 in this ground of rejection. Miscellaneous Commc’n to Applicant, mailed June 5, 2009. 3 The Examiner incorrectly includes canceled claim 16 in this ground of rejection. Ans. 4. Appeal 2009-014289 Application 10/330,814 4 Does Deklerow disclose “means for retaining externally disposed with respect to said means for collecting” as called for in claim 1? Does Deklerow disclose “a second opening in the cover member” as called for in claims 9 and 23? ANALYSIS Objection to the Specification and Rejection under 35 U.S.C. § 112, first paragraph Ordinarily an objection is petitionable, and a rejection is appealable to the Board. When the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. Manual of Patent Examining Procedure (MPEP) § 2163.06, II. Review of New Matter Objections and/or Rejections (8th ed., Rev. 8, July 2008). See also MPEP § 608.04(c) (8th ed., Rev. 8, July 2008); 35 U.S.C. § 134(a); and 37 C.F.R. § 1.181(a)(1). While the Examiner has not made a new matter rejection or objection, in this case, the objection to the Specification for lack of antecedent basis and the written description rejection turn on the same issue of whether the claimed subject matter finds adequate support in the original disclosure. As such, we will decide both the objection and the rejection. The Examiner’s objection and rejection are both based on the Examiner’s finding that “the [S]pecification as originally filed does not provide support for the teaching of ‘a housing having a cover member and defining an undivided interior area serving as a bag less collection area’ as Appeal 2009-014289 Application 10/330,814 5 now recited in claims 1, 4 and 23 respectively.” Misc. Commc’n of June 5, 2009.4 In order to satisfy the written description requirement, “the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). “[T]he written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). “undivided interior area” Appellant’s Specification describes that the system includes “a drum or container such as a 55-gallon Department of Transportation (D.O.T.) 4 Independent claim 1 recites only “means for collecting the broken object.” Claim 1 does not recite a housing defining an undivided interior area serving as a bagless collection area. Claim 4 depends from claim 1 and further recites that the “means for collecting is a housing having an undivided interior area for receipt of the broken object.” Claim 4 does not recite that the housing serves as a “bagless collection area.” Only independent claim 23 calls for a housing having “an undivided interior area serving as a bagless collection area.” Appeal 2009-014289 Application 10/330,814 6 standard drum” having “an interior hollow volume.” Spec. 2, ll. 22-23; see also Spec. 6, ll. 12-15. We find that a person skilled in the art would understand that a conventional 55-gallon D.O.T. drum with an interior hollow volume is a housing with an undivided interior area. We have no reason to believe that conventional D.O.T. drums of the type disclosed in Appellant’s Specification have divided interior areas, and the Examiner has not provided us with any reasoning or evidence of such. Thus, we do not sustain the rejection of claims 1 and 4 under 35 U.S.C. § 112, first paragraph. We likewise do not sustain the portion of the objection to the Specification based on a determination that the Specification fails to provide adequate antecedent basis for a housing having an undivided interior area. “bagless collection area” Appellant’s Specification describes that one or more blades of a spinner assembly “breaks the fluorescent lamp into fragments that collect at the bottom of the drum.” Spec. 3, ll. 20-22; see also Spec. 7, ll. 5-7. We find this disclosure inadequate to reasonably convey to those skilled in the art that Appellant had possession of the claimed bagless collection area called for in claim 23. It is not apparent that the description of lamp fragments collecting at the bottom of the drum supports the negative limitation that the drum is used without a bag. Likewise, Appellant’s Figures do not show the interior of the drum and thus do not show a bagless collection area. Appellant argues that the stated object of the invention that the system is easily movable from drum-to-drum reflects the fact that the Appeal 2009-014289 Application 10/330,814 7 drum is bagless because “if a bag was provided, the system would not be moved to a different drum.” Br. 6-7. We disagree. The prior art system to Deklerow appears to use a bag-like structure (i.e., plastic sleeve 30), and describes that once the drum is filled, the upper end of the sleeve is secured closed and is then slid off the housing wall and into the upper end of the drum, which can then be sealed or closed off by a separate cover and properly disposed, and thereafter a new drum is used. Deklerow, col. 6, ll. 1-17. This disclosure in Deklerow belies Appellant’s argument that if a bag were used in Appellant’s system, the drum would necessarily be reused, instead of moving the system from drum-to-drum. As such, we find insufficient support in Appellant’s original disclosure for a housing serving as “a bagless collection area.” We thus sustain the Examiner’s objection to the Specification to the extent it is based on the determination that the Specification fails to provide adequate antecedent basis for a housing serving as a bagless collection area. We also sustain the rejection of claim 23 under 35 U.S.C. § 112, first paragraph. Anticipation by Deklerow Appellant argues that Deklerow does not anticipate independent claim 1 because claim 1 calls for the means for retaining to be “externally disposed” with respect to the means for collecting, and a portion of Deklerow’s sleeve 30 is disposed internally within the housing or drum. Br. 9. The Examiner responds that Deklerow “clearly discloses that the retaining means [filter cartridge] is externally disposed with respect to the means for collecting [for example exhaust pip (sic, pipe) 25].” Ans. 7. Appeal 2009-014289 Application 10/330,814 8 Appellant’s claim 1 uses the language “means for” modified by functional language and not modified by sufficient structure to achieve the recited function. As such, each element of Appellant’s claim 1 invokes 35 U.S.C. § 112, sixth paragraph. Two steps of claim construction remain: 1) we must first identify the function of the limitation; and 2) we must then look to the Specification and identify the corresponding structure for that function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). “[T]he ‘broadest reasonable interpretation’ that an examiner may give means-plus-function language is that statutorily mandated in paragraph six.” In re Donaldson Co., 16 F.3d 1189, 1194-95 (Fed. Cir. 1994) (en banc) (holding that “the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.”). We focus our claim construction inquiry on the two claim limitations argued by Appellant. The function of the “means for collecting” limitation is that of “collecting the broken object.” Appellant’s Specification describes a drum that “allows for the safe collection and disposal of properly crushed fluorescent lamps.” Spec. 3, ll. 5-7. Appellant’s Specification describes that the fragments of broken fluorescent lamp “collect at the bottom of the drum.” Spec. 3, ll. 21-22. Appellant’s Specification describes that the drum can be a “55-gallon D.O.T. standard drum 20, having a drum bottom 14, a drum exterior 12, and a drum interior hollow volume 16.” Spec. 6, ll. 12-15. The structure corresponding to the function of collecting the broken object is drum 20, having bottom 14, exterior 12 and interior volume 16. See Br. 2. Appeal 2009-014289 Application 10/330,814 9 The function of the “means for retaining” limitation is that of “retaining the substantial amount of the released hazardous material or chemical.” Appellant’s Specification describes a high efficiency vacuum system 50, preferably including a specially treated H.E.P.A. filter that captures the hazardous material, and also a specially treated activated carbon filtering system 60 through which the vapors are drawn subsequent to passing through the vacuum system 50. Spec. 7, l. 14 – Spec. 8, l. 1. Appellant’s Specification describes that activated carbon filter 60 retains the harmful mercury toxins from the vapors. Spec. 8, ll. 3-6. Thus, the structure corresponding to the function of “retaining the substantial amount of the released hazardous material or chemical” is activated carbon filtering system 60.5 See Br. 2. In keeping with claim 1, Appellant’s activated carbon filtering system 60 (“means for retaining”) is externally disposed with respect to the drum 20 (“means for collecting”). See Figure 1. The Examiner’s explanation of the rejection merely recites the claim language and fails to specify which structures of Deklerow correspond to the claimed “means for capturing” and “means for retaining.” Ans. 4 (citing generally Deklerow, col. 3, l. 27 – col. 4, l. 7). It appears that Appellant assumed the Examiner equated Deklerow’s filter cartridge 26 with the claimed “means for capturing” and Deklerow’s sleeve 30 with the claimed “means for retaining.” Putting aside the fact that the Examiner made no 5 Claim 1 also calls for “means for capturing a substantial amount of the released hazardous material or chemical.” The structure corresponding to this “capturing” function is high efficiency vacuum system 50. See Br. 2. Appeal 2009-014289 Application 10/330,814 10 finding that Deklerow’s sleeve 30 is equivalent structure to Appellant’s disclosed structure of an activated carbon filtering system 60, Appellant correctly noted that Deklerow’s sleeve 30 is not “externally disposed” with respect to Deklerow’s drum 11. Br. 9; see also Deklerow, figs. 1 & 2 (showing sleeve 30 disposed within drum 11). As such, Deklerow’s sleeve 30 does not anticipate the claimed “means for retaining.” It appears that the Examiner equated Deklerow’s filter cartridge 26 with the claimed “means for retaining.” Ans. 7. Deklerow discloses that filter cartridge 26 is supported adjacent one side of drum 11. Col. 3, ll. 32- 35. As such, filter cartridge 26 is externally disposed with respect to drum 11. Deklerow, fig 1. If, however, the Examiner found that filter cartridge 26 satisfies the claimed “means for retaining,” then it is not clear to us what structure of Deklerow the Examiner found satisfies the claimed “means for capturing,” which is also recited in claim 1. The Examiner cannot rely on Deklerow’s filter cartridge 26 to satisfy both the “means for capturing” and the “means for retaining.” See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)(claim requiring three separate means not anticipated by structure containing two means where one of the two means was argued to meet two of the three claimed means). As such, we find that the Examiner failed to set forth an adequate prima facie case of anticipation of claim 1. Accordingly, we do not sustain the rejection of claim 1 or its dependent claims 2-7 under 35 U.S.C. § 102(b) as being anticipated by Deklerow. Appeal 2009-014289 Application 10/330,814 11 Obviousness in view of Deklerow Independent claims 9 and 23 each recite “a tube member associated with a first opening in the cover member for receiving a fluorescent lamp” and “a vacuum assembly including a hose member, a first end of the hose member associated with a second opening in the cover member and attached to the cover member approximate to said means for breaking.” The Examiner found that Deklerow discloses two openings in the cover. Ans. 4. We disagree with this finding underlying the Examiner’s conclusion of obviousness. Appellant correctly notes that Deklerow does not contain a second opening in the lid. Br. 10. Deklerow discloses a single opening 13 in the cover 14 through which the lower end of feeder tube 22 communicates with the crusher mechanism suspended in drum 11. Col. 3, ll. 10-16; fig. 2. The exhaust pipe 25 of Deklerow’s vacuum assembly is connected at the lower end of feeder tube 22 at the point near where feeder tube 22 adjoins opening 13. See Deklerow, col. 3, ll. 28-32. Thus, the end of Deklerow’s exhaust pipe 25 adjacent cover 14 is associated with the first opening 13, and not a second opening in the cover member as called for in claims 9 and 23. Accordingly, we do not sustain the rejection of independent claims 9 and 23, or their dependent claims 10, 11, 13, 15, 17, 21, 22, and 24 under 35 U.S.C. § 103(a) as being unpatentable over Deklerow. Obviousness in view of Deklerow and Perry Claims 12 and 14 depend from independent claim 9. The Examiner relies on Perry to teach multi-stage filtering using an activated carbon filter. Appeal 2009-014289 Application 10/330,814 12 Ans. 5. Perry is not relied upon to show a second opening in the cover as called for in claim 9. As such, Perry is not relied upon to cure the above- noted deficiency in the disclosure of Deklerow. Accordingly, we do not sustain the rejection of claims 12 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Deklerow and Perry. NEW GROUND OF REJECTION We enter a new ground of rejection of claims 1-8 under 35 U.S.C. § 102(b) as being anticipated by Perry. We use Appellant’s summary of the claimed subject matter for independent claim 1 provided in the Brief as an indicator of the structure corresponding to the recited functions for each of the means plus function limitations in claim 1. Using this claim construction, we find that Perry anticipates claim 1. Perry discloses a combined crushing and separation system for use in crushing fluorescent tubes. Col. 1, ll. 15-21. Appellant identifies fixed lamp tube 38 as the structure corresponding to the “means for receiving an object containing a hazardous material or chemical within.” Br. 1. Perry’s system includes a feed chute 19 in the shape of a cylindrical tube for passing fluorescent tubes 17 therethrough. Col. 9, ll. 23-24; fig. 1. Perry’s feed chute 19 receives the fluorescent tubes and is the same structure as Appellant’s lamp tube 38. Appellant identifies shaft 34 connected to spinner assembly 36 as comprising the structure corresponding to the “means for breaking the received object to release the hazardous material or chemical.” Br. 1-2. Perry discloses an initial fracturing and separating device 13 provided with a Appeal 2009-014289 Application 10/330,814 13 rotating blade 15 powered by a motor. Col. 9, ll. 19-21; fig. 1. We find that in order for rotating blade 15 to be powered by a motor, blade 15 must inherently be connected to the motor via a shaft between the motor and the blade. We further find that Perry’s rotating blade 15 breaks the fluorescent tube and is the same structure as Appellant’s spinner assembly 36. Appellant identifies drum exterior 12, drum bottom 14, and drum interior volume 16 as comprising the structure corresponding to the “means for collecting the broken object.” Br. 2. Perry discloses “a particulate collection chamber 35 which may comprise a steel barrel-type collector or any other type collector,” into which the broken pieces of fluorescent tube are collected. Col. 9, ll. 68 – col. 10, l. 2; fig. 1. Perry’s collection chamber 35 includes an exterior, bottom and interior volume. We find that Perry’s steel barrel-type collector collects the broken fluorescent tube fragments and is the same structure as Appellant’s drum. Appellant identifies vacuum filter assembly 50 and flexible hose 52 as comprising the structure corresponding to the “means for capturing a substantial amount of the released hazardous material or chemical.” Br. 2. Appellant’s Specification discloses that its vacuum system 50 preferably includes a specially treated HEPA filter that captures virtually 100 % of the mercury, contaminated white powder, considered hazardous, and that other appropriate conventional filters can also be used. Spec. 7, ll. 9-20. Perry discloses an exhaust conduit or tube 25 which opens into the fracturing and separating device 13 just below the fracture chamber 23 and to which a vacuum or suction is applied through a suction fan 27. Col. 9, ll. 59-61; Appeal 2009-014289 Application 10/330,814 14 fig. 1. Perry further discloses that the air suctioned from fracture chamber 23 is passed through filter chamber 51, which includes a high density fiber filter 53 and a HEPA-type filter 55 for removing very fine particulates from the air stream, that is shielded on its outside by a very fine or dense cloth filter 57. Col. 11, l. 52 – col. 12, l. 3; fig. 1. We find that Perry’s exhaust conduit 25 is the same or equivalent structure as Appellant’s flexible hose 52 and that Perry’s suction fan 27 and filter chamber 51, including HEPA-type filter 55, are the same or equivalent structure as Appellant’s vacuum filter assembly 50. We further find that Perry’s exhaust conduit 25, suction fan 27 and filter chamber 51 capture a substantial amount of the released hazardous material or chemical. Appellant identifies that activated carbon filter 60 is the structure corresponding to the “means for retaining the substantial amount of the released hazardous material or chemical.” Br. 2. Perry discloses that the air stream created by suction fan 27 is exhausted from an outlet 63 which opens into the center of an activated carbon or charcoal filter 29, into which metallic vapors such as mercury vapor in the gas are absorbed into the activated carbon. Col. 12, ll. 7-35. We find that Perry’s activated carbon filter 29 is the same structure as Appellant’s activated carbon filter 60 and that Perry’s filter 29 retains the substantial amount of the released hazardous material or chemical. Further, Perry shows that its activated carbon filter 29 is externally disposed relative to its particulate collection chamber 35. Fig. 1. As such, each and every element set forth in claim 1 is found, either expressly or inherently, in Perry, and thus Perry anticipates claim 1. Appeal 2009-014289 Application 10/330,814 15 Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Claim 2 depends from claim 1 and recites “said means for receiving having an elongated cylindrical shape.” Perry’s feed chute 19 is shown having an elongated cylindrical shape. Perry, fig. 1. Perry further discloses that “it is desirable for the feed chute 19 to be longer than the fluorescent tube” and that the “feed chute 19 should have a fairly close fit with the outside of a fluorescent tube.” Col. 9, ll. 26-37. As such, Perry’s feed chute 19 has an elongated cylindrical shape and Perry anticipates claim 2. Claim 3 depends from claim 1 and recites that the means for breaking comprises “a spinner assembly; a motor assembly in communication with said spinner assembly; and means for powering said motor assembly; wherein when said object is fed through said means for receiving it is broken by said spinner assembly.” As we found supra, Perry’s rotating blade 15 is the same structure as Appellant’s spinner assembly 36. As we further found supra, Perry discloses that its rotating blade 15 is powered by a motor. Appellant’s Specification describes that the motor is “powered by an electrical cord, or other power configurations including battery power.” Spec. 6, ll. 20-22. We find that Perry’s motor inherently contains means for powering the motor assembly and such means would inherently comprise an electrical cord or other power configurations such as a battery. Further, Perry discloses “[t]he rotating blade is positioned to rapidly strike the end of a fluorescent tube 17 that is extended or passed progressively down feed chute 19.” Col. 9, ll. 21-24; fig. 1. As such, Perry anticipates claim 3. Appeal 2009-014289 Application 10/330,814 16 Claim 4 depends from claim 1 and recites that the “means for collecting is a housing having an undivided interior area for receipt of the broken object.” Perry’s particulate collection chamber 35 has an undivided interior for receipt of the broken fluorescent tube. Perry, fig. 1. As such, Perry anticipates claim 4. Claim 5 depends from claim 4 and recites “wherein said housing is a drum.” As we found supra, Perry’s steel barrel-type collector is the same structure as Appellant’s claimed drum. As such, Perry anticipates claim 5. Claim 6 depends from claim 1 and recites that the means for capturing “is a vacuum assembly disposed externally with respect to said means for collecting.” Perry discloses that exhaust tube 25, suction fan 27, and filter chamber 51 are disposed externally with respect to particulate collection chamber 35. Perry, fig. 1. As such, Perry anticipates claim 6. Claim 7 depends from claim 1 and recites that the “means for retaining is a filtering system.” As we found supra, Perry discloses an activated carbon or charcoal filter 29, into which metallic vapors such as mercury vapor in the gas are absorbed into the activated carbon. Col. 12, ll. 11-35. Perry’s activated carbon filter 29 is the same structure as Appellant’s activated carbon filter 60. As such, Perry discloses the claimed “filtering system” and thus anticipates claim 7. Claim 8 depends from claim 7 and recites “wherein said filtering system is an activated carbon filtering system.” As we found supra, Perry discloses activated carbon filter 29 and thus Perry anticipates claim 8. Appeal 2009-014289 Application 10/330,814 17 CONCLUSIONS Appellant’s original disclosure provides adequate support for a housing defining an undivided interior area. Appellant’s original disclosure does not provide adequate support for a housing serving as a bagless collection area. Deklerow does not disclose “means for retaining externally disposed with respect to said means for collecting” as called for in claim 1. Deklerow does not disclose “a second opening in the cover member” as called for in claims 9 and 23. DECISION The decision of the Examiner to reject claim 23 under 35 U.S.C. § 112, first paragraph is AFFIRMED. The decision of the Examiner to object to the Specification as failing to provide adequate antecedent basis for a housing serving as a bagless collection area is AFFIRMED. The decision of the Examiner to reject claims 1 and 4 under 35 U.S.C. § 112, first paragraph is REVERSED. The decision of the Examiner to object to the Specification as failing to provide adequate antecedent basis for a housing having an undivided interior area is REVERSED. The decision of the Examiner to reject claims 1-7 under 35 U.S.C. § 102(b) as being anticipated by Deklerow is REVERSED. The decision of the Examiner to reject claims 9-11, 13, 15, 17, and 21-24 under 35 U.S.C. § 103(a) as being unpatentable over Deklerow is REVERSED. Appeal 2009-014289 Application 10/330,814 18 The decision of the Examiner to reject claims 12 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Deklerow and Perry is REVERSED. We enter a NEW GROUND OF REJECTION of claims 1-8 under 35 U.S.C. § 102(b) as being anticipated by Perry. Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board. . . .” In addition to affirming the Examiner's rejection of one claim, this decision contains a new ground 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 Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of 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 Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, Appeal 2009-014289 Application 10/330,814 19 the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the 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) nlk Copy with citationCopy as parenthetical citation