Ex Parte Domanico

Board of Patent Appeals and Interferences

Sep 21, 2011

10330814 (B.P.A.I. Sep. 21, 2011)

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

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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.

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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.
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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
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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.”
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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
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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.
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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.
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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.
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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.
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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.
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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
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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;
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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.
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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.
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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.
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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.
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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,
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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)

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