Ex Parte Forman et al

Board of Patent Appeals and Interferences

Feb 24, 2011

11113251 (B.P.A.I. Feb. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE HENRY FORMAN,
HENRI JACQUES SUERMONDT,
and JAMES RICHARD STINGER
____________

Appeal 2009-008416
Application 11/113,251
Technology Center 2100
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-29, 31-33, and 35. We have jurisdiction under 35
U.S.C. § 6(b). We reverse and enter new grounds of rejection.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants’ invention uses a classifier to determine a related feature in
generating search queries. A set of positive and negative “cases” is selected,
and the positive cases are used to “induce” (i.e., train) the classifier. The
“induced” classifier is then applied to the set of negative cases to determine
a related keyword which is used in a generated search query. See generally
Spec. 3-8; Figs. 1-2. Claim 1 is illustrative with a key limitation
emphasized:
1. A method of determining a feature related to an
indication of a concept, the method comprising:
selecting a set of positive cases using the indication of
the concept, wherein the indication of the concept is a keyword;
selecting a set of negative cases using the indication of
the concept;
inducing a classifier for the concept using the set of
positive cases in a manner blinded to the indication of the
concept;
applying the classifier to the set of negative cases;
determining a feature related to the indication of the
concept using results to the applying of the classifier, wherein
the fcature related to the indication of the concept is a related
keyword to the indication of the concept; and
generating a query including at least one of the keyword
and the related keyword to perform a search

The Examiner relies on the following as evidence of unpatentability:
Jain US 5,913,205 June 15, 1999

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THE REJECTIONS2
1. The Examiner rejected claims 1, 3-29, 31-33, and 35 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Ans. 4-10.3
2. The Examiner rejected claims 1, 3-29, 31-33, and 354 under 35 U.S.C.
§ 112, ¶ 1 as failing to disclose a practical application for the
invention. Ans. 11.
3. The Examiner rejected claims 1, 3, 4, 15, 20, 21, 27, 28, and 31 under
35 U.S.C. § 102(b) as being anticipated by Jain. Ans. 12-18.

NEW GROUND OF REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Under 37 C.F.R. § 41.50(b), we reject claims 1, 3-29, 31-33, and 35
under 35 U.S.C. § 112, ¶ 1 as failing to enable ordinarily skilled artisans to
make or use the invention without undue experimentation.

2 Although the Examiner also objects to claim 25 as depending from
cancelled claim 2—an observation that is correct—such objections are
petitionable—not appealable—matters and are therefore not before us. See
MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition . . . .”). Despite claim 25’s
incorrect dependency, we nonetheless include that claim in the Examiner’s
rejections for consistency. Accord Ans. 4, 11 (including claim 25 in
rejections).
3 Throughout this opinion, we refer to (1) the Appeal Brief filed February
14, 2008; (2) the Examiner’s Answer mailed May 28, 2008; and (3) the
Reply Brief filed July 21, 2008.
4 Although the Examiner erroneously includes cancelled claims 2, 30, and 34
in this rejection (Ans. 11), we nonetheless omit them here for clarity.
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FINDINGS OF FACT (FF)
1. Appellants’ “related feature determination system” 128 uses
machine learning to determine related “features” (e.g., properties) for
“concepts” (e.g., ideas derived or inferred from specific instances or
occurrences). To this end, the “related feature determination system” 128
receives “cases” 120 from a data source 110 that includes a database or
another type of data store which can store any type of data. Spec. 3:3-20;
Figs. 1-2.
2. Data in Appellants’ data source 110 is represented as cases 120 for
(1) classification, or (2) determining related features 141. The cases include
data (1) for training a classifier, and (2) from which related features are
identified. Spec. 3:20–4:2; Figs. 1-2.
3. Appellants’ related feature determination system also receives an
“indication of a concept” 121 (e.g., one or more keywords and phrases) to
determine related features. Spec. 4:10-13; Figs. 1-2.
4. A keyword is one or more characters, such as letters, words, or
symbols (e.g., a word, abbreviation, or any set of characters used by itself or
with other keywords to represent an indication of a concept). Spec. 4:13-16.
5. Appellants’ related feature determination system includes a
classifier 130 for generating predictions 142 about the cases. Based on the
predictions, related feature determination engine 129 determines the related
features related to a concept. Spec. 5:12-16; Fig. 2.
6. Appellants’ classifier 130 includes a classifier induced by any
known induction algorithm, such as Naïve Bayes, C4.5 decision trees,
Support Vector Machines, and others. In a first phase, the classifier is
trained (i.e., induced) with a modified positive set 131 and possibly with a
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negative set 132 to distinguish the difference between (1) cases associated
with a concept (e.g., keyword 122), and (2) cases not associated with the
concept. In one embodiment, the trained classifier 130 is automatically
induced from data (e.g., the modified positive set 131 and the negative set
132) using known machine learning techniques which may include one or
more of the previously-noted induction algorithms. Spec. 6:1-9; Fig. 2.
7. Appellants’ modified positive set 131 includes cases determined to
include a keyword 122, but modified to have the keyword “blinded” from
the classifier 130. This “blinding” can include identifying a positive set of
cases having the keyword, and either (1) removing the keyword from each
positive case to generate the modified set 131, or (2) instructing the classifier
to ignore the keyword when trained. Spec. 6:10-17; Fig. 2.

PRINCIPLES OF LAW
“The test of enablement is whether one reasonably skilled in the art
could make or use the invention from the disclosures in the patent coupled
with information known in the art without undue experimentation.” United
States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988).
A disclosure may be enabling despite the need for experimentation.
The test, however, is whether this experimentation is undue. In re Angstadt,
537 F.2d 498, 504 (CCPA 1976) (emphasis added). Determining whether
any necessary experimentation is undue involves considering many relevant
factors including, but not limited to: (1) the breadth of the claims; (2) the
nature of the invention; (3) the state of the prior art; (4) the level of one of
ordinary skill; (5) the level of predictability in the art; (6) the amount of
direction provided by the inventor; (7) the existence of working examples;
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and (8) the quantity of experimentation needed to make or use the invention
based on the content of the disclosure. In re Wands, 858 F.2d 731, 737 (Fed.
Cir. 1988).
To avoid pure functional claiming in computer-implemented means-
plus-function claims, the structure disclosed in the Specification must be
more than simply a general purpose computer or microprocessor. Aristocrat
Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
2008). “Because general purpose computers can be programmed to perform
very different tasks in very different ways, simply disclosing a computer as
the structure designated to perform a particular function does not limit the
scope of the claim to the corresponding structure, material, or acts that
perform the function, as required by section 112 paragraph 6.” Id. (internal
quotation marks omitted). Absent the requisite corresponding structure in
the specification, skilled artisans simply cannot perceive the bounds of the
invention, and corresponding functional claims are therefore indefinite under
§ 112, second paragraph. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d
1323, 1341 (Fed. Cir. 2008). Accord Katz Tech. v. Am. Airlines, Inc., No.
2009-1450, slip op. at 16-24 (Fed. Cir. Feb. 18, 2011); Ex parte Rodriquez,
92 USPQ2d 1395, 1401-03 (BPAI 2009) (precedential). Such pure
functional claiming not only renders those claims indefinite, but also
implicates § 112, first paragraph as failing to be enabled for the scope of the
claims. See Rodriquez, 92 USPQ2d at 1403-13.
But when the disclosed structure is not a general purpose computer,
but rather the special purpose computer programmed to perform the
disclosed algorithm, that is sufficient. Finisar, 523 F.3d 1323 at 1340. As
such, the application must disclose “enough of an algorithm to provide the
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necessary structure under § 112, ¶ 6”—a disclosure that can be expressed in
any understandable terms (e.g., a mathematical formula, in prose, or as a
flowchart). Id. But “[s]imply reciting ‘software’ without providing some
detail about the means to accomplish the function is not enough.” Id. at
1340-41. Accord U.S. Pat. & Trademark Off., Supplementary Examination
Guidelines for Determining Compliance With 35 U.S.C. 112 and for
Treatment of Related Issues in Patent Applications, 76 Fed. Reg. 7,162,
7,168-72 (Feb. 9, 2011) (“Fed. Reg. Notice”).
Means-plus-function claim language must be construed in accordance
with 35 U.S.C. § 112, ¶ 6 by “look[ing] to the specification and
interpret[ing] that language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d
1189, 1193 (Fed. Cir. 1994) (en banc).

ANALYSIS
Independent claims 1, 33, and 35 recite methods that, in pertinent part,
(1) select a set of positive and negative cases using an indication of a
concept; (2) “induce” a classifier; and (3) apply the classifier to the set of
negative cases to determine (a) related keywords (claim 1); (b) related
word(s) or symbol(s) (claim 33); or (c) “false positives” and “true
negatives”5 to use as a basis for selecting related keywords (claim 35).

5 “False positives” in Appellants’ parlance include cases from the applied
negative set that the classifier 130 predicts belongs to the positive class.
Spec. 8:18-20. “True negatives,” however, include cases from the applied
negative set that the classifier predicts belong in the negative class. Spec.
8:20-21.
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Claims 1 and 33 “induce” the classifier for the concept using the set of
positive cases in a manner “blinded” to the concept’s indication. Claim 35,
however, “induc[es] a classifier operable to distinguish the modified positive
set of cases from the set of negative cases.” Therefore, every independent
claim recites some form of “induced” classifier.
But the Specification provides little detail regarding exactly how the
classifier is “induced,” apart from merely indicating that this “induction”
uses “any known induction algorithm, such as Naïve Bayes, C4.5 decision
trees, Support Vector Machines, and others.” FF 6. Leaving aside the fact
that this list of known algorithms includes just three exemplary algorithms,
but contemplates other undisclosed algorithms (indeed any known induction
algorithm) (id.), there is insufficient detail in the Specification regarding
exactly how ordinarily skilled artisans would apply and implement the
known induction algorithms to achieve the desired results from the classifier
without undue experimentation. This is a critical deficiency, for the
particular application of a particular induction algorithm to the classifier to
obtain a trained (i.e., “induced”) classifier is a key initial pre-processing
phase in Appellants’ claimed invention. See FF 6-7; see also App. Br. 4-5,
21-22 (explaining the claimed invention’s “first phase” of creating a trained
(i.e., “induced”) classifier). That certain induction algorithms and machine-
learning techniques may be known in the art is insufficient, for the
disclosure still does not explain how to apply these algorithms in a particular
way to the classifier to achieve the desired results. In fact, the Specification
contemplates at least one embodiment where the classifer’s “induction” need
not include these known algorithms, but rather can be “automatically
induced from data” (id.)—the implementation details of which are likewise
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minimal at best. The minimal disclosure pertaining to this alternative to
using known induction algorithms only bolsters our conclusion that
Appellants’ disclosure falls well short of enabling skilled artisans to
“induce” the classifier to achieve the desired results without undue
experimentation.
Although we recognize that a disclosure may be enabling despite the
need for experimentation, the test is whether this experimentation is undue.
Angstadt, 537 F.2d at 504. To make this determination, we therefore
consider relevant factors in this regard. Wands, 858 F.2d at 737. First, the
scope and breadth of the term “induce” tends to weigh in favor of undue
experimentation. Although Appellants appear to use the term “induce”
synonymously with “train” in several instances in the record, notably by
using the term “i.e.” in connection with these terms, it is unclear whether
“inducing” is so limited. See, e.g., FF 6 (noting that the classifier is “trained
(i.e., induced)) (emphasis added). Accord App. Br. 4, 21 (same). But see
Reply Br. 2-7 (excluding the term “train” in connection with arguments
regarding inducing the classifier).6
“Induction is the process of inferring general rules from specific data
and is the primary task of machine learning.”7 “Trainability,” however, is

6 Cf. Ex parte Forman, No. 2008-005348, 2009 WL 2563527, at *7 (BPAI
2009) (non-precedential) (finding that a recited “classifier” that case was a
particular machine in that it performed a particular data classification
function, and (2) claim 4 was statutory under § 101 by transforming an
untrained classifier into a trained classifier).
7 Raymond J. Mooney, Integrating Abduction and Induction in Machine
Learning, in Abduction and induction: Essays on their Relation and
Integration (Peter A. Flach & Antonis C. Kakas eds., 2000) 181, 181
available at Google Books,
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“the property of an algorithm or process by which it can be trained on
sample data and thus rendered adaptable to different situations.”8 Based on
these related, yet somewhat different concepts as recognized in the art, we
cannot say that “training” a classifier is the same as “inducing” a classifier.
Nor have Appellants squarely defined “inducing” in this context to mean
“training,” despite using the term “i.e.” in the Specification which signals an
intent to define the word to which it refers. Edward Lifesciences LLC v.
Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009) (“As the court correctly
reasoned, the specification's use of "i.e." signals an intent to define the word
to which it refers, ‘malleable,’ and that definition was not limited to the
embodiment being discussed. Furthermore, as discussed in part 3, supra,
the inventors disclaimed the idea that resilient wires could be used”).
(emphasis added).
Nevertheless, we will not speculate in this regard, except to say that
on this record, the meaning of the term “inducing” is ambiguous at best in
that it could be (1) limited to “training” (i.e., defined as “training”), or (2)
include some other machine-learning aspect beyond training. We simply
cannot tell from this record. This ambiguity in the scope and breadth of the
term “inducing” therefore weighs towards undue experimentation in its
application to a classifier to achieve the desired results as claimed.

http://books.google.com/books?id=gLuQhofgcakC&pg=PA181&dq=inducti
on+machine+learning&hl=en&ei=PyZdTcyXJIW4twfmo-
TbCg&sa=X&oi=book_result&ct=result&resnum=1&ved=0CDYQ6AEwA
A#v=onepage&q=induction%20machine%20learning&f=false.
8 Phillip A. Laplante, Comprehensive Dictionary of Electrical Engineering,
699 (2d ed. 2005).
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Second, the nature of the claimed invention—a machine-based
technique whose very ability to produce the recited desired results is
dependent on the particular classifier induction—likewise weighs toward
undue experimentation. See FF 6-7; see also App. Br. 4-5, 21-22
(explaining the claimed invention’s “first phase” of creating a trained (i.e.,
“induced”) classifier). On this record, even skilled programmers would have
to speculate regarding how to apply and implement the known induction
algorithms to the classifier to achieve the desired results as claimed.
Although the skill level in the art would be fairly high—a computer
engineer with some programming experience—that factor, while tending to
favor a higher expected level of experimentation before it would be undue,
nevertheless does not outweigh the other factors that indicate undue
experimentation. See Wands, 858 F.2d at 737. Even artisans with this
higher skill level must speculate in applying and implementing the known
induction algorithms to the classifier to achieve the desired results claimed.
We reach this conclusion noting that, apart from merely indicating
that this “induction” uses “any known induction algorithm, such as Naïve
Bayes, C4.5 decision trees, Support Vector Machines, and others” (FF 6),
the Specification provides little direction regarding exactly how the classifier
is “induced” to achieve the desired results, let alone provide working
examples (e.g., code listings, flowcharts, etc.) in this regard. Rather, skilled
artisans would be left to speculate regarding how to induce the classifier to
achieve the desired results, and therefore would have to experiment unduly
to achieve that end.

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Based on these factors, we conclude that Appellants’ disclosure fails
to enable ordinarily skilled artisans to make or use the claimed invention
coupled with information known in the art without undue experimentation.
We therefore reject claims 1, 3-29, 31-33, and 35 under 35 U.S.C.
§ 112, ¶ 1 on this basis.
Furthermore, the apparatus and computer-readable medium claims 27-
29, 31, and 32 are problematic under § 112, ¶ 1 since they recite key
functional limitations that are not enabled for their scope. See Rodriquez, 92
USPQ2d at 1406-12. Apparatus claim 31 recites a “classifier means for
classifying cases based on a concept, wherein the classifier means is induced
using a set of positive cases . . . .” Construing, as we must, this means-plus-
function limitation in light of the corresponding structure in Appellants’
Specification, Donaldson, 16 F.3d at 1193, we find Appellants’ disclosure
falls well short of providing the requisite corresponding structure for the
induced classifier means. In this regard, there is simply insufficient detail to
regarding how to apply and implement the known induction algorithms to
the classifier to achieve the desired results claimed as noted previously. See
Aristocrat, 521 F.3d at 1333; see also Finisar 523 F.3d at 1341; Rodriquez,
92 USPQ2d at 1401-03. As such, claim 31 is purely functional, and is not
enabled under § 112, ¶ 1 given its scope.
We reach a similar conclusion regarding apparatus claims 27-29.
Since these claims do not use the term “means” to indicate means-plus-
function elements, but instead use descriptive terms (e.g., “classifier”), there
is a rebuttable presumption that § 112, ¶ 6 does not apply. Rodriquez, 92
USPQ2d at 1404. But the term “classifier” merely describes its function,
and therefore rebuts this presumption by effectively reciting a means-plus-
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function element under § 112, ¶ 6. See id. at 1404-05 (construing recited
“system configuration generator,” “system builder,” and “simulation
verification environment” as means-plus-function elements under § 112, ¶
6). As such, claims 27-29—like claim 31—are purely functional and are not
enabled under § 112, ¶ 1 for their scope for reasons similar to those
indicated regarding claim 31. We reach a similar conclusion regarding
computer-readable medium claim 32 which includes commensurate
functional recitations.
For the foregoing reasons, we reject claims 1, 3-29, 31-33, and 35
under 35 U.S.C. § 112, ¶ 1.

NEW GROUND OF REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
Under 37 C.F.R. § 41.50(b), we also reject claims 1, 3-29,
31-33, and 35 under 35 U.S.C. § 112, ¶ 2 as indefinite for failing to
particularly point out and distinctly claim the invention.

PRINCIPLES OF LAW
Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).

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Although “[a] claim term is not indefinite just because it poses a
difficult issue of claim construction[,]” Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008), “if a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential) (internal quotation marks omitted).

ANALYSIS
As noted previously, the term “inducing” is ambiguous: it can be
interpreted with at least two plausible constructions, namely (1) limited to
“training” (i.e., defined as “training”), or (2) including some other machine-
learning aspect beyond training. For this reason alone, claims 1, 3-29,
31-33, and 35 are indefinite for they all recite some form of induction as
noted previously. Miyazaki, 89 USPQ2d at 1211.
Furthermore, apparatus claim 31 recites a “classifier means for
classifying cases based on a concept, wherein the classifier means is induced
using a set of positive cases . . . .” This functional claim is indefinite for yet
another reason since, for the reasons noted previously, Appellants’ disclosure
lacks the requisite corresponding structure for the induced classifier means.
In this regard, there is simply insufficient detail regarding how to apply and
implement the known induction algorithms to the classifier to achieve the
desired results claimed. See Aristocrat, 521 F.3d at 1333; see also Finisar
523 F.3d at 1341; Rodriquez, 92 USPQ2d at 1401-03. Accord Fed. Reg.
Notice at 7,168. As such, claim 31 is purely functional. And since the
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specification lacks specific application and implementation details regarding
inducing the classifier noted previously, skilled artisans would be unable to
perceive the metes and bounds of the invention. Accordingly, claim 31 is
indefinite.
We reach a similar conclusion regarding apparatus claims 27-29.
Since these claims do not recite the term “means” to indicate means-plus-
function elements, but instead recite descriptive terms (e.g., “classifier”),
there is a rebuttable presumption that § 112, ¶ 6 does not apply. Rodriquez,
92 USPQ2d at 1404. But the term “classifier” merely describes its function,
and therefore rebuts this presumption by effectively reciting a means-plus-
function element under § 112, ¶ 6. See id. at 1404-05 (construing recited
“system configuration generator,” “system builder,” and “simulation
verification environment” as means-plus-function elements under § 112, ¶
6). As such, claims 27-29—like claim 31—are purely functional and
indefinite for reasons similar to those indicated regarding claim 31.
For the foregoing reasons, we reject claims 1, 3-29, 31-33, and 35
under 35 U.S.C. § 112, ¶ 2.

THE EXAMINER’S § 112 REJECTION
We will not sustain the Examiner’s rejection of claims 1, 3-29, 31-33,
and 35 under 35 U.S.C. § 112, ¶ 1 as allegedly failing to disclose a practical
application for the invention. Ans. 11, 45-46.
First, our previous rejection of the appealed claims under § 112, ¶ 1
supplants this rejection. We therefore reverse the Examiner’s § 112
rejection for that reason alone.
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Second, the Examiner’s § 112 rejection is problematic for an
additional reason. Although the Examiner asserts that a Ҥ 101 utility
rejection” was made (Ans. 11), the Examiner’s rejection was actually based
on the claims failing to recite statutory subject matter since they were said to
be directed to an abstract idea—a judicial exception to statutory subject
matter. See Ans. 4-10; see also Diamond v. Diehr, 450 U.S. 175, 185 (1981)
(noting that laws of nature, abstract ideas, and natural phenomena are
excluded from patent protection). This eligibility analysis is distinct from
the utility requirement. Compare MPEP § 2106 (patent subject matter
eligibility) with § 2107 (utility requirement).
Therefore, the Examiner’s premise for the § 112 rejection based on
the alleged “utility” rejection (Ans. 11) is problematic on its face. We
therefore reverse the Examiner’s § 112 rejection of claims 1, 3-29, 31-33,
and 35 for this additional reason.

THE EXAMINER’S 101 AND 102 REJECTIONS
Since the construction of the term “inducing” is crucial in determining
whether the claims as a whole recite an abstract idea, we decline to address
the Examiner’s § 101 rejection until the record is clarified to overcome the §
112 rejections noted above. To do otherwise would require us to resort to
speculation to interpret an ambiguous, yet critical limitation in all
independent claims—an exercise which we decline to undertake in the first
instance on appeal. Accord Ex parte Gutta, 93 USPQ2d 1025, 1035-36
(BPAI 2009) (per curiam) (precedential) (declining to reach § 101 rejection
of claim 20 since the metes and bounds of that claim were unascertainable).
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We likewise decline to address the Examiner’s anticipation rejection
for similar reasons. To do otherwise would require considerable speculation
regarding the meaning of “inducing”—speculation that obviates any
meaningful assessment of the Examiner’s application of the cited prior art to
the properly-construed claims—a proper interpretation which remains an
open question on this record. See In re Steele, 305 F.2d 859, 862 (CCPA
1962); see also Gutta, 93 USPQ2d at 1036 (citing Steele in declining to
reach prior art rejections in view of other rejections).

CONCLUSION
The Examiner erred in rejecting claims 1, 3-29, 31-33, and 35 under
§ 112. Claims 1, 3-29, 31-33, and 35 are unpatentable under 35 U.S.C.
§ 112, ¶¶ 1 and 2.

ORDER
The Examiner’s decision rejecting claims 1, 3-29, 31-33, and 35 is
reversed. Under 37 C.F.R. § 41.50(b), we reject claims 1, 3-29,
31-33, and 35 under 35 U.S.C. § 112, ¶¶ 1 and 2.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) that provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant[s], 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:
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(1) 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 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 this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED - 37 C.F.R. § 41.50(b)

pgc

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