Ex Parte Gray et alDownload PDFPatent Trial and Appeal BoardAug 31, 201712977291 (P.T.A.B. Aug. 31, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 4094.005US1 9073 EXAMINER COLLIER, JAMESON D ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 12/977,291 12/23/2010 97462 7590 09/01/2017 Mark A. Litman & Associates, P.A. 7001 Cahill Road, Ste. 15 A Edina, MN 55439 David A. Gray 09/01/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID A. GRAY, ROBERT M. HUME, and MARK A. LITMAN Appeal 2015-000450 Application 12/977,291 Technology Center 3700 Before JOHN C. KERINS, ANNETTE R. REIMERS, and JAMES J. MAYBERRY, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-000450 Application 12/977,291 STATEMENT OF THE CASE1’2 David A. Gray et al. (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—9, 14, and 21—29 under 35 U.S.C. § 103(a) as unpatentable over Baldwin (US 4,395,454, iss. July 26, 1983) and Sabnis (US 2006/0222675 Al, pub. Oct. 5, 2006). Claim 15 has been withdrawn from consideration. Claims 10—13 and 16—20 have been canceled. An oral hearing in accordance with 37 C.F.R. § 41.47 was held on October 4, 2016 and a transcript of that hearing has been placed into the record (“Hearing Transcript”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 The Examiner’s objection(s) to the drawings and/or Specification (see Final Act. 3—5 (mailed Nov. 13, 2013); see also Adv. Act. 2 (mailed Jan. 23, 2014); Ans. 7—8 (mailed July 22, 2014); Appeal Br. 9, 17 (filed Apr. 3, 2014) Reply Br. 3 (filed Aug. 27, 2014)) are not appealable matters, but rather are petitionable matters, and thus, are not within the jurisdiction of the Board. See 37 C.F.R. § 1.181; see also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002); In reMindick, 371 F.2d 892, 894 (CCPA 1967). 2 The Examiner has withdrawn the rejection of claims 1—9, 14, and 21—29 under 35 U.S.C. § 112, second paragraph, for indefiniteness. See Ans. 2; see also Adv. Act. 2; Final Act. 6—7. 2 Appeal 2015-000450 Application 12/977,291 CLAIMED SUBJECT MATTER3 The claimed subject matter “relates to articles for controlling the spread of pathogens and infectious diseases.” Spec. 1:12, Fig. 1. Claims 1, 14, and 21 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. An apparel for wearing about the neck and/or head of a human having structure that, when positioned about the neck or the head will retain a position about a mouth and nose of the human, the apparel comprising a fabric that is sufficiently porous as to allow a human to breathe through the fabric when placed over the mouth and nose of the human, wherein the fabric has a thickness and the fabric has as a coating of a mixture of an antimicrobially active compound and a carrier forming a moisture-sensitive antimicrobial composition on at least the outer surface of fibers within the thickness of the fabric and through at least 25% of the thickness of the fabric, and [the fabric has as a coating of a mixture of an antimicrobially active compound and a carrier forming a moisture-sensitive antimicrobial composition on at least the outer surface of fibers within the thickness of the fabric and through at least 25% of the thickness of the fabric,4] wherein the carrier is hydrophilic and 3 The Examiner objected to claims 23 and 27 for “typographical error[s].” See Final Act. 5. In the Amendment After Final Office Action, Appellants proposed to amend claims 1, 14, 21, 23, and 27. See Amendment After Final Office Action 4—7. On the Advisory Action Summary Sheet, the Examiner checked “[f]or purposes of appeal, the proposed amendment(s)” “will be entered.” See Advisory Act. Summary Sheet (PTOL-303). Appellants proposed amendments to claims 23 and 27 overcome the Examiner’s objection to these claims. Accordingly, the Examiner’s objection to claims 23 and 27 is moot. We note that the Examiner does not indicate that the objection has been withdrawn in the Advisory Action. See Adv. Act. 2; see also Appeal Br. 9. The claim set before us for review is the one submitted with the Appeal Brief. See Appeal Br. 19—22 (Claims App.) (filed Apr. 3, 2014). 4 The phrase in brackets is a repeat of the phrase immediately preceding it. Appellants acknowledge that the bracketed phrase has been inadvertently 3 Appeal 2015-000450 Application 12/977,291 able to absorb sufficient moisture from exhaled breathe from the human as to maintain a wet surface on the carrier to which viral particles will adhere more strongly than to a dry surface of the same carrier. ANALYSIS Claims 1—3 and 7—9 Appellants do not offer arguments in favor of dependent claims 2, 3, and 7—9 separate from those presented for independent claim 1. Appeal Br. 12—16. We select claim 1 as the representative claim, and claims 2, 3, and 7—9 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). We address claims 4—6 separately below. Claim 1 is directed to apparel having a fabric, wherein “the fabric has as a coating of a mixture of an antimicrobially active compound and a carrier forming a moisture-sensitive antimicrobial composition on at least the outer surface of fibers within the thickness of the fabric and through at least 25% of the thickness of the fabric” and “the carrier is hydrophilic and able to absorb sufficient moisture from exhaled breath[] from the human as to maintain a wet surface on the carrier to which viral particles will adhere more strongly than to a dry surface of the same carrier.” Appeal Br. 19 (Claims App.). included and represents a typographical error. See Hearing Transcript 11—12. We understand the phrase “the fabric has as a coating of a mixture of an antimicrobially active compound and a carrier forming a moisture-sensitive antimicrobial composition” on the outer surface of the fabric to mean the fabric has a coating and the coating is a mixture of an antimicrobially active compound and a carrier, which together form a moisture-sensitive antimicrobial composition on the outer surface of the fabric. See id. at 14—15; see also Appeal Br. 19 (Claims App.). 4 Appeal 2015-000450 Application 12/977,291 As an initial matter, Appellants present a number of contentions regarding “the recitation in the claims of. . . a hydrophilic carrier on a superabsorbent polymer-based substrate.” Appeal Br. 10 (emphasis omitted); see also id. at 14. However, the Examiner correctly points out, and Appellants acknowledge, that claim 1 does not require “a superabsorbent polymer.” See Ans. 2—3; Hearing Transcript 5. Appellants contend that “[t]he citation of Baldwin alone, or Baldwin in view of Sabnis does not evidence or specifically enable stronger adherence of viral particles upon the presence of moisture.” Appeal Br. 10. In particular, Appellants contend that the Examiner’s “assertion that a hydrophilic material produces a wet surface which ‘would inherently attract more viral particles’” is the equivalent of Official Notice, and Appellants “demand[] provision of formal evidence to support that assumption.” Id. at 12; see also Final Act. 9 (“[W]hen the hydrophilic coupling agent [of Baldwin] is wet, it would inherently cause viral particles to adhere more strongly than if it were dry.”). In response, the Examiner notes that [t]he only structural limitation that is recited in [the wherein clause of claim 1] is that the carrier is hydrophilic. Appellants] ha[ve] not recited or defined any equivalent amount of moisture absorption capability to distinguish any quantitative amount of moisture that is “sufficient ... as to maintain a wet surface on the carrier” and that “[i]n addition to not reciting any amount of absorption capability to constitute a ‘sufficient’ amount for maintaining a ‘wet surface’, Appellants] ha[ve] not recited any specific type of virus that is apparently more strongly adherent to a wet surface than to a dry surface of the same 5 Appeal 2015-000450 Application 12/977,291 carrier.” Ans. 4—5. As such, the Examiner concludes that “[s]ince Baldwin teaches that the carrier is hydrophilic, Baldwin meets the structural limitations of the claim.” Id. at 4. The Examiner also notes that “there are various types of viruses, including hydrophobic and hydrophilic viruses” and that “Chattopadhyay teaches that the sorption (i.e. absorbance) of hydrophilic viruses is favored by hydrophilic sorbents (first paragraph of Chattopadhyay). This indicates that there are viruses that are favorably attracted to hydrophilic substances (i.e. including surface materials that are formed of a hydrophilic chemistry, as well as water itself).” Id. at 4. In rebuttal, Appellants contend that “[t]he evidence asserted from Chattopadyhay is irrelevant to the limitation and cannot establish obviousness of that limitation.” Reply Br. 4. Specifically, Appellants contend that “[t]he functional requirement of [the] claims is that the CARRIER. NOT THE SORBENT FABRIC, absorbs moisture from exhaled breath[] so as to maintain a ‘WET SURFACE’ on the CARRIER, not the fabric/sorbent per se, to increase viral adherence to the carrier.” Id. In this case, the Examiner finds that Baldwin discloses “a substrate (i.e. fabric/fabric material) [that] has both a bioactive compound (i.e. antimicrobially active compound) and a hydrophilic coupling agent (i.e. carrier) that are placed thereon the substrate . . ., the carrier being hydrophilic (hydrophilic coupling agent) and able to absorb sufficient moisture.” Final Act. 8—9 (citing Baldwin 6:21—27). The Examiner further finds that “the hydrophilic characteristic of the hydrophilic coupling agent (i.e. carrier) [of Baldwin] allows for moisture to be absorbed.” Id. at 9. Appellants do not apprise us of error in the Examiner’s finding that the “hydrophilic coupling agent” of Baldwin constitutes the claimed “carrier,” 6 Appeal 2015-000450 Application 12/977,291 “wherein hydrophilic materials are capable of readily taking on moisture (i.e. to maintain a wet surface), and that such a wet surface is capable of having viral particles adhere thereto.” Final Act. 18; see also id. at 9. Additionally, Chattopadyhay discloses that “[experimental data demonstrated that the sorption of hydrophobic viruses was favored by hydrophobic sorbents, while the sorption of hydrophilic viruses was favored by hydrophilic sorbents.” Chattopadyhay, Abstract. Based on Chattopadyhay’s disclosure, we understand the Examiner’s position to be that “hydrophilic” viral particles will adhere more strongly to a wet “hydrophilic” surface over a dry “hydrophobic” surface of a carrier. See Ans. 4. Stated differently, Chattopadyhay is provided to establish that “hydrophilic” viral particles will adhere more strongly to a wet “hydrophilic” surface of Baldwin’s carrier over a dry “hydrophobic” surface of that same carrier. See id. The Examiner’s findings are sound and supported by a preponderance of the evidence, and the Examiner’s conclusions therefrom are based on rational underpinnings. Appellants do not apprise us of Examiner error. Appellants contend that [t]he properties and materials of Baldwin are specific for a surgical drape over a human body. The evidenced properties are required and enabled to provide performance in that specific field. There is no evidence of porosity sufficient to allow breathing through the fabric. Such a light, porous material is not evidenced as consistent with a surgical drape. There is also no evidence in Baldwin of the last limitation in the claim, indicating a level of aggressive water-absorbing activity . . . sufficient to “maintain a wet surface on the carrier from exhaled breath” and the functional properties enabled by this degree of aggressive adsorption. 7 Appeal 2015-000450 Application 12/977,291 Reply Br. 6—7 (emphasis omitted). Initially, Appellants’ contention that “[t]here is no evidence of porosity sufficient to allow breathing through the fabric [of Baldwin], Such a light, porous material is not evidenced as consistent with a surgical drape” (see id.), amounts to unsupported attorney argument, and thus, is entitled to little, if any, weight. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Here, the Examiner finds that Baldwin is “related to nonwoven apparel items which are known to have some breathability” and Baldwin “discloses hospital garments (i.e. apparel) as one of its potential end uses for its fabric substrate.” Final Act. 16—17.5 Appellants do not apprise us of Examiner error. Further, the Examiner correctly points out that “‘sufficient moisture’ does not positively recite any patentably-defmed degree of moisture absorption . . . from . . . exhaled breath from the human ... as to maintain a wet surface on the carrier,” as disclosed in claim 1. Final Act. 9; see also Ans. 4 (“Appellants] ha[ve] not recited or defined any equivalent amount of moisture absorption capability to distinguish any quantitative amount of moisture that is ‘sufficient... as to maintain a wet surface on the carrier.”). Under the broadest reasonable interpretation, we agree with the Examiner that Baldwin’s “hydrophilic” carrier meets the “last limitation” of claim 1. See Ans. 4; see also Reply Br. 6—7. 5 Baldwin discloses that “[application for the materials produced by the herein described process include various medical-type substrates such as . . . hospital gowns, caps and garments.” Baldwin 6:66—7:5. 8 Appeal 2015-000450 Application 12/977,291 Moreover, we note that claim 1 merely recites that “the carrier is hydrophilic and able to absorb sufficient moisture from exhaled breath[] from the human as to maintain a wet surface on the carrier to which viral particles will adhere more strongly than to a dry surface of the same carrier” and recites nothing about “indicating a level of aggressive water-absorbing activity” or “using [the] wet surface to attract viruses and to facilitate their destruction.” See Appeal Br. 12 (emphasis added); see also id. at 19 (Claims App.); Reply Br. 6-7; In re Self 671 F.2d 1344, 1348 (CCPA 1982) (providing that limitations not appearing in the claims cannot be relied upon for patentability). Appellants further contend that the cited prior art “does not provide evidence of the use of any technology to cause penetration of the coating material through at least 25% of the thickness of the fabric. The technique of padding is unique to dye treatments and does not evoke or evidence utility for antimicrobial agents in coatings on fabrics.” See Appeal Br. 11—12. In response to Appellants’ argument, the Examiner asserts that [s]ince Baldwin and [Appellants’ Specification] disclose similar techniques (i.e. padding) for applying the composition to the substrate fabric material, it was determined that the penetration of the composition into the fabric substrate at least 25% through the thickness would have been an obvious modification, absent a showing of criticality for at least 25% penetration through the thickness in the original disclosure (Appellants’] [Specification never discusses a composition as penetrating at least 25% through the thickness of the substrate). Ans. 5—6; see also Final Act. 9 (citing Baldwin 6:24—27; Spec. 22:19-23); id. at 17—18. The Examiner’s findings are sound and supported by a preponderance of the evidence, and the Examiner’s conclusions therefrom 9 Appeal 2015-000450 Application 12/977,291 are based on rational underpinnings. Appellants do not apprise us of Examiner error. Appellants contend that [t]he “breathability” of [SJabnis is not for breathing by human breathe, but rather from general evaporation. [Additionally,] although Sabnis evidences his inventive biocide to be accrued on a wiping article, there is no evidence by disclosure of the claimed and specific distribution of the antimicrobial being ON THE SURFACE OF THE FIBER (AS RECITED IN THE CLAIMS) AND BEING IN A STATE WHERE IT IS ACTIVATED BY MOISTURE FROM BREATHE. Appeal Br. 16. Initially, we note that the Examiner relies on Baldwin for all the limitations of claim 1. See Final Act. 8—10. The Examiner relies on Sabnis merely for disclosure of “a superabsorbent polymer,” which, as discussed above, is not recited in claim 1. See id.', see also Ans. 2—3; Hearing Transcript 5. Nevertheless, the Examiner finds that “Sabnis does, in fact, recite a breathable fabric because Sabnis recites that the composition disclosed can be used in facial masks and safety masks . . ., which indicate that breathable fabric is at least suggested.” Ans. 7 (citing Sabnis 129); see also Final Act. 17 (“Examiner notes that any vapor permeability of a substrate-especially a substrate forming a face mask—provides capability for a human to breathe therethrough at least to a degree.”). Appellants do not apprise us of Examiner error. For the first time in the Reply Brief, Appellants present arguments regarding the “non-leachable” properties of Baldwin. See Reply Br. 5—10. For procedural reasons, we will not address the discussion in the Reply Brief in which Appellants present this new argument. See 37 C.F.R. § 41.41(b)(2) 10 Appeal 2015-000450 Application 12/977,291 (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”); Ex Parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI2010) (informative). Appellants have not shown good cause for failing to provide this argument in the Appeal Brief. In summary, and based on the record presented, we are not apprised of Examiner error in the rejection of independent claim 1 as unpatentable over Baldwin and Sabnis. Accordingly, we sustain the Examiner’s rejection of claim 1 as unpatentable over Baldwin and Sabnis. We further sustain the Examiner’s rejection of claims 2, 3, and 7—9, which fall with claim 1. Claims 4—6 Each of dependent claims 4—6 recites “the carrier comprises a hygroscopic material.” Appeal Br. 19 (Claims App.). For the first time in the Reply Brief, Appellants present the argument that coupling a “humectant” to the substrate/fabric of Baldwin would be “completely incompatible with the evidence of Baldwin.” See Reply Br. 9—10.6 In particular, Appellants contend that “[a]s the humectant INCIDENTALLY evidenced in Sabnis without evidence of any specific benefit would be an unmotivated and problematic addition in the composition of Baldwin, 6 In the Appeal Brief, Appellants merely reiterate the claim language of dependent claim 4 and contend that the combined teachings of Baldwin and Sabnis fail to disclose the limitations of claim 4. See Appeal Br. 10—11. Such an argument is insufficient to apprise us of error in the rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1356—57 (Fed. Cir. 2011). 11 Appeal 2015-000450 Application 12/977,291 obvious of claims 4-6 has NOT been evidenced.” Id. at 10. As discussed above, normally, we do not consider new arguments presented in a Reply Brief that are not accompanied by a showing of good cause why they could not have been presented in the Appeal Brief. 37 C.F.R. § 41.41(b)(2). In any event, we note that claims 4—6 fail to recite a “humectant.” See Appeal Br. 19 (Claims App.); see also Reply Br. 9—10; In re Self, 671 F.2d at 1348. Here, the Examiner finds that “Baldwin teaches that the carrier comprises a hygroscopic material (hygroscopic being defined as ‘readily taking up and retaining moisture’ (Merriam-Webster’s online dictionary, wherein the hydrophilic coupling agent (i.e. carrier) is ‘hydrophilic’ and can readily take up and retain moisture).” Final Act. 11 (emphasis added).7 Appellants do not apprise us of Examiner error. Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection of claims 4—6 as unpatentable over Baldwin and Sabnis. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) We enter a new ground of rejection for claims 14 and 21—29 under 35U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. “It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” MPEP § 2173. During prosecution “[a] claim is 7 The Specification describes that “[i]t is preferred that the WHA [(water absorbing or water-holding component)] be hygroscopic, a term understood in the art as requiring that the material active withdraw moisture from air in contact with the material.” See Spec. 22:8-11. 12 Appeal 2015-000450 Application 12/977,291 indefinite when it contains words or phrases whose meaning is unclear” (id. at § 2173.05(e)), or if it is “amenable to two or more plausible claim constructions.” Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). We determine that independent claims 14 and 21 are indefinite for the following reasons. There is no antecedent basis for “the carrier” in either claim 14 or claim 21. We acknowledge that the lack of an antecedent basis for a claim term does not always render a claim indefinite. Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001). In this case, however, the term is unclear because “the carrier” of claim 14 or claim 21 is not clearly limited to being part of “the coating,” as in claim 1. See n. 4. That is, as per how “the carrier” is recited in either claim 14 or claim 21, the carrier may be (1) part of or in addition to the fabric material; (2) part of or in addition to the coating; or (3) part of or in addition to the moisture-sensitive antimicrobial composition. See Appeal Br. 20, 21 (Claims App.). Therefore, the term “the carrier” in claim 14 or in claim 21 is unclear and claims 14 and 21 are indefinite. Claims 22—29 depend, directly or indirectly, from claim 21 and are indefinite at least because they depend from, and incorporate, an indefinite claim. REJECTIONS UNDER 35 U.S.C. § 103(a) Claims 14 and 21—29 are rejected as being indefinite under 35 U.S.C. § 112, second paragraph, discussed above. In view of the indefmiteness of claims 14 and 21—29, we find that it is not possible to ascertain the scope of these claims. Accordingly, we find that the Examiner’s rejections of claims 14 and 21—29 under 35 U.S.C. § 103(a) are necessarily based on speculation 13 Appeal 2015-000450 Application 12/977,291 and assumptions. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on . . . speculations and assumptions. . . . [I]t is essential to know what the claims do in fact cover.”). Therefore, we summarily decline to sustain the Examiner’s rejection of claims 14 and 21—29 as unpatentable over Baldwin and Sabnis.8 DECISION We AFFIRM the Examiner’s decision to reject claims 1—9 under 35 U.S.C. § 103(a) as unpatentable over Baldwin and Sabnis. We REVERSE, pro forma, the Examiner’s decision to reject claims 14 and 21—29 under 35 U.S.C. § 103(a) as unpatentable over Baldwin and Sabnis. We enter a new ground of rejection for claims 14 and 21—29 under 35 U.S.C. § 112, second paragraph. This decision contains a new ground of rejection under 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.” 8 We note that each of dependent claims 22 and 26 requires the antimicrobial material be maintained in the composition as “a flowable internal component.” See Appeal Br. 21, 22 (Claims App.). The Specification describes that “[t]he material can also provide a platform wherein a flowable internal component (gel, liquid, liquid layer, liquid coating, constant or activatable) provides a platform for maintaining activity in the fabric during use over an extended period of time.” Spec. 7:25—28 (emphasis added). In this case, the Examiner fails to provide sufficient evidence or technical reasoning to establish that “the non-cellulosic materials of the overall structure [of Baldwin and Sabnis being] thermoplastic/meltable polymers” meets the “flowable internal component,” as recited in claims 22 or 26. See Ans. 6; see also Appeal Br. 17. 14 Appeal 2015-000450 Application 12/977,291 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 15 Appeal 2015-000450 Application 12/977,291 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b) 16 Copy with citationCopy as parenthetical citation