Ex Parte Hotto

Board of Patent Appeals and Interferences

Aug 21, 2012

11451536 (B.P.A.I. Aug. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT HOTTO
____________

Appeal 2010-008238
Application 11/451,536
Technology Center 3700
____________

Before LINDA E. HORNER, LYNNE H. BROWNE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert Hotto (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-60. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
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THE INVENTION
Appellant’s claimed invention relates to “blade assemblies for wind
turbines and propellers in which the parameters of chord, length, and pitch
can be individually adjusted for each blade.” Spec. 1. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A wind turbine blade assembly comprising:
at least first and second blades coupled to a rotatable
rotor defining an axis of rotation, the first blade having a first
blade tip being a first distance from the axis of rotation at a first
time, the second blade having a second blade tip being a second
distance from the axis of rotation at the first time, the first and
second distances not being equal.
THE EVIDENCE
The Examiner relies upon the following evidence:
Chertok US 4,490,093 Dec. 25, 1984
Jamieson US 2003/0230898 A1 Dec. 18, 2003
Murakami US 6,752,595 B2 Jun. 22, 2004
Wilkie US 2004/0185725 A1 Sep. 23, 2004
Andersen US 2004/0201220 A1 Oct. 14, 2004
Dawson US 6,902,370 B2 Jun. 7, 2005
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claim 59 under 35 U.S.C. § 112, second paragraph, as being
incomplete for omitting essential steps.
2. Claims 1-3, 8, 9, 11, 23, 24, 26, 27, 29-32, 38, 40, 52, 53, 56, and
58-60 under 35 U.S.C. § 102(b) as anticipated by Jamieson.
3. Claims 30, 37, 41, 48, 52, and 55 under 35 U.S.C. § 102(b) as
anticipated by Wilkie.
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4. Claims 4, 5, 33, and 34 under 35 U.S.C. § 103(a) as unpatentable
over Jamieson and Murakami.
5. Claims 6 and 35 under 35 U.S.C. § 103(a) as unpatentable over
Jamieson, Murakami, and Dawson.
6. Claims 10, 28, 39, and 57 under 35 U.S.C. § 103(a) as unpatentable
over Jamieson and Andersen.
7. Claims 7, 25, 36, and 54 under 35 U.S.C. § 103(a) as unpatentable
over Jamieson and Chertok.
8. Claims 36 and 54 under 35 U.S.C. § 103(a) as unpatentable over
Wilkie and Chertok.
9. Claims 12-16, 19, 20, 22, 41-45, 49, and 51 under 35 U.S.C.
§ 103(a) as unpatentable over Murakami.
10. Claims 17 and 46 under 35 U.S.C. § 103(a) as unpatentable over
Murakami and Dawson.
11. Claims 18 and 47 under 35 U.S.C. § 103(a) as unpatentable over
Murakami and Chertok.
12. Claims 21 and 50 under 35 U.S.C. § 103(a) as unpatentable over
Murakami and Andersen.
13. Claims 12-16, 19, 20, 22, 41-45, 49, and 51 under 35 U.S.C. §
103(a) as unpatentable over Murakami and Jamieson.
14. Claims 17 and 46 under 35 U.S.C. § 103(a) as unpatentable over
Murakami, Jamieson, and Dawson.
15. Claims 18 and 47 under 35 U.S.C. § 103(a) as unpatentable over
Murakami, Jamieson, and Chertok.
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16. Claims 21 and 50 under 35 U.S.C. § 103(a) as unpatentable over
Murakami, Jamieson, and Andersen.
The Final Office Action from which this appeal is taken also includes
a rejection of independent claim 59 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Final Office Action at p. 4, dated September
3, 2009. While claim 59 is before us on appeal (see supra rejections 1 and
2), Appellant does not include the rejection of claim 59 under 35 U.S.C.
§ 101 in the listing of the Grounds of Rejection to be Reviewed on Appeal
(App. Br. 4-5) and does not present any arguments rebutting this rejection.
As such, we summarily sustain the Examiner’s rejection of claim 59 under
35 U.S.C. § 101. Because our affirmance of the rejection of claim 59 under
35 U.S.C. § 101 is dispositive as to that claim, we do not reach the additional
rejections of claim 59 under 35 U.S.C. § 112, second paragraph and under
35 U.S.C. § 102(b) as anticipated by Jamieson.
ISSUES
Each of the rejections under 35 U.S.C. §§ 102 and 103 relies on an
interpretation of the claims as being “directed more towards the arrangement
of the structure during the operation of the appellant’s method than to the
pure structure of the apparatus.” Ans. 15. In other words, the Examiner
interpreted the claims to be “directed at the specific configuration of the
apparatus achieved at a time when appellant’s method of operation is being
preformed [sic] thereon and not necessarily to the particular structure of the
base apparatus alone.” Id. The Examiner thus construed the claim to require
a wind turbine that is capable of having the blades assume the claimed
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different configuration at the same point in time. Based on this
interpretation, the Examiner found that Jamieson anticipates independent
claims 1, 23, 30, 52, and 60 because Jamieson’s assembly is capable of
adjusting the blade lengths and pitches independently. Ans. 5. Likewise,
the Examiner found that Wilkie anticipates independent claims 30, 41, and
55 because Wilkie’s assembly is capable of adjustment of the length, chord,
and pitch of the blades in an independent manner. Ans. 5. The Examiner
also determined that Murakami renders obvious the subject matter of
independent claims 12 and 41 because the actuators and blade sections of
Murakami are independent and it would have been obvious to vary the
chords of the blades independently to optimize the turbine. Ans. 8-9.
Appellant argues that “the rejections are rooted in a clearly erroneous
understanding of the claims” and that the claims clearly describe a structure
calling for a first blade and a second blade to assume different
configurations at the same point in time. App. Br. 7-8. Appellant contends
that the rejections should not be sustained because none of the cited
references discloses a structure in which the blades assume different
configurations at the same point in time. App. Br. 8-12. In particular,
Appellant argues, “that the extensions on one blade can move independently
to the base of that blade manifestly does not mean, according to Jamieson,
that different blades can have different lengths at the same point in time.”
App. Br. 8. With regard to Wilkie, Appellant argues that “as any particular
collar moves, all blade assemblies must move in concert.” App. Br. 11.
Appellant further argues that the Examiner’s assertion that independent
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adjustment of the chords of the blades would have been obvious in view of
Murakami “because the skilled artisan ‘would recognize the advantage in
optimization of the turbine by independently and variously changing the
chord of the blades’ is without evidentiary support in the prior art.” App. Br.
13.
The issues presented by this appeal are:
Does Jamieson disclose a structure capable of adjusting the blade
lengths and pitches independently?
Does Wilkie disclose an assembly capable of adjustment of the length,
chord, and pitch of the blades in an independent manner?
Has the Examiner articulated adequate reasoning based on rational
underpinnings to explain why the subject matter of independent claims 12
and 41 would have been obvious in view of Murakami?
ANALYSIS
Rejection under 35 U.S.C. § 102(b) based on Jamieson
We need not determine whether the Examiner’s interpretation that the
temporal language in the claims amounts to a functional limitation is correct,
because even under the broader interpretation adopted by the Examiner, the
Examiner’s finding that Jamieson discloses that “the adjustment of the blade
length maybe made independently with various blades being more extended
or retracted that [sic] the other blades” is erroneous. See Ans. 5 (citing
Jamieson, para. [0016]) and Ans. 17.
Jamieson is directed to a variable diameter rotor for a wind turbine
generator in which the lengths and/or pitches of the blades are adjusted
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simultaneously so as to vary the diameter of the rotor to address changes in
wind conditions. Jamieson, paras. [0015], [0022]. For example, Jamieson
discloses that in low winds, the rotor blades may be fully extended and in
high winds the rotor blades may be fully retracted, so that the diameter of the
rotor may be increased to increase energy capture in moderate wind speed
and the diameter of the rotor may be reduced in high winds to avoid
overloading the rotor. Jamieson, para. [0017]. Jamieson does not disclose a
rotor in which the length or pitch of one blade is different from the length or
pitch of another blade of the rotor at the same time. While Jamieson
discloses that for blades having more than one blade extension, the blade
extensions for a blade may be independent from each other, Jamieson does
not disclose or suggest extending or retracting one blade to a different length
from another blade such that the blades have different lengths at the same
time. Jamieson, para. [0016]. As such, Jamieson does not anticipate the
assemblies called for in independent claims 1, 23, 30, and 52, or their
dependent claims 2, 3, 8, 9, 11, 24, 26, 27, 29, 31, 32, 38, 40, 53, 56, and 58,
or the wind turbine called for in independent claim 60. Accordingly, we do
not sustain the anticipation rejection based on Jamieson.
Rejection under 35 U.S.C. § 102(b) based on Wilkie
Similarly, we need not determine whether the Examiner’s
interpretation that the temporal language in the claims amounts to a
functional limitation is correct, because even under the broader
interpretation adopted by the Examiner, the Examiner’s finding that Wilkie’s
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assembly “allow[s] for adjustment of the length, cord [sic] and pitch of the
blades in an independent manner” is erroneous. See Ans. 5.
Wilkie discloses “a propeller having propeller blades with variable
dimensions.” Wilkie, para. [0002]. In particular, Wilkie’s propeller
includes a shaft 20 and collars 30 radially surrounding the shaft 20 that
rotate with the shaft and can slide longitudinally along the shaft. Wilkie,
para. [0030]. Wilkie discloses that each collar 30 has collar extensions 32
located at various radial angles with respect to a radial axis for shaft 20. Id.
Wilkie discloses that a folding lattice 44 is pivotally connected to respective
collar extensions 32. Wilkie, para. [0031]. For example, figure 1 of Wilkie
“shows each collar 30 with three collar extensions 32, corresponding to
attachment points for three folding lattice 44 assemblies (only one of which
is shown).” Wilkie, para. [0032]. An actuator 60 causes the collars 30 to
slide along shaft 20, and movement of the collars 30 changes the
configuration of the folding lattice assemblies 44 to adjust the length of each
blade simultaneously. Id. Thus, the assembly disclosed in figure 1 of
Wilkie adjusts all of the folding lattice assemblies simultaneously and is not
capable of adjusting the blades independently without a structural
modification to the disclosed assembly.
Wilkie discloses that “actuator 60 also could be directly connected to
lattice bars 40 (not shown). The collars 30 then slide along shaft 20
responsive to the motion of the lattice bars.” Wilkie, para. [0032]. In this
alternate embodiment, since the lattice assemblies are still connected to
common collars, the lattice assemblies are incapable of being adjusted
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independently of one another. Wilkie also discloses that “[a] rotational
actuator may be similarly powered to rotate any adjacent or set of adjacent
lattice bars 40 at their common pivot points 42” and that “a multiplicity of
actuators can be used and combinations of linear and rotational actuators
also are possible.” Id. Each of these embodiments still includes the lattice
assemblies connected to common collars, which configuration precludes the
ability to adjust the length of one blade independently from another blade of
the propeller. As such, Wilkie does not anticipate the assemblies called for
in independent claims 30, 41, and 52, or their dependent claims 37, 48, and
55. Accordingly, we do not sustain the anticipation rejection based on
Wilkie.
Rejection under 35 U.S.C. § 103(a) based on Murakami
The Examiner found that Murakami discloses a wind turbine having
telescoping elements 43, 51 controlled by numerous actuators 48, 55 for
varying the chord of the blades, but it “does not expressly indicate that the
chords of the blades are varied individually.” Ans. 8. The Examiner found
that “a person of ordinary skill in the art would recognize the advantage in
optimization of the turbine by independently and variously changing the
chord of the blades.” Ans. 9. Based on these findings, the Examiner
determined it would have been obvious to one of ordinary skill to “modify
the turbine of [Murakami] by varying the chord of the blades at various
times to further optimize the output of the turbine since such a modification
would have been apparent to a person of ordinary skill in the art.” Ans. 9.
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The Examiner has failed to point to any evidentiary support in either
Murakami or elsewhere that one of ordinary skill in the art would recognize
the advantage to adjusting the chord of each blade independently to further
optimize the output of the turbine. While a rejection under 35 U.S.C. § 103
can take into account “background knowledge possessed by a person having
ordinary skill in the art,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007), the Examiner has failed in this case to provide adequate evidence
showing by a preponderance of the evidence that one of ordinary skill in the
art would have possessed the knowledge relied upon. As such, the
underlying factual basis for the Examiner’s determination of obviousness is
unsupported by a preponderance of the evidence. Accordingly, we do not
sustain the rejection of claims 12-16, 19, 20, 22, 41-45, 49, and 51 under
35 U.S.C. § 103(a) as unpatentable over Murakami.
Remaining Rejections
Because the Examiner’s articulation of the remaining rejections, i.e.,
rejections (4) through (8) and rejections (10) through (16), includes the
deficiencies set forth above, we likewise do not sustain these rejections.
NEW GROUND OF REJECTION
We enter new grounds of rejection of claims 1-3, 8, 9, 23, 24, 26, 27,
and 60 under 35 U.S.C. § 102(b) as anticipated by Dawson and of claims 12,
19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Dawson and
Murakami. No inference should be drawn from the Board’s failure to make
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a new ground of rejection for other claims.1 As a Board of appeal, we are
primarily a tribunal of review, and, as such, we leave it to the Examiner to
further consider the patentability of the remaining claims in light of the prior
art and these new grounds of rejection.
Anticipation by Dawson
Independent claims 1, 23, and 60
Using Appellant’s narrower construction of the claim language, we
find that Dawson discloses each and every element of independent claims 1,
23, and 60. In particular, Dawson discloses a wind turbine 2 consisting of a
foundation 4, a tower 6, a nacelle 8, and a number of variable length blades
10. Col. 5, ll. 59-61; fig. 1. The blades 10 are attached to a hub 12 by a bolt
flange 14. Col. 5, ll. 63-64. The blades 10 consist of a fixed blade section
16 which is rigidly attached to the hub 12 and a movable blade section 18
which can be extended or retracted. Col. 6, ll. 5-8. Dawson discloses that in
one embodiment all three blade portions 18 are extended and retracted at the
same time and by the same amount so that the blades remained balanced.
Col. 8, ll. 30-32. Dawson also discloses, however, that in an alternate
embodiment, the blades can be moved independently:
[I]n an alternate embodiment, it could be desirable to provide
separate and individual extension and retraction for each of the
moveable blade portions 18. In this way, it would be possible
to correct for inequalities in mass or aerodynamic balance of the

1 See 37 C.F.R. § 41.50(b). See also Manual of Patent Examining Procedure
(MPEP), 8th ed., rev. July 2008, § 1213.02 (“Since the exercise of authority
under 37 C.F.R. § 41.50(b) is discretionary, no inference should be drawn
from a failure to exercise that discretion.”)
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blades and the loads on the rotor may be kept in balance. In
this alternate embodiment, it would be necessary to provide an
accelerometer, strain gages, or some other sensor to monitor the
balance of forces on the rotor. The extension of each of the
moveable blade portions 18 could be individually adjustable in
response to the measured load balance on the rotor in order to
better balance the aerodynamic and mechanical loads.
Information about blade balancing can be found in U.S. Pat.
No. 5,219,454 which is incorporated herein by reference. By
individually extending and retracting the moveable blade
portions 18 it would be possible to continuously adjust the
rotor’s balance in real time.
Col. 8, ll. 36-53. Dawson further discloses that in an alternate embodiment,
“the moveable portion of the blade 18 is rotated, or pitched, as it is extended
and retracted,” so that the pitch angle of the blade can be varied along with
the blade length. Col. 8, ll. 54-60.
As such, Dawson discloses a wind turbine blade assembly having at
least first and second blades (10) coupled to a rotatable rotor (12) defining
an axis of rotation, the first blade having a first length at a first time and the
second blade having a second, different length at the first time, as called for
in claim 1. Dawson also discloses a wind turbine blade assembly having at
least first and second blades (10) coupled to a rotor (12) defining an axis of
rotation, the first blade defining a first pitch at a first time, and the second
blade defining a second, different pitch at the first time, as called for in
claim 23. In the same vein, Dawson discloses a wind turbine comprising an
upright support (6), at least one rotor (12) coupled to the support, and at least
first and second blades (10) the first blade assuming a first configuration
(e.g., a first length configuration) at a first time and the second blade
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assuming a second configuration (e.g., a different second length
configuration) at the first time, as called for in claim 60.
Dependent claims 2 and 3
Claim 2 depends from claim 1 and calls for at least one blade to have
plural parts telescoping relative to each other along the length of the blade,
each blade defining a respective length, the lengths being different from
each other at least at the first time. Claim 3 depends from claim 2 and adds
an actuator telescoping at least one part of a blade relative to another part of
the blade.
Dawson discloses that the movable blade section 18 is actuated by an
actuating device 21 and that “[i]n [the] fully retracted position the base of
the movable blade section 18 is at a position deep within the fixed blade
section 16 but is not interfering with any of the other components of the
system such as the linear actuator 21.” Col. 7, ll. 38-47. As such, Dawson
discloses that blade 10 has plural parts 16 and 18, wherein movable blade
section 18 telescopes within fixed blade section 16. As set forth above in the
analysis of claim 1, Dawson discloses the lengths of the blades being
different from each other at a point in time. As such, Dawson anticipates
claims 2 and 3.
Dependent claims 8 and 26
Claim 8 depends from claim 1 and claim 26 depends from claim 23,
and each dependent claim recites “an upright support holding the blades in a
vertical plane above the earth’s surface.” As set forth above, Dawson
discloses an upright support (tower 6). Tower (6) holds the blades (10) in a
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vertical plane above the earth’s surface. Dawson, fig. 1. As such, Dawson
anticipates claims 8 and 26.
Dependent claim 9 and 27
Claim 9 depends from claim 1 and recites “wherein the first blade has
at least one of: its pitch, or its chord, being different from that of the second
blade at the first time.” Claim 27 depends from claim 23 and similarly
recites “wherein the first blade has at least one of: its chord, or its length,
being different from that of the second blade at the first time.” As such, both
claims encompass an assembly in which the first blade has both its pitch and
length being different from the pitch and length of the second blade at the
first time. As set forth supra, Dawson discloses an embodiment in which the
lengths of the blades can be adjusted independently and the moveable
portion of the blade is rotated, or pitched, as it is extended and retracted, so
that the pitch angle of the blade can be varied along with the blade length.
Col. 8, ll. 36-60. As such, Dawson anticipates claims 9 and 27.
Dependent claim 24
Claim 24 depends from claim 23 and calls for “a motor coupled to at
least one blade to establish the pitch of the blade.” Dawson discloses that
the actuating device can be “a motor attached to the moveable blade section
18[.]” Col. 8, ll. 16-17. As such, Dawson anticipates claim 24.
Obviousness over Dawson and Murakami
Independent claim 12
While Dawson discloses a wind turbine blade assembly in which the
pitch and length of a blade can be adjusted independently of the pitch and
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length of another blade in response to the measured load balance on the rotor
in order to better balance the aerodynamic and mechanical loads, Dawson
does not disclose adjusting the chords of the blades. As found by the
Examiner and uncontested by Appellant:
Murakami discloses a wind turbine inherently having an upright
support holding blades (41) above the earth's surface. The
blades (41) include a plurality of telescoping elements (43, 51)
utilized to vary the chord of the blades. Murakami utilizes
numerous actuators (55, 48) to control the telescoping parts (43,
51) (See Fig. 14). Murakami's blades also include adjustable
lengths and pitches. Murakami does not expressly indicate that
the chords of the blades are varied individually. However, the
actuators and blade sections of Murakami are independent[.]
Ans. 8; App. Br. 12-13. Murakami teaches that when the leading edge
auxiliary vanes (43) are extended, a path (45) is formed which guides the
airflow so that lift and rotating torque are generated at the leading edge
auxiliary vanes (43) even when the incoming airflow is low in speed. Col. 8,
ll. 15-25. Murakami discloses that the rear auxiliary vanes (51) are also
extended when the velocity of the airflow coming in to the wind turbine is
low. Col. 9, ll. 26-33. Murakami discloses that it is also possible to extend
just the lead edge auxiliary vanes (43) or the rear auxiliary vanes (51)
according to the incoming velocity airflow. Col. 9, ll. 45-47. The auxiliary
vanes (43, 51) are retracted when the incoming airflow is high so as to lower
the drag of the turbine blade (41) to prevent damage thereto. Col. 9, ll. 47-
52. It would have been obvious to one of ordinary skill in the art at the time
of Appellant’s invention to add the auxiliary vanes of Murakami to the wind
turbine blade assembly of Dawson to improve Dawson’s ability to adjust the
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load on each individual blade in response to the measured load balance by
individually adjusting the chord of each blade to adjust the lift and rotating
torque generated thereby as taught by Murakami. As such, independent
claim 12 is unpatentable over Dawson and Murakami.
Dependent claim 19
Claim 19 depends from claim 12 and recites “an upright support
holding the blades in a vertical plane above the earth’s surface.” As set forth
above, Dawson discloses an upright support (tower 6). Tower (6) holds the
blades (10) in a vertical plane above the earth’s surface. Dawson, fig. 1. As
such, Dawson, as modified to add the auxiliary vanes of Murakami, renders
unpatentable claim 19.
Dependent claim 20
Claim 20 depends from claim 12 and recites “wherein the first blade
has at least one of: its pitch, or its length, being different from that of the
second blade at the first time.” As set forth supra, Dawson discloses an
embodiment in which the lengths of the blades can be adjusted
independently and in which the moveable portion of the blade is rotated, or
pitched, as it is extended and retracted, so that the pitch angle of the blade
can be varied along with the blade length. Col. 8, ll. 36-60. As such,
Dawson, as modified to add the auxiliary vanes of Murakami, results in an
assembly in which the blades’ pitches, lengths, and chords are independently
adjustable, and therefore renders unpatentable claim 20.
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CONCLUSIONS
Jamieson does not disclose a structure capable of adjusting the blade
lengths and pitches independently.
Wilkie does not disclose an assembly capable of adjustment of the
length, chord, and pitch of the blades in an independent manner.
The Examiner did not articulate adequate reasoning based on rational
underpinnings to explain why the subject matter of independent claims 12
and 41 would have been obvious in view of Murakami.
Claims 1-3, 8, 9, 23, 24, 26, 27, and 60 are anticipated by Dawson and
claims 12, 19, and 20 are unpatentable over Dawson and Murakami.
DECISION
The decision of the Examiner to reject claim 59 under 35 U.S.C. § 101
is AFFIRMED. We do not reach a decision on the rejections of claim 59
under 35 U.S.C. § 112, second paragraph and under 35 U.S.C. § 102(b) as
anticipated by Jamieson.
The decision of the Examiner to reject claims 1-58 and 60 under
35 U.S.C. §§ 102 and 103 is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 1-3, 8, 9, 23,
24, 26, 27, and 60 under 35 U.S.C. § 102(b) as anticipated by Dawson, and a
NEW GROUND OF REJECTION of claims 12, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Dawson and Murakami.
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.”
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In addition to affirming the Examiner’s rejection of claim 59, this
decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, 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 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,
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.
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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)

mls