Ex Parte Hyde et al

Patent Trial and Appeal Board

Aug 27, 2014

11906995 (P.T.A.B. Aug. 27, 2014)

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.
11/906,995 10/04/2007 Roderick A. Hyde SE1-0987-US 8273
80118 7590 08/27/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
08/27/2014 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 RODERICK A. HYDE, JORDIN T. KARE,
ERIC C. LEUTHHARDT, DENNIS J. RIVET,
LOWELL L. WOOD JR., and EDWARD K.Y. JUNG
________________

Appeal 2012-004555
Application 11/906,995
1

Technology Center 3600
________________

Before BRUCE R. WINSOR, JOHN A. EVANS, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 and 33–65.
2
We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part and enter a new ground of rejection.

1
According to Appellants, the real party in interest is Searete LLC, which is
wholly owned by Intellectual Ventures Management LLC (App. Br. 6.)
2
Claims 2–32 and 66–116 were previously cancelled.
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2
INVENTION
The invention is directed to reviewing and underwriting a risk for
epigenetic information. Spec. 1–3. Claim 1 is illustrative of the invention
and reproduced below:

1. A method comprising:
reviewing epigenetic information for at least one
individual; and
underwriting a risk at least partially based upon said
epigenetic information for said at least one individual;
where each step is performed using a microprocessor.

REFERENCES
Atkins US 5,852,811 Dec. 22, 1998
Fey et al. US 2002/0052761 A1 May 2, 2002
Flagg US 6,456,979 B1 Sept. 24, 2002
Halle US 2005/0282213 A1 Dec. 22, 2005
Apfeld et al. US 2006/0147947 A1 July 6, 2006
Binns et al. US 7,392,201 B1 Jun. 24, 2008
Kenedy et al. US 2008/0228765 A1 Sept. 18, 2008
Jacobson US 7,685,007 B1 Mar. 23, 2010
Patrick L. Brockett, Richard MacMinn, and Maureen Carter, Genetic
Testing, Insurance Economics, and Societal Responsibility, NORTH
AMERICAN ACTUARIAL JOURNAL vol. 3, no. 1, 1–120 (1999) (genetic
testing and how it pertains to insurance companies underwriting
policies).

RELATED APPEALS
Appellants did not identify any related appeals. However, we note
that there are at least seven related appeals, which are: appeal No. 2012-
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3
002201 (Application No. 11/986,966); appeal No. 2012-004467
(Application No. 12/012,701); appeal No. 2012-004590 (Application No.
11/974,166); appeal No. 2012-009645 (Application No. 11/986,986); appeal
No. 2012-011303 (Application No. 11/986,967); appeal No. 2013-004647
(Application No. 12/079,589); and appeal No. 2013-007816 (Application
No. 12/004,098).

REJECTIONS AT ISSUE
Claims 1, 33–42, 45, 60, and 65 are rejected under a provisional non-
statutory obviousness-type double patenting rejection over Application
11/974,166.
3
Ans. 5–6.
Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by Apfeld.
Ans. 6–7.
Claims 33–36, 39–41, 43–50, 53, 55–58, 60, 62–64, and 65 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Brockett and Kenedy.
4
Ans. 7–15.
Claim 37 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Brockett, Kenedy, and Halle. Ans. 15–16.

3
Application No. 11/974,166 is pending. Thus, we do not reach the merits
of the Examiner’s double patenting rejections because this issue is not ripe
for decision by the Board. Panels have the flexibility to reach or not reach
provisional double-patenting rejections. See Ex parte Moncla, 95 USPQ2d
1884 (BPAI 2010) (precedential).
4
The Examiner inadvertently left out claims 33 and 65 in the heading of the
rejection, but addressed claims 33 and 65 in the body of the rejection. Ans.
7–15. We deem this to be a typographical error and have included it here.
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Claims 38, 42, and 52 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Brockett, Kenedy, and Jacobson. Ans.
16–18.
Claim 51 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Brockett, Kenedy, and Atkins. Ans. 18–19.
Claims 54 and 59 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Brockett, Kenedy, and Flagg. Ans.
19–20.
Claim 61 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Brockett, Kenedy, and Binns. Ans. 20–21.

ISSUES
5

Did the Examiner err in finding that Apfeld discloses the features of
claim 1?
Did the Examiner err in finding that the combination of Brockett and
Kenedy teaches the features of claims 33, 36, 43, 58, and 65?

CONTENTIONS AND ANALYSIS
Rejection of Claim 1 under 35 U.S.C. § 102(b)
Claim 1 is recited supra. The Examiner made explicit findings
regarding the elements taught by the prior art, and explained how the
elements are mapped to the respective claim elements of the appealed

5
We considered the Appeal Brief filed August 16, 2011; the Examiner’s
Answer mailed November 28, 2011; the Reply Brief filed January 27, 2012;
and the Supplemental Reply Brief filed January 27, 2012. We consider both
the Reply Brief and the Supplemental Reply Brief to be a single brief
because they were filed on the same date.
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claims. Ans. 6–7 and 25–27. Appellants styled their arguments as a
challenge to the existence of a prima facie case of unpatentability of the
claims at issue (App. Br. 21–44).
However, it is well settled that:
[The USPTO] satisfies its initial burden of production by
adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.

In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and
quotation marks omitted). We agree with the Examiner.
The Examiner found Apfeld discloses evaluating and determining the
identity of a gene of a human subject, which discloses reviewing epigenetic
information for at least one individual. Ans. 25–26. Also, the Examiner
found Apfeld discloses a premium for insurance is evaluated as a function of
an indicator parameter; the indicator parameter can be a function of the
result of evaluating ATP and AMP that includes epigenetic modification that
is used as an underwriting process for life insurance, which discloses
underwriting a risk at least partially based upon said epigenetic information
for said at least one individual. Ans. 26–27. The Examiner also found
Apfeld discloses each step is performed using a microprocessor. Ans. 7.
As explained in Jung, 637 F.3d at 1356, the Examiner’s findings and
explanations would have put any reasonable Applicants on notice of the
Examiner’s rejection, and given them ample information with which to
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counter the grounds of rejection, which is all that is required to establish a
prima facie case of unpatentability. In short, the Examiner has satisfied the
initial burden of production by combining the references to establish a case
of obviousness. The burden then shifts to Appellants to rebut the
Examiner’s case.
In order to rebut a prima facie case of unpatentability, Appellants
must distinctly and specifically point out the supposed Examiner errors, and
the specific distinctions believed to render the claims patentable over the
applied references. See 37 C.F.R. § 41.37(c)(vii) (2010) (“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, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
Appellants have failed to carry their burden. Appellants generally
assert that the claims define a patentable invention because the Examiner has
failed to establish a prima facie case of unpatentability, but fail to articulate
with any specificity what gaps exist between the cited references and the
claims. Appellants’ assertion generally includes the following: recite the
disputed claim, duplicate the Examiner’s statement of the rejection, further
duplicate the cited portions of the prior art references, and contend—without
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adequate analysis of the cited portions of the prior art—that the duplicated
language in the prior art does not meet the disputed claim limitations.
Additionally, Appellants fail to persuade us of error because for each
of the claims, although the cited text does not repeat the recited claim
limitation verbatim, one skilled in the art would understand the recited claim
limitation encompasses the disclosure cited by the Examiner. See In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (whether a reference teaches a
claim limitation “is not an ‘ipsissimis verbis’ test”).
Moreover, because we conclude that the Examiner provided an
adequate evidentiary basis for finding anticipation, we are not persuaded that
the rejection was improperly based on a hindsight analysis, personal
knowledge, or official notice, as Appellants argue. App. Br. 52–53.
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claim 1.

Rejection of Claims 33–35, 37–42, 44–57, and 59–65 under 35 U.S.C.
§ 103(a)
The Examiner’s findings are set forth in the Answer. Ans. 27–29.
Appellants styled their arguments as a challenge to the existence of a prima
facie case of unpatentability of the claims at issue (App. Br. 54–74).
However, it is well settled that:
[The USPTO] satisfies its initial burden of production by
adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
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information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.

In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and
quotation marks omitted).
The Examiner found Brockett teaches genetic screening or testing for
abnormality, defects, or deficiencies, which teaches reviewing genetic
information for at least one individual. Ans. 28. Additionally, the Examiner
found Brockett teaches a premium calculation that is reflective of a known
risk based on genetic test results obtained, which teaches underwriting a risk
at least partially based upon said genetic information for said at least one
individual. Id. The Examiner also found that although Brockett fails to
teach epigenetic information, Kenedy discloses epigenetic information. Id.
The Examiner explained that a person of ordinary skill in the art at the
time the invention was made would have been motivated to modify the
premium calculation of a known risk of Brockett to include epigenetic
information of Kenedy to distinguish among potential insured people and
develop improved quantitative assessments of risk and better calculations of
the actuarial present value of future lost costs based on new statistically
significant information gained from genetic testing. Ans. 28–29. In other
words, the motivation to combine the teachings of Brockett and Kenedy is to
provide a system that generates more predictable and effective results. Thus,
the combination of Brockett and Kenedy teach the features of the claim.
As explained in Jung, 637 F.3d at 1356, the Examiner’s findings and
explanations would have put any reasonable Applicants on notice of the
Examiner’s rejection, and given them ample information with which to
counter the grounds of rejection, which is all that is required to establish a
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prima facie case of unpatentability. In short, the Examiner has satisfied the
initial burden of production by combining the references to establish a case
of obviousness. The burden then shifts to Appellants to rebut the
Examiner’s case.
In order to rebut a prima facie case of unpatentability, Appellants
must distinctly and specifically point out the supposed Examiner errors, and
the specific distinctions believed to render the claims patentable over the
applied references. See 37 C.F.R. § 41.37(c)(vii) (2010) (“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, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
Appellants have failed to carry their burden. Appellants generally
assert that the claims define a patentable invention because the Examiner has
failed to establish a prima facie case of unpatentability, but fail to articulate
with any specificity what gaps exist between the cited references and the
claims. Appellants’ assertion generally includes the following: recite the
disputed claim, duplicate the Examiner’s statement of the rejection, further
duplicate the cited portions of the prior art references, and contend—without
adequate analysis of the cited portions of the prior art—that the duplicated
language in the prior art does not meet the disputed claim limitations.
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Additionally, Appellants fail to persuade us of error because for each
of the claims, although the cited text does not repeat the recited claim
limitation verbatim, one skilled in the art would understand the recited claim
limitation encompasses the disclosure cited by the Examiner. See In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (whether a reference teaches a
claim limitation “is not an ‘ipsissimis verbis’ test”).
After considering all the evidence and arguments, we conclude that
the record supports, and Appellants have not persuasively rebutted, a
conclusion of prima facie obviousness for the reasons discussed by the
Examiner and explained supra, in the discussion of Brockett and Kenedy.
Ans. 6–7.
Additionally, Appellants assert that the Examiner has not articulated
reasoning with rational underpinnings to support a motivation to combine
the teachings of Brockett and Kenedy. App. Br. 67–74. Specifically,
Appellants styled their arguments to state there is no teaching to modify or
combine components as a matter of law. Id.
We are not persuaded of nonobviousness by Appellants’ assertions
that the Examiner did not provide a teaching to combine or modify
components. Id. As explained supra, in the discussion of Brockett and
Kenedy, the Examiner identified a teaching to combine or modify
components. Thus, we find that the Examiner articulated reasoning with
rational underpinnings to support a motivation to combine the teachings of
Brockett and Kenedy, see In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006).
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claim 33, and claims 34–35, 37–42, 44–57, and 59–65, which
Appellants contend are allowable for the same reasons as claim 33.
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Rejection of Claim 36 under 35 U.S.C. § 103(a)
Claim 36 recites, “means for counting an occurrence of at least one
clinical outcome.” The Examiner found Brockett teaches death or disability,
which the Examiner relied on to teach “clinical outcome,” and increased
incidence, which the Examiner relied on to teach “counting an occurrence.”
Ans. 34–35. Appellants contend the cited portions are in the context of
insurance, rather than clinical outcomes. App. Br. 75–76. We agree with
Appellants.
Brockett merely teaches insurers can administer tests and use the
information to underwrite policies if there is a distinct relation between a
particular gene and increased incidence of death or disability, which is
describing statistics in the context of insurance, rather than the deaths or
disabilities occurring in clinical outcomes. App. Br. 75–76.
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 36.

Rejection of Claim 43 under 35 U.S.C. § 103(a)
Claim 43 recites, “means for setting a premium at least partially based
upon said epigenetic information for said at least one individual.” The
Examiner found that the combination of Brockett and Kenedy teaches the
claimed features. Ans. 10. Appellants contend the Examiner has not
provided a prima facie case of unpatentability and Brockett’s teaching is in
the context of a definitive information set rather than a means for setting a
premium at least partially based upon said epigenetic information for said at
least one individual. App. Br. 77–78. We agree with the Examiner.
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We conclude the Examiner established a prima facie case of
unpatentability for at least the reasons stated supra in the discussion of claim
33. The Examiner found that Brockett teaches a premium calculation that is
reflective of a known risk based on a genetic test and Kenedy teaches
epigenetic, which teaches means for setting a premium at least partially
based upon said epigenetic information. Ans. 10 and 35.
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claim 43.

Rejection of Claim 58 under 35 U.S.C. § 103(a)
Claim 58 recites, “means for setting a premium at least partially based
upon said epigenetic information for said at least one individual for life
insurance comprises: means for establishing at least one of guaranteed
insurability or guaranteed renewability.” The Examiner found that the
combination of Brockett and Kenedy teaches the disputed features. Ans. 14
and 36. In particular, the Examiner found Brockett teaches guaranteed issue,
which the Examiner relied upon to teach the disputed feature. Id.
Appellants contend the Examiner has not provided a prima facie case of
unpatentability and Brockett’s teaching is in the context of adverse selection
problems rather than means for establishing at least one of guaranteed
insurability or guaranteed renewability. App. Br. 79–80. We agree with
Appellants.
Although Brockett teaches insurance, Brockett fails to teach life
insurance. App. Br. 78–80. Moreover, Brockett teaches guaranteed issue
based on law, rather than based upon said epigenetic information for said at
least one individual for life insurance. Id. Thus, Brockett fails to teach,
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“means for setting a premium at least partially based upon said epigenetic
information for said at least one individual for life insurance comprises:
means for establishing at least one of guaranteed insurability or guaranteed
renewability.”
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 58.

NEW GROUNDS OF REJECTION
Within our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1 and 33–36, 37–58, and 59–65 under 35
U.S.C. § 101.
Following the decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S.Ct. 2347 (2014) (citing Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S.Ct. 1289, 1300 (2012)), we analyze claims where the abstract
idea judicial exception to the categories of statutory subject matter is at issue
using the following two-part analysis set forth in Mayo: 1) Determine
whether the claim is directed to an abstract idea; and 2) if an abstract idea is
present in the claim, determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the abstract idea itself. See Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S.Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice Corp. include: fundamental economic practices;
6
certain

6
Alice Corp., at 2350: e.g., intermediated settlement, i.e., the use of a third
party intermediary to mitigate settlement risk.
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methods of organizing human activities;
7
“an idea of itself;”
8
and,
mathematical relationships or formulas.
9
Claims that include abstract ideas
like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice Corp. that may be enough to
qualify as “significantly more” when recited in a claim with an abstract idea
include, as non-limiting or non-exclusive examples: Improvements to
another technology or technical fields;
10
improvements to the functioning of
the computer itself;
11
and meaningful limitations beyond generally linking
the use of an abstract idea to a particular technological environment.
12

Limitations referenced in Alice Corp. that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an

7
Id., at 2356: e.g., a series of steps instructing how to hedge risk (citing
Bilski v. Kappos, 561 U.S. 593, 599 (2010)).
8
Id., at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 US. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175
(1853)).
9
Id., at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook. 437 U.S. 584, 594–595
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Benson. 409 U.S. at 71–72).
10
Id., at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175,177–178(1981)).
11
Id. at 2359.
12
Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [method] to a particular
technological environment,' that is, implementation via computers" (citing
Bilski, 561 U.S. at 610, 611).
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equivalent) with an abstract idea;
13
mere instructions to implement an
abstract idea on a computer;
14
or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.
15

If there are no meaningful limitations in the claim that transform the
abstract idea into a patent eligible application such that the claim amounts to
significantly more than the abstract idea itself, the claim is directed to non-
statutory subject matter under 35 U.S.C. § 101.
Each of claims 1, 43–70, 72, 75–83, and 85 recites a fundamental
economic practice such as “underwriting a risk at least partially based upon
said epigenetic information for said at least one individual,”
16
which is an
abstract idea under the first step of the analysis. Next, we analyze the claims
under the second part of the analysis and we find that the claims require no
more than a generic computer to perform generic computer functions.
We also note that The Supreme Court held that “simply appending
conventional steps, specified at a high level of generality, to laws of nature,
natural phenomena, and abstract ideas cannot make those laws, phenomena,
and ideas patentable.” Mayo, 132 S.Ct. at 1300.
Accordingly, for the reasons stated supra, we enter a new ground of
rejection for claims 1, 43–70, 72, 75–83, and 85.

13
Id. at 2357, 2358.
14
Id. at 2360: e.g., simply implementing a mathematical principle on a
physical machine, namely a computer (citing Mayo at 1301).
15
Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
16
We note that the relationship epigenetic information and the risk of an
individual developing a disease is a well-known natural phenomenon.
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CONCLUSION
We are persuaded that the Examiner did not err in finding that Apfeld
discloses the features of claim 1.
We are persuaded that the Examiner did not err in finding that the
combination of Brockett and Kenedy teaches the features of claims 33, 43,
and 65.
We are persuaded that the Examiner erred in finding that the
combination of Brockett and Kenedy teaches the features of claims 36 and
58.
We find that claims 1, 43–70, 72, 75–83, and 85 are directed to non-
statutory subject matter.

DECISION
The Examiner’s decision to reject claims 1 and 33–35, 37–57, and 59–
65 under 35 U.S.C. §§ 102(b) and 103(a) is affirmed.
The Examiner’s decision to reject claims 36 and 58 under 35 U.S.C.
§ 103(a) is reversed.
We enter a new ground of rejection for claims 1 and 33–36, 37–58,
and 59–65 under 35 U.S.C. § 101.

TIME PERIOD

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).
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
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pursuant to this paragraph shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the 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 . . . .

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD