Ex Parte Itskovich et alDownload PDFPatent Trial and Appeal BoardJun 23, 201612288171 (P.T.A.B. Jun. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/288,171 10/17/2008 Gregory B. Itskovich 87884 7590 06/27/2016 Mossman, Kumar and Tyler, PC P.O. Box 421239 Houston, TX 77242 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 ATTORNEY DOCKET NO. CONFIRMATION NO. RES4-45210-US 7158 EXAMINER VALONE, THOMAS F ART UNIT PAPER NUMBER 2858 NOTIFICATION DATE DELIVERY MODE 06/27/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docket@mktlaw.us.com tthigpen@mktlaw.us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY B. ITSKOVICH, ALEXANDRE N. BESP ALOY, FARHAT A. SHAIKH, and PETER JOHN NOLAN Appeal2014-004830 Application 12/288, 171 1 Technology Center 2800 Before CHUNG K. PAK, TERRY J. OWENS, and N. WHITNEY WILSON, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Final Action2 rejecting claims 1-12. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. 1 Application 12/288,171, filed October 17, 2008. 2 Final Action mailed September 09, 2013 ("Final Act."). Appeal2014-004830 Application 12/288, 171 INTRODUCTION The appealed subject matter relates to a "logging tool for performing resistivity measurements on the sidewall of a borehole in an earth formation." Specification ("Spec."), Abstract. The tool measures the resistivity properties of the sidewalls of a borehole "with full circumferential resolution." Id. at 12, 11. 5-6. Figure 2, 3 which is "a perspective view of a borehole resistivity measurement instrument 100 in accordance with one embodiment" of Appellants' invention (Id. at 7, 1. 22, to 8, 1. 1 (emphasis added)), is reproduced below: 100--,,._ 104 12 FIG. 2 In Figure 2, measurement instrument 100 comprises an "elongate, preferably cylindrical mandrel or tubular 101 [sic: 104]." Id. at 8, 11. 2 and 5-6 (emphasis added). Mandrel 104 carries "a unitary, circumferential pad 102 ... [which] in 3 Replacement drawing sheets, filed on February 26, 2013, which have been entered by the Examiner on March 14, 2013. See Advisory Action mailed on March 14, 2013, item 5. 2 Appeal2014-004830 Application 12/288, 171 tum, carries thereon a continuous, circumferential series of measurement buttons (electrodes) la ... ln." Id. at 11. 3--4 (emphasis added). Buttons la ... ln are placed "on one unitary circumferential pad 102 extending around ... mandrel 104." Id. at 11. 4-6 (emphasis added). Buttons la . .. ln are separated from one another by "thin isolative gaps 106." Id. at 11. 7-8 (emphasis added). In Figure 2, pad 102 is distanced from borehole wall 12 by standoff 211. Amendment to the Specification, filed on October 19, 2011. Details of the appealed subject matter are recited in representative independent claims 1 and 6, which are reproduced below from the Claim Appendix to the Appeal Brief 4 (bracketed reference characters of the embodiment of Specification Figure 2 and emphasis added): 1. An apparatus for performing electrical logging in a borehole through an earth formation, comprising: a mandrel [104]; and a circumferential pad [102] disposed upon said mandrel [104] and carrying a plurality of individual measurement electrodes [la ... ln] evenly spaced around the entire circumference of said pad [102], the circumferential pad [102] extending continuously around the mandrel [104]. 6. A method for performing resistivity measurements in a borehole through an earth formation, comprising: (a) using a measurement tool [100] to inject measurement current into said borehole wall [12]; and (b) taking resistivity measurements at a plurality of measurement electrodes [la ... ln] arranged circumferentially around said measurement tool [100], said measurement electrodes [la ... ln] being carried on a circumferential pad [102] that extends continuously around said tool [100] and being evenly spaced apart by a distance that is less 4 Appeal Brief filed on October 21, 2013 ("App. Br."). 3 Appeal2014-004830 Application 12/288, 171 than the width of each of said measurement electrodes, such that the tool has full circumferential resolution. The Examiner maintains the following grounds of rejection, s, 6 which are before us on appeal: 1. Claims 1-3, 6, 7, 10, and 12 under 35 U.S.C. § 103(a) as unpatentable over the collective teachings of Evans 7 and Mann8; 2. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over the collective teachings of Evans and Mann, further combined with the teachings of Gianzero9; 3. Claims 4 and 8 under 35 U.S.C. § 103(a) as unpatentable over the collective teachings of Evans and Mann, further combined with the teachings of Gold10· and ' 4. Claims 9 and 11 under 35 U.S.C. § 103(a) as unpatentable over the collective teachings of Evans and Mann, further combined with the teachings of Dory11. 5 Examiner's Answer mailed on January 24, 2014 ("Ans.") 2-6. 6 The rejection of claim 3 under 35 U.S.C. 112, second paragraph, set forth in Final Action, paragraph 2, has been withdrawn. Ans. 7. 7 Evans et al., United States Patent No. 6,714,014 B2 issued March 30, 2004 ("Evans"). 8 Mann et al., Canadian patent document CA 685727 A published May 5, 1964 ("Mann"). 9 Gianzero et al., United States Patent No. 4,468,623 issued on August 28, 1984 ("Gianzero"). 10 Gold et al., United States Patent Publication No. 2008/0068025 Al published March 20, 2008 ("Gold"). 11 Dory et al., United States Patent No. 5,502,686 issued on March 26, 1996 ("Dory"). 4 Appeal2014-004830 Application 12/288, 171 DISCUSSION Rejection l, Obviousness over the collective teachings of Evans and Mann As evidence of obviousness of the claimed subject matter under 35 U.S.C. § 103(a), the Examiner relies upon the collective teachings of Evans and Mann. The Examiner finds that Evans teaches "an apparatus for borehole logging (col. 1, line[ s] 15-20)" (Ans. 2) comprising: • "a mandrel (34 [of Figure 2A] col. 4, line[ s] 40--45)" (id. ( emphasisadded)); •"a prior art circumferential pad (col. 2, line[s] 15-30) with continuous and contiguous effective segments (col. 2, line[ s] 3 0--45) with the 'pad or body' acting as the guard electrode of the mandrel (col. 3, line[s] 1-2)" (id.); and • "multiple circumferential or 'azimuthally distributed electrodes' (col. 6, line[s] 29--45, Fig. 2B and col. 7, line[s] 55-65), evenly spaced around the circumference of the mandrel, as claimed, though the evenly spaced plurality occurs in groups that are evenly spaced" (id. at 2-3). The Examiner further finds that "Evans specifically adds that 'the components may be mounted on a mandrel 34 in a conventional, well-known manner' (col. 4, line[ s] 40--42) which he refers to [as] a circumferential pad extending around the mandrel that is already invented in the prior art (col. 2, line[ s] 10- 30)." Id. at 3 (emphasis added). The Examiner finds that Evans further teaches "a method to measure the resistivity in a borehole" as recited in claim 6. Id., citing Evans, col. 4, 11. 55-60 and col. 5, 11. 15-25. 5 Appeal2014-004830 Application 12/288, 171 Evans' Figures 2A and 2B are reproduced below. : _ _j • ~1 r32 n OI--' • ~1 ~ FIG. 2A Fl6.2B Evans' Figure "2 [sic: 2A] is a mechanical schematic view of the imaging tool." Evans, col. 4, 11. 1-2. Evans' Figure "2A [sic: 2B] is a detail view of an electrode pad." Id. at 1. 3. In Evans' Figure 2A, the imaging tool comprises four resistivity arrays 26 (the fourth array is hidden in this view), which are mounted on mandrel 34. Id. at col. 4, 11. 41-42, 55-56. As shown in Evans' Figure 2B, each resistivity array 26 comprises a pad comprising "measure electrodes 41a ... 41n for injecting electrical currents into the formation, focusing electrodes 43a [and] 43b for horizontal focusing of the electrical currents from the measure electrodes and focusing electrons 45a [and] 45b for vertical focusing of the electrical currents from the measure electrodes." Id. at col. 3, 6 Appeal2014-004830 Application 12/288, 171 11. 34-37, col. 4, 11. 56-62 (emphasis added). The pads are secured to extendable arms 42. Id. at col. 5, 11. 19-21. Evans characterizes the Mann patent (Canadian Patent No. 685,727)as propos[ing] an array of small electrode buttons either mounted on a tool or a pad and each of which introduces in sequence a separately measurable survey current for an electrical investigation of the earth formation. The electrode buttons are placed in a horizontal plane with circumferential spacings between electrodes ... Id. at col. 2, 11. 3--4, 9-16. Evans characterizes the Gianzero patent (U.S. Patent No. 4,468,623) as disclos[ing] tool mounted pads, each with a plurality of small measure electrodes . . . [which] are arranged in an array in which the measure electrodes are so placed at intervals along at least a circumferential direction (about the borehole axis) .... The measure electrodes are made small to enable a detailed electrical investigation over a circumferentially contiguous segment of the borehole ... Id. at col. 2, 11. 4-5 and 17-30. The Examiner finds that Evans "does not explicitly extend the electrodes evenly spaced around the entire circumference of a pad or body that extends continuously around the mandrel" as recited in claims 1 and 6. Ans. 3. However, the Examiner finds that Mann "teaches electrodes that are evenly spaced all around the entire circumference (12, Fig. 1-3) of the mandrel which consists of insulated material (13, p. 8, line[s] 20-30) that extends on a body pad guard electrode (11, Fig. 2) continuously around the mandrel as claimed." Id. (emphasis added). Mann's Figures 1and2 are reproduced below. 7 Appeal2014-004830 Application 12/288,171 FIG.I. A II FIG.2. Mann Figure 1 is "a vertical section through part of the electrode assembly in a borehole." Mann, 8, 11. 11-12. Mann's Figure 2 is "a horizontal section along the line A-A of [F]igure l." Id. at 11. 13-14. In Mann Figures 1and2, logging sonde 10 is shown in borehole 14 filled with drilling fluid 15. Id. at 8, 11. 25- 26, 29-30. Sonde 10 comprises potential guard electrode 11 in the form of a hollow right circular cylinder, and twenty beamed current electrodes 12, each of which is insulated from the potential guard electrode with insulating material 13. Id. at 8, 11. 26-29. The Examiner states: "[i]t would have been obvious to one of ordinary skill in the art ... to have Evans include electrodes which are evenly spaced around the entire circumference of the pad that extends continuously around the mandrel as taught by Mann for the benefit of being able to scan at least two thirds of the wall of a borehole as suggested by Mann (p. 9, line[ s] 1-10)." Ans. 3. Appellants contend that the "combination of Evans and Mann['s Figures 1, 2, and 3] does not disclose ... the circumferential pad disposed upon said mandrel and extending continuously around the mandrel" as recited in claim 1. 8 Appeal2014-004830 Application 12/288, 171 App. Br. 13. In particular, Appellants urge that in Evans' Figures 2A and 2B, the mandrel has four pads, each carrying a cluster of electrodes. Id. at 11. Appellants urge that "[t]he use of multiple pads necessarily results in interruptions, such as gaps, which does not teach a pad extending 'continuously' around the mandrel." Id. Appellants urge that contrary to the Examiner's findings, Evans' teaching at col. 4, 11. 40--42, refers to the "manner in which components are attached to the tool," not to mounting the components on a circumferential pad. Id. at 11-12. Appellants urge that in Mann, the " [ c ]urrent electrodes 12 are circumferentially arranged because they are mounted in the tubular [the mandrel], which acts as the guard electrode, and not on a pad." App. Br. 12. In response to Rejection 2 (rejection of claim 5), Appellants urge that "it is clear from the drawings and accompanying text [in Gianzero, the prior art characterized by Evans, col. 2, 11. 17-30] that Gianzero does not disclose a circumferential pad extending continuously around the mandrel." App. Br. 15. Rather, according to Appellants, Gianzero teaches that "the size of pad 30 [in Figure 1] cannot be too large, 'lest the frictional force with the borehole wall becomes so great that, when taking the effect from all of the pads 30 into account, the tool 20 becomes difficult to move along the borehole." Id. citing Gianzero, col. 7, 11. 1-19 (emphasis added). In Gianzero Figure 1, "[t]ool 20 is provided with a plurality of pads 30 such as 30.1 and 30.2, which are mounted on devices 32 which press pads 30 against the wall 34 of the borehole 24." Gianzero, col. 4, 11. 48-55. Put another way, because Gianzero teaches that pad 30 cannot be too large in the horizontal direction across the pad, pad 30 would not extend continuously around the mandrel or the tool as recited in claims 1 and 6, respectively. 9 Appeal2014-004830 Application 12/288, 171 Rather than addressing the Appellants' arguments that Evans' use of multiple pads results in gaps between the pads, the Examiner finds that in Evans, "the groups or plurality of electrodes can be viewed to be evenly spaced around the mandrel." Ans. 7. The Examiner further finds that "the ultimate 'continuous' distribution of electrodes is found in ... Mann, who mounts the electrodes continuously all around the entire circumference (12, Fig. 1-3) of the mandrel with sufficient motivation." Id. As for Appellants' arguments regarding Mann, the Examiner finds that "the difference between the two concepts [guard electrode and pad] pale[ s] into insignificance when examined more closely." Id. at 8. The Examiner finds the circumferential pad recited in claims 1 and 6 is "clearly found in Mann (Fig. 1, 2, and 3), with . . . the suggestion of Evans [at col. 3, 11. 1-5, "the pad or body acting as the guard electrode"] as one of ordinary skill that the pad and body [mandrel] can be regarded as equivalent." Id. at 9-10. In the Reply Brief 12, Appellants urge that the "Examiner errs in viewing a guard electrode and pad as being one and the same." Reply 3. Appellants (id.) urge that "Evans [col. 3, 11. 1-5] merely demonstrates that a pad may be configured to act as a guard. Similarly, Mann [p. 8] shows that a mandrel may be configured to act as a guard electrode." Appellants (id.) urge that "[t]he existence of a pad configured to function as a guard electrode does not make the term 'guard electrode' synonymous with 'pad."' Although the Examiner relies on Evans' description of Gianzero at col. 2, 11. 17-30, for a prior art circumferential pad extending around a mandrel, the Examiner does not address Appellants' arguments that Gianzero does not 12 Reply Brief filed on March 11, 2014 ("Reply"). 10 Appeal2014-004830 Application 12/288, 171 disclose a circumferential pad as recited in claims 1 and 6. Ans. 10. Rather, the Examiner (id.) replies that "the Gianzero reference ... is simply cited for the rejection of claim 5 to show that the pad to the length of the electrodes, being at least 50: 1 pad-electrode ratio, is found in the prior art." On this record, the Examiner has not demonstrated, by a preponderance of the evidence, that the specific teachings of Evans and Mann relied upon by the Examiner would have suggested "a circumferential pad disposed upon [a] ... mandrel ... extending continuously around the mandrel" as recited in claim 1 or "a circumferential pad that extends continuously around ... [a measurement] tool" as recited in claim 6. As indicated supra, the Examiner finds that the Evans disclosure (col. 2, 11. 10-30) teaches a "prior art" circumferential pad extending around the mandrel recited in claims 1 and 6. Ans. 2-3. However, as urged by Appellants, neither Evans, Mann's Figures 1-3, nor Gianzero discloses a "circumferential pad" extending continuously around a mandrel or tool as recited in claims 1 and 6, respectively. App. Br. 11, 12, 15. Evans discloses four pads mounted on a mandrel. Id. at 11. Mann's guard electrode, as shown in Mann Figures 1-3 does not comprise any pads. Id. at 12, and 13; Reply 3. Gianzero discloses a pad that would not extend continuously around mandrel or tool. App. Br. 15. The Examiner has not directed our attention to any disclosure in Evans or in Mann indicating that a person having ordinary skill in the art would have regarded a "circumferential pad" as being a mandrel or a measured tool. Nor has the Examiner directed our attention to any disclosure in Evans, Mann, or Gianzero that would have led that person to use "a circumferential pad ... continuously extending around the mandrel" or "a circumference pad that extends continuously around ... [a measurement] tool" as recited in claim 6. 11 Appeal2014-004830 Application 12/288, 171 Accordingly, we find that Appellants have shown reversible error in the Examiner's determination that the above teachings of Evans and Mann would have prompted a person having ordinary skill in the art to arrive at the subject matter recited in the claims on appeal within the meaning of 35 U.S.C. § 103(a). Rejection 1 is reversed. Rejections 2 through 4, Obviousness over the collective teachings of Evans and Mann and the other cited prior art Claims 4, 5, and 9 depend from claim 1, and claims 8 and 11 depend from claim 6. The additional prior art references used in rejecting dependent claims 4, 5, 8, 9, and 11 in Rejections 2 through 4 were not relied upon by the Examiner to remedy the deficiencies of Evans and Mann, discussed supra. Accordingly, based on the same reasons set forth above, Rejections 2 through 4 are also reversed. NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b) Claims 1 and 6 Claims 1 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the disclosure of Mann. Mann teaches a "method and an apparatus for logging boreholes which can produce a visual representation of a borehole wall," which are useful, for example, for "determining the angle and azimuth of the dip of geographical strata traversed by the borehole." Mann, 2, 11. 19-24. According to Mann, the method comprises [a] running a logging sonde along a borehole containing a conductive fluid, [b] scanning a substantial portion of the area of the 12 Appeal2014-004830 Application 12/288, 171 borehole wall past which the sonde moves by means of one or more narrow focused current beams emitted from the logging sonde ... and [ c] recording the variations in the intensity of the current caused by variations in the resistivity of the strata past which the sonde travels, in the form of a visual representation of the borehole wall. Id. at 2, 11. 25-34 (emphasis and bracketed labels added). Mann teaches that the "substantial proportion of the area of the borehole wall [scanned in step b] should preferably be at least one third, especially at least two thirds, of the total area of the borehole wall past which the sonde moves and it may of course be the whole wall." Id. at 3, 11. 4-7 (emphasis added). Mann further teaches that the "current measurements from the beamed current electrodes ... may be recorded or displayed by various means." Id. at 6, 11. 6-7. Mann step b meets process step (a) of "using a measurement tool to inject measurement current into said borehole wall" recited in claim 6. Because Mann step c measures variation in the current intensity of the beamed current electrodes caused by the variation of the resistivity in the borehole walls, Mann step c meets process step (b) of "taking resistivity measurements at a plurality of measurement electrodes" recited in claim 6. As illustrated in Mann's Figures 1 and 2, supra, Mann teaches that the sonde 10 comprises potential guard electrode 11 in the form of a hollow right circular cylinder with twenty beamed current electrodes 12 attached to electrode 11. Id. at 8, 11. 25-29. Mann guard electrode 11 corresponds to the "mandrel" or "tool" recited in claims 1 and 6, respectively. Beamed current electrodes 12 are spaced around the outer surface of guard electrode 11 in a plane perpendicular to the axis of the guard electrode 11. Id. at 3, 11. 22-25, Figures 1 and 2. As illustrated in Mann's Figure 2, the twenty beamed current 13 Appeal2014-004830 Application 12/288, 171 electrodes 12 are evenly spaced around the circumference of electrode 11. The distance between adjacent electrodes 12 is less than the width of the electrodes. 13 The evenly spaced beamed current electrodes meet the structural limitations of being "evenly spaced ... " as recited in claim 1 and "being evenly spaced apart by a distance that is less than the width of each of said measurement electrodes" as recited in claim 6. Moreover, because the Mann beamed current electrodes 12 are spaced continuously around guard electrode 11, and because, as discussed supra, Mann teaches that the substantial portion of the area of the borehole wall scanned by the beamed current electrodes can be the "whole wall," the Mann Figures 1 and 2 logging sonde satisfies the limitation of having "full circumferential resolution" as recited in claim 6. In Mann's Figures 1 and 2, the beamed current electrodes are not arranged circumferentially around "a circumferential pad" that extends continuously around a mandrel or tool, e.g., Mann guard electrode 11, as recited in claims 1 and 6. However, Mann teaches that in an alternative embodiment to the one illustrated in Figures 1 and 2, the "logging electrodes [can be] supported by pads against the borehole wall by means of springs, the electrodes being 13 Mann teaches that "[ m Jost suitably the beamed current electrodes are square or circular in cross-section, the diagonal or diameter being 0.3 inch or less." Mann, 4, 11. 7-9. Mann teaches that "in the case of a sonde in the form of a right circular cylinder of 3" diameter having beamed current electrodes 0.3" across in a horizontal direction, the number of beam current electrodes should be preferably be at least 10." Id. at 11. 18-21. In Mann Figure 2, there are twenty beamed current electrodes. When sonde 10 in Mann Figure 2 has a diameter of 3" and each of the twenty beamed current electrodes is 0.3" across in the horizontal direction, the distance between adjacent electrodes is 0.16" (i.e., [(3 x rr) - (20 x 0.3)]/21). The distance of 0.16" between adjacent electrodes is smaller than the 0.3" width of the electrode, as required in claim 6. 14 Appeal2014-004830 Application 12/288, 171 approximately in the same plane perpendicular to the axis of the borehole." Id. at lOa, 11. 10-12. As illustrated in Mann's Figure 2, beamed current electrodes 12 are evenly spaced around the outer surface of the guard electrode 11 in a plane perpendicular to the axis of guard electrode 11. Given Mann's teachings, a person having ordinary skill in the art would have recognized that when the Mann beamed current electrodes 12 are supported by pads, the beamed current electrodes 12 are arranged on the circumference of the pads, where the pads are continuously arranged around the entire circumference of the guard electrode 11. Appellants urge Mann's disclosure (at lOa, 11. 10-12) of using "plural 'pads' indicates the conventional, well-known use of multiple pads." App. Br. 13. Appellants urge that "a circumferential pad extending around the mandrel would not be an obvious variant of Mann." Id. However, notwithstanding Appellants' arguments, Mann teaches that "[ e Jach electrodes may be supported in a separate pad or several may be supported in the same pad." Mann, 1 Oa, 11. 15-16 (emphasis added). This disclosure includes or suggestive of, not only several electrodes being supported on more than one pad, but all of the electrodes being supported on a single pad. In view of Mann's teachings, a person having ordinary skill in the art would have recognized that when the Mann beamed current electrodes 12 are supported by a single pad, the beamed current electrodes 12 would be arranged on the circumference of the single pad, where that pad extends continuously around the entire circumference of the guard electrode 11. Accordingly, in view of the teachings in Mann, it would have been obvious for a person having ordinary skill in the art, to make a sonde 15 Appeal2014-004830 Application 12/288, 171 comprising guard electrode 11 as shown in Figure 1 of Mann with twenty beamed current electrodes 12 supported on the circumference of a single pad that extends continuously around guard electrode 11, such that the beamed current electrodes are spaced around the entire guard electrode as taught by Mann. It would have been further obvious for that person to use the resulting sonde in the apparatus and method taught by Mann. That person would have had a reasonable expectation of successfully obtaining an apparatus and practicing a method for logging boreholes that produce a visual representation of a borehole wall as taught by Mann. Claims 2-5 and 7-12 We have entered a new ground of rejection for claims 1 and 6. We leave it to the Examiner and Appellants to consider the patentability of dependent claims 2-5 and 7-12, in light of our findings and conclusions above, with or without any additional prior art. We neither express nor imply any opinion regarding the patentability of the dependent claims. DECISION We REVERSE the rejections of claims 1-12 under 35 U.S.C. § 103(a). We enter a NEW GROUND OF REJECTION for claims 1 and 6 under 35 U.S.C. § 103(a) over Mann. Section 4 l.50(b) provides that"[ a] new ground of rejection ... shall not be considered final for judicial review." Section 4 l .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 ground of rejection to 16 Appeal2014-004830 Application 12/288, 171 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 .... (2) Request rehearing. 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. § l .136(a)(l )(iv). REVERSED 37 C.F.R. § 41.50(b) 17 Copy with citationCopy as parenthetical citation