Ex Parte Kaye

Board of Patent Appeals and Interferences

Jan 13, 2010

10459764 (B.P.A.I. Jan. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER KAYE
____________

Appeal 2009-006050
Application 10/459,764
Technology Center 3700
____________

Decided: January 13, 2010
____________

Before: WILLIAM F. PATE III, LINDA E. HORNER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Christopher Kaye (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 24-46. Claims 1-23 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

THE INVENTION
Appellant’s claimed invention is an interactive storybook that requires
the reader to find and solve hidden clues to locate additional parts in order to
complete the story. Spec. 1, para. 0001. Claim 24, reproduced below, is
representative of the subject matter on appeal.
24. An interactive storybook, comprising:
a front cover and a back cover;
a binder disposed between said front cover and said back
cover, said binder interconnecting said front cover and said
back cover;
at least one exposed story part comprising a plurality of
pages disposed between said front cover and said back cover,
said pages being secured to said front and said back cover by
said binder, said exposed story part being part of a storyline;
at least one compartment disposed in at least one of said
front cover and said back cover, said compartment having a
length, width and depth, said compartment having a cover for
concealing contents of said compartment;
at least one clue disposed within said storybook, said clue
providing information to direct a reader toward a hidden story
part location based upon information provided in said exposed
story part; and
at least one hidden story part disposed within a hidden
story part location, said hidden story part being part of a
storyline.

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THE EVIDENCE
The Examiner relies upon the following evidence:
Weston
Polick
US 6,682,074 B2
US 6,779,814 B2
Jan. 27, 2004
Aug. 24, 2004

THE REJECTIONS AND OBJECTION
Appellant seeks review of the following rejections by the Examiner:
1. Objection under 35 U.S.C. § 132(a) to the amendment filed October
31, 2006, as introducing new matter into the disclosure, and
accompanying rejection of claims 24-46 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Rejection of claims 24-30, 32, 33, 35-41, 44, and 45 under 35 U.S.C.
§ 102(e) as anticipated by Polick.
3. Rejection of claims 31, 34, 42, 43, and 46 under 35 U.S.C. § 103(a) as
unpatentable over Polick and Weston.

§ 112 AND NEW MATTER ISSUES
Appellant submitted an amended drawing to add reference numerals
(42 and 52) to label elements that existed in the originally-filed drawing.1
Appellant also submitted an amendment to paragraph 0017 of the
Specification to add: “A binder 52 is disposed between and interconnects the
front cover 20 and back cover 30. Additionally, the binder 52 secures the
pages 40 together at their margins 42.”
The Examiner accepted the amended drawing, but objected to the
Appellant’s amendment to the Specification under 35 U.S.C. § 132(a) as

1 Amendment filed October 31, 2006.
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new matter that is not supported by the original disclosure. Ans. 3; see also
Office Action dated December 6, 2006 at 2-3. In conjunction with this
objection, the Examiner rejected claims 24-46 as failing to comply with the
written description requirement. Ans. 4-5.2
Appellant argues claims 24-46 as a group. App. Br. 9-19. As such,
we select claim 24 as the representative claim, and claims 25-46 stand or fall
with claim 24. 37 C.F.R. § 41.37(c)(1)(vii) (2009). Appellant argues that
the original specification and drawings provide an adequate written
description, so that the amendment to the Specification is not new matter.
The issues before us are:
Has Appellant shown the Examiner erred in finding that the
originally-filed Specification does not provide support for the same binder
interconnecting the front and back covers of the interactive storybook, and
securing the pages of the exposed story part to the front and back covers of
the interactive storybook, as claimed?
Has Appellant shown the Examiner erred in finding that the
originally-filed Specification does not provide support for the same binder
interconnecting the front and back covers of the interactive storybook, and
securing the pages of the exposed story part together at their margins, as
added by amendment to paragraph 0017 of the Specification?

2 Ordinarily an objection is petitionable, and a rejection is appealable to the
Board. When the issue of new matter presented is the subject of both an
objection and a rejection, then the issue is appealable. Manual of Patent
Examining Procedure § 2163.06, II. Review of New Matter Objections
And/Or Rejections (8th ed., Rev. 8, July 2008). See also MPEP § 608.04(c)
(8th ed., Rev. 8, July 2008); 35 U.S.C. § 134(a); and 37 C.F.R.
§ 1.181(a)(1).
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FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Appellant’s Specification3 does not explicitly describe how the
same binder interconnects the front and back covers of the
interactive storybook and secures the pages of the exposed story
part to the front and back covers of the interactive storybook.
Appellant’s Specification also does not explicitly describe how the
same binder interconnects the front and back covers of the
interactive storybook and secures the pages of the exposed story
part to each other at their margins. Spec. passim.
2. Regarding the exposed story part, Appellant’s Specification
describes the interactive storybook as comprised of “a front cover
and back cover with a plurality of pages disposed therebetween
comprising at least one exposed story part.” Spec. 2, para. 0006.
Appellant’s Specification describes the exposed story part as “in a
traditional location.” Spec. 3-4, para. 0011. Appellant’s
Specification also describes Figure 1 as showing “the storybook 10
with front cover 20 opened to reveal a plurality of pages 40
comprising an exposed story part 50, disposed between front cover
20 and back cover 30.” Spec. 5, para. 0017.

3 References to Appellant’s Specification refer to Specification as originally
filed on June 11, 2003, unless otherwise noted.
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3. Figure 1 of Appellant’s Specification depicts storybook 10 opened
so that front cover 20 is on the left-hand side of the figure, adjacent
back cover 30, which is on the right-hand side of the figure. A
narrow strip (later identified by amendment as binder 52) lies over
the gap between the front cover 20 and the back cover 30. Fig. 1.
Plurality of pages 40 of exposed story part 50 are depicted on top
of back cover 30 with the left hand edge of pages 40 aligned with
the left-hand edge of back cover 30 where it meets front cover 20
and atop the narrow strip. Id. Pages 40 have a line spaced slightly
in from, and parallel to, their left-hand edge (later identified by
amendment as margin 42). Id.

PRINCIPLES OF LAW
The purpose of the written description requirement is to
prevent an applicant from later asserting that he invented that
which he did not; the applicant for a patent is therefore required
‘to recount his invention in such detail that his future claims can
be determined to be encompassed within his original creation.’
Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir.
2003) (citing Vas Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir.
1991). While there is no in haec verba requirement, newly-added claim
limitations must be supported in the specification through express, implicit,
or inherent disclosure. The fundamental factual inquiry is whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, applicant was in possession of the invention as
now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64. “[T]he written
description requirement is satisfied by the patentee’s disclosure of ‘such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
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fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). When an explicit
limitation in a claim is not present in the written description it must be
shown that a person of ordinary skill would have understood that the
description requires that limitation. Hyatt v. Boone, 146 F.3d 1348, 1353
(Fed. Cir. 1998). It is not enough to satisfy the written description
requirement that the claimed subject matter would have been obvious to a
person of ordinary skill in view of the written description. See ICU
Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1377 (Fed. Cir.
2009); see also Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d
1559, 1566–67 (Fed. Cir. 1997) (explaining that “an applicant complies with
the written description requirement by describing the invention, with all its
claimed limitations, not that which makes it obvious” (internal quotation
marks omitted)).

ANALYSIS
Objection to Specification for new matter and rejection of claims 24-46
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirements
Independent claim 24 contains the limitation that the same binder
must interconnect the front and back covers of the interactive storybook, and
must secure the pages of the exposed story part to the front and back covers
of the interactive storybook. The Examiner found that the originally-filed
Specification, which includes the drawings, do not support this second
limitation because the Specification does not make clear how the binder
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secures the pages of the exposed story part to the front and back covers of
the interactive storybook. See Ans. 4-5, 10-11.
Appellant’s originally-filed Specification4 does not explicitly describe
how the same binder interconnects the front and back covers of the
interactive storybook and secures the pages of the exposed story part to the
front and back covers of the interactive storybook. (Fact 1). Appellant’s
Specification describes that the pages of the exposed story part are in a
“traditional location,” and disposed between the front and back covers of the
interactive storybook. (Fact 2). Thus, the Specification describes where the
pages of the exposed story part are located, but does not describe how the
same binder that interconnects the front and back covers of the interactive
storybook also secures the pages of the exposed story part to the front and
back covers of the interactive storybook.
Appellant’s Figure 1 depicts the interactive storybook opened so that
the front cover is on the left-hand side and the back cover is on the right-
hand side, with a narrow strip (identified by amendment as the binder) lying
across the gap between the covers. (Fact 3). The pages of the exposed story
part are depicted on top of the back cover with the left-hand edge of the
pages aligned with the left-hand edge of the back cover and on top of the
binder. (Fact 3). The pages of the exposed story part are depicted with a
line spaced slightly in from, and parallel to, the left-hand edge of the pages
(identified by amendment as margin 42). (Fact 3). Even if we were to find
that the unidentified narrow strip of Figure 1 was a binder for
interconnecting the front cover and back cover, the figure does not depict

4 References to Appellant’s Specification refer to Specification as originally
filed on June 11, 2003, unless otherwise noted.
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how that same binder secures the pages of the exposed story part to the front
and back covers of the interactive storybook.
While the Specification shows where the pages of the exposed story
part are located, the Specification does not show how the same binder
interconnects the front and back covers of the interactive storybook and
secures the pages of the exposed story part to the front and back covers of
the interactive storybook. We agree with the Examiner that the pages of the
exposed story part rest on the binder, but nothing in the figures indicates
how the pages are secured to the front and back covers of the interactive
story book. Ans. 10-11. We find that the Specification does not convey
with reasonably clarity to a person of ordinary skill in the art that Appellant
possessed the invention as now claimed. Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (“The disclosure must allow one
skilled in the art to visualize or recognize the identity of the subject matter
purportedly described.”). We also find that the originally-filed Specification
does not convey with reasonable clarity to a person of ordinary skill in the
art that Appellant possessed the subject matter added to the Specification by
later amendment.
Appellant contends that it would be obvious to a person of ordinary
skill in the art that the pages “should and would be secured to the front and
back cover.” App. Br. 10. It is not enough to satisfy the written description
requirement that the claimed subject matter would have been obvious to a
person of ordinary skill in view of the written description. See ICU Medical,
Inc. 558 F.3d at 1377; see also Regents of the Univ. of Cal., 119 F.3d at
1566–67.
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Appellant has failed to demonstrate the Examiner erred in the
rejection of claim 24 as failing to meet the written description requirement.
Claims 25-36 contain the same unsupported claim limitation by virtue of
their dependency from claim 24. Independent claim 37 and its dependent
claims 38-43, and independent claim 44 and its dependent claims 45 and 46,
also contain the same unsupported claim limitation as claim 24 and were not
separately argued and thus fall with claim 24. 37 C.F.R. § 41.37(c)(1)(vii)
(2009).
Regarding the objection, Appellant seeks to add the language: “A
binder 52 is disposed between and interconnects the front cover 20 and back
cover 30. Additionally, the binder 52 secures the pages 40 together at their
margins 42.” The language of claim 24 differs from the amended language
in the Specification in that claim 24 requires the binder to secure the pages
of the exposed story part to the front and back covers of the interactive
storybook, while the amendment instead requires the binder to secure the
pages “together at their margins.” Thus, even if we were to find that the
amendment to the Specification were not new matter, this amendment would
not provide support for the subject matter of claim 24.
Nonetheless, we find that the proposed amendment to the
Specification contains new matter. Appellant’s originally-filed Specification
does not explicitly describe how the same binder interconnects the front and
back covers of the interactive storybook and secures the pages of the
exposed story part together at their margins. (Fact 1). Appellant’s
Specification describes that the pages of the exposed story part are in a
“traditional location,” and disposed between the front and back covers of the
interactive storybook. (Fact 2). Thus, the Specification describes where the
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pages of the exposed story part are located, but does not describe how the
same binder that interconnects the front and back covers of the interactive
storybook also secures the pages of the exposed story part together at their
margins.
Appellant’s Figure 1 depicts the interactive storybook opened so that
the front cover is on the left-hand side and the back cover is on the right-
hand side, with a narrow strip (identified by amendment as the binder) lying
across the gap between the covers. (Fact 3). The pages of the exposed story
part are depicted on top of the back cover with the left-hand edge of the
pages aligned with the left-hand edge of the back cover and on top of the
binder. (Fact 3). The pages of the exposed story part are depicted with a
line spaced slightly in from, and parallel to, the left-hand edge of the pages
(identified by amendment as margin 42). (Fact 3). Even if we were to find
that the unidentified narrow strip of Figure 1 was a binder for
interconnecting the front cover and back cover, the figure does not depict
how that same binder secures the pages of the exposed story part together at
their margin. Thus, the amendment to paragraph 17 is objectionable as new
matter.

§ 102/103 ISSUES
Appellant contends that claims 24-30, 32, 33, 35-41, 44, and 45 are
not anticipated by Polick, and claims 31, 34, 42, 43, and 46 are not
unpatentable over Polick and Watson, because Polick does not disclose the
claimed: front cover, one or more storage compartments, location of the
binder, story part that requires a reader to solve a clue that directs the reader
to a hidden story part location, and “story.” App. Br. 21-25. Appellant
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argues claims 24-30, 32, 33, 35-41, 44, and 45 as a group. App. Br. 21-25.
We select claim 24 as the representative claim, and claims 25-30, 32, 33, 35-
41, 44, and 45 stand or fall with claim 24. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues claims 31, 34, 42, 43, and 46 as a group. App. Br. 28-29.
We select claim 31 as the representative claim, and claims 34, 42, 43, and 46
stand or fall with claim 31. 37 C.F.R. § 41.37(c)(1)(vii). Appellant argues
generally that the Examiner’s analysis is “conclusory” and also relies on the
arguments presented against the anticipation rejection of claim 24. App.
Br. 29.
The issues before us are:
Has Appellant shown the Examiner erred in finding that Polick
discloses all of the elements recited in claim 24?
Has Appellant shown the Examiner failed to provide an adequate
articulation of a reason to combine Polick and Watson?

ADDITIONAL FINDINGS OF FACT
4. Appellant’s Specification defines a “story part” as “a complete
part, a chapter, multiple chapters, a complete story, multiple stories
or any fraction or combination thereof.” Spec. 5, para. 0016.
5. Appellant’s Specification does not provide a lexicographic
definition of the term “story” as used in the claims. Spec. passim
6. Polick discloses a “combination interactive book and storage
device” having one or more lockable compartments. Polick, col. 1,
ll. 6-8, 18-21.
7. Polick discloses an embodiment of the combination book and
storage device 3 including a container 5 with a primary cover 15
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and a secondary cover 10, and a book 25. Polick, col. 4, ll. 41-45;
fig. 3A.
8. Polick discloses that primary cover 15 and secondary cover 10 are
each hingeably attached to container 5. Polick, col. 3, ll. 24-26;
figs. 3A, 3B.
9. Book 25 is shown with a coil type fastener along the left edge for
holding the pages of the book together that their margins between
the book’s front and back covers. Polick, fig. 3A. The coil type
fastener is located between the front cover of book 25 and the
container 5. Polick, fig. 3A.
10. Book 25 is mounted to the top of secondary container cover 10
either: (1) permanently, such as adhering the back cover of book
25 to the top of secondary container cover 10, (2) by detachable
means, such as Velcro® hook and loop fasteners or snaps joining
the back cover of the book 25 to the top of secondary container
cover 10, or (3) by sliding the back cover of book 25 into a pocket
formed on top of secondary container cover 10. Polick, col. 4,
ll. 49-56; fig. 3A.
11. Book 25 can function as an instruction manual for a game, which
can include puzzles in the form of a “spy story” in which solving
the puzzles also solves the spy mystery. Polick, col. 1, ll. 8-11;
col. 8, ll. 20-23.
12. Book 25 can provide clues in various forms to allow the game
participant the opportunity to discover the combination to the
locking mechanism 100, opening the primary cover 15, releasing
the secondary cover 10, and permitting entry to the secure storage
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areas 50 and 51, containing manipulatives 55. Polick, col. 8, ll. 14-
20. The manipulatives 55 may take various forms (e.g. game
pieces, instruction manuals), but preferably “support the theme of
the book.” Polick, col. 8, ll. 23-33; fig. 3B.
13. Book 25 remains accessible even when the storage device is
locked. Polick, col. 1, ll. 57-59.

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting, In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998).

ANALYSIS
Rejection of claims 24-30, 32, 33, 35-41, 44, and 45 under 35 U.S.C.
§ 102(e) as anticipated by Polick
Polick discloses an interactive storybook and storage device (Facts 6,
11). Polick’s interactive storybook includes a front cover (the front cover of
book 25) and a back cover (container 5). (Fact 9).
Polick’s interactive storybook has a binder (coil type fastener of book
25) disposed between the front cover (the front cover of book 25) and the
back cover (container 5). (Fact 9). The binder interconnects, albeit
indirectly, the front cover (front cover of book 25) to the back cover
(container 5). Specifically, the front cover of book 25 is connected by the
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coil type fastener to the back cover of book 25, which is connected to
secondary container cover 10, which is hingeably attached to the claimed
back cover (container 5). (Facts 7-10). Thus the front cover (front cover of
book 25) is interconnected by the binder (coil type fastener of book 25) to
the back cover (container 5).
Polick’s interactive book and storage device includes a book 25 which
may be a “spy story” with manipulatives in a locked compartment which
support the theme of the book. (Facts 6, 11, 12). Appellant argues that
Polick does not disclose a “story.” App. Br. 25. Appellant’s Specification
does not define “story,” but defines a “story part” as any fraction of a story.
(Facts 4, 5). Appellant argues that a common definition of a story is a
“usually fictional prose or verse narrative intended to interest or amuse the
hearer or reader; a tale.” App. Br. 25. Reading the claim in light of the
Specification, a “story part” is any portion of a tale, such as fictional prose
or a verse narrative. We find that book 25 of Polick contains a story part as
defined above because Polick’s “spy story” as a themed spy mystery that
corresponds to manipulatives is a portion of a tale.
Polick’s book 25 remains accessible even when the storage device is
locked. (Fact 13). Thus, Polick’s book 25 is the claimed “exposed story
part.” Polick’s book 25 contains pages which are located between the front
cover of book 25 and the container 5. (Fact 9). Polick’s coil type fastener is
secured to the back cover of book 25 which is attached to secondary
container cover 10, which is hingeably secured to container 5. (Facts 7-10).
Thus, Polick discloses an exposed story part (book 25) with a plurality of
pages disposed between the front cover (front cover of book 25) and the
back cover (container 5), and the pages of the exposed story part (book 25)
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are secured to the front cover (front cover of book 25) and the back cover
(container 5), by a binder (the coil type fastener), and the exposed story part
(book 25) is part of a storyline (theme).
Polick’s interactive book and storage device contains at least one
compartment (e.g. secure storage area 50) in the back cover (container 5).
(Fact 12). This compartment (secure storage area 50) may contain game
pieces, so that the compartment must have a length, width, and depth. (Fact
12). The compartment (secure storage area 50) has a cover (primary
container cover 15) for concealing contents of the compartment. (Fact 12).
Polick discloses book 25 may contain clues to allow game participants
to discover the combination to the locking mechanism, and access a secure
storage area. (Fact 12). The secure storage area can contain a manipulative
that may take the form of an instruction manual that follows the theme (e.g.
spy story) of book 25 (Fact 11, 12). Thus, Polick discloses at least one clue
disposed within an exposed storybook (book 25), with the clue providing
information to direct the reader toward a hidden story part (manipulative 55)
location (secure compartment 50) based on information in the exposed story
part. Further, the at least one hidden story part (manipulative 55) disposed
within a hidden story part location (secure storage area 50) is part of the
story line (e.g. “spy story” theme) and thus satisfies the claimed “story part”
as defined above. As such, we find that Polick discloses each and every
limitation of the interactive storybook of claim 24.
We conclude that the Examiner did not err in rejecting claim 24 under
35 U.S.C. § 102(e) as being anticipated by Polick. Claims 25-30, 32, 33, 35-
41, 44, and 45 fall with claim 24. Because our finding of anticipation is
based on findings of fact and reasoning that differs from the rejection
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articulated by the Examiner, we designate our affirmance of the anticipation
rejection as a new ground of rejection under 37 C.F.R. § 41.50(b).

Rejection of claims 31, 34, 42, 43, and 46 under 35 U.S.C. § 103(a) as
unpatentable over Polick and Weston
Claims 31 depends indirectly from claim 24, and adds the limitation
that the at least one hidden story part is encrypted.
The Examiner found that Polick does not disclose encrypting the
hidden story part, but that Weston discloses such encryption. Ans. 8-9.
Appellant repeats the arguments used against the anticipation rejection of
Polick. For the reasons outlined in the analysis of the rejection of claim 24
as anticipated by Polick, supra, those arguments are also unconvincing
against claim 31. Appellant also argues, without support, that the
Examiner’s obviousness analysis is conclusory. App. Br. 29. The Examiner
concluded it would have been obvious to encrypt Polick’s hidden story part,
as taught by Weston, in order to make the game more fun. Ans. 9.
Appellant’s conclusory argument, unsupported by any explanation why the
Examiner’s reason to modify is incorrect, is unconvincing. Claims 34, 42,
43, and 46 fall with claim 31. Because our findings as to the scope and
content of Polick are based on findings of facts and reasoning that differ
from the rejection articulated by the Examiner, we also designate this
affirmance of the obviousness rejection as a new ground of rejection under
37 C.F.R. § 41.50(b).

CONCLUSIONS
Appellant has failed to show the Examiner erred in finding that the
Specification does not provide support for the same binder used to secure the
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front and back covers of the interactive storybook for also securing the pages
of the exposed story part to the front and back covers of the interactive
storybook, as claimed.
Appellant has failed to show the Examiner erred in finding that the
Specification does not provide support for the same binder used to secure the
front and back covers of the interactive storybook and for also securing the
pages of the exposed story part together along their margins, as amended in
the Specification.
Appellant has failed to demonstrate that the Examiner erred in finding
that Polick discloses all of the elements of claim 24.
Appellant has failed to demonstrate that the Examiner’s articulation of
a reason to combine Polick and Watson was inadequate.

DECISION
We AFFIRM the Examiner’s decision to reject claims 24-46 as failing
to comply with the written description requirements under 35 U.S.C. § 112,
and we AFFIRM the corresponding new matter objection to the amendment
to the Specification.
We AFFIRM the Examiner’s decision to reject claims 24-30, 32, 33,
35-41, 44, and 45 under 35 U.S.C. § 102(e) as anticipated by Polick.
We AFFIRM the Examiner’s decision to reject claims 31, 34, 42, 43,
and 46 under 35 U.S.C. § 103(a) as unpatentable over Polick and Weston.
Because our reasoning for affirming the art rejections differs from the
reasoning articulated by the Examiner, we designate our affirmance of the
rejections under §§ 102(e) and 103(a) as NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
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Regarding the remaining 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.” 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.
No time period for taking any subsequent action in connection with
Appeal 2009-006050
Application 10/459,764

20
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED; 37 C.F.R. § 41.50(b)

mev

CHRISTOPHER D. KAYE
1195 DERBY APT 8
BIRMINGHAM MI 48009