Ex Parte KOOL

Board of Patent Appeals and Interferences

Jun 11, 2008

10604400 (B.P.A.I. Jun. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ERIC T. KOOL
__________

Appeal 2008-21131
Application 10/604,400
Technology Center 1600
__________

Decided: June 11, 2008
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composition containing a compound that has a fluorophore group and a
fluorescence quenching leaving group. The Examiner made two anticipation
rejections. We have jurisdiction under 35 U.S.C. § 6(b).

1 Heard May 20, 2008.
Appeal 2008-2113
Application 10/604,400

We affirm one of the rejections, and reverse the other.2 Because we
find that the reference from the affirmed rejection renders unpatentable
claims that the Examiner had not rejected, we also enter new grounds of
rejection.
STATEMENT OF THE CASE
The Specification discloses oligonucleotide compounds that
“contain[] a fluorophore[] and a 5' quenching leaving group. Upon ligation
with another molecule in intermolecular fashion, or with itself in
intramolecular fashion, the quenching leaving group is displaced, and the
fluorophore is no longer quenched. The change in fluorescent properties of
the molecule can be detected, providing a quantitative and qualitative assay
of ligation” (Spec. [0031]).
Claims 1-14 stand rejected and are on appeal (see Advisory Action 1
(March 13, 2007)).3 Claim 1, the only appealed independent claim, is
representative and reads as follows:
1. A composition comprising a fluorophore compound, the
fluorophore compound comprising a fluorophore group
and a fluorescence quenching leaving group.

2 In this decision we consider only those arguments actually made by
Appellant. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
3 Claim 15 stands objected to by the Examiner (Advisory Action 1 (March
13, 2007)). Appellant requests the Board to reverse this objection (see Br. 6,
22). However, claim objections are not appealable. See MPEP § 706.01
(“rejection” appealable to Board; “objection” of the type applied to claim 15
reviewed by way of petition to PTO Director). Thus, “the Board will not
hear or decide issues pertaining to objections and formal matters which are
not properly before the Board. These formal matters should not be
combined in appeals to the Board.” Id.
2
Appeal 2008-2113
Application 10/604,400

The Examiner applies the following documents in rejecting the
claims:
Livak, K.J. et al., Oligonucleotides with Fluorescent Dyes at Opposite
Ends Provide a Quenched Probe System Useful for Detecting PCR Product
and Nucleic Acid Hybridization, 4 PCR Methods and Applications 357-362
(June 1995).

Xu, Y. et al., Nonenzymatic autoligation in direct three-color
detection of RNA and DNA point mutations, 19 Nature Biotechnology 148-
152 (February 2001).

The following rejections are before us for review:
Claims 1-8, 10, 11, and 14 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Livak (Ans. 3-4).
Claims 1, 5-7, 9, and 12-14 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Xu (Ans. 4-5).
ANTICIPATION -- LIVAK
ISSUE
The Examiner cites Livak as disclosing “a nucleic acid probe
comprising a fluorophore FAM and a quencher TAMRA” (Ans. 4). The
Examiner contends that the probe’s TAMRA moiety, a rhodamine-
containing group, meets claim 1’s limitation that the quenching group must
also being a leaving group because “[i]n general, for every chemical bond
connecting two chemical groups there is somewhere a nucleophilic group,
which will attack it under proper chemical conditions” (id. at 6). The
Examiner further contends that the Specification’s general definition of
“leaving group” only “requires that the ‘leaving group’ leaves at some point
in time (in principle, in might be years later). Therefore, in absence of any
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particular chemical structure claimed this limitation reads on any fluorescent
dye with acceptor properties” (id.).
Appellant contends that in view of the definition and examples
provided in the Specification, the “the rhodamine quencher dye taught by
Livak is not a ‘leaving group’ as defined in the claimed invention” (see Br.
18).
Appellant states that “claims 1-8, 10, 11 and 14 on appeal stand or fall
together” (id. at 17). We select claim 1 as representative of the rejected
claims. See 37 C.F.R. § 41.37(c)(1)(vii). The issue with respect to this
rejection, therefore, is whether the Examiner erred in finding that Livak
meets all of the limitations recited in claim 1.
FINDINGS OF FACT (“FF”)
1. Claim 1 recites a composition that contains a fluorophore compound.
The fluorophore compound must have a fluorophore group and a
fluorescence quenching group. The fluorescence quenching group must be a
leaving group.
2. Livak discloses a probe for detecting the accumulation of
PCR-amplified nucleic acid sequences (Livak 357 (abstract)). Livak’s
probe “is an oligonucleotide with both a reporter fluorescent dye and a
quencher dye attached” (id.). When the probe sequence is amplified, the
5' → 3' nucleolytic activity of the Taq polymerase cleaves the probe
sequence, thereby separating the quenching group from the fluorescent
reporter dye, resulting in detectable fluorescence (id.; see also 358 (Figure
1)).
3. Livak’s probe consists of an oligonucleotide with the fluorescent
moiety 6-carboxyfluorescein (“6-FAM”) attached to the 5' end of the
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oligonucleotide, and the fluorescence quenching moiety
6-carboxytetramethylrhodamine succinimidyl ester (“TAMRA NHS ester”)
attached to the 3' end using a “3'-blocking phosphate” (see id. at 357-58).
4. Regarding leaving groups, the Specification states:
Examples of quenching leaving groups are shown in Figure 2
(note that in the figure they are attached to the 5' carbon of a
nucleoside, but they can be attached to any atom that is reactive
with a nucleophile. The leaving groups in the figure include the
sulfur and the three oxygen atoms attached to it, as well as the
carbon chain attached to sulfur. Leaving groups in general are
defined by (a) their ability to activate an atom (to which they
are attached) for attack by a nucleophile group and (b) to leave
(either simultaneously or subsequently) when the nucleophile
does attack.

(Spec. [0035].)4
5. The Specification states that one embodiment of the invention is “a
quencher labeled nucleic acid molecule” in which the “quenching group is
preferably covalently attached to the 5' hydroxyl group of the nucleic acid
molecule” (Spec. [0039]). The Specification states that, “[a]lternatively, the
3' hydroxyl can be attached to a quenching leaving group” (id. at [0041]).
PRINCIPLES OF LAW
It is well settled that “[t]o anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

4 The Appeal Brief repeatedly refers to this paragraph as paragraph [0037],
apparently referring to the numbering in the published application. See, e.g.,
Br. 15, 18). We will, however, refer to the paragraph numbering used in the
Specification present in the official electronic filewrapper.
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It is also well settled that “[t]here is nothing intrinsically wrong with
[defining something by what it does rather than what it is] in drafting patent
claims.” Id. at 1478 (quoting In re Swinehart, 439 F.2d 210, 212 (CCPA
1971)). However, as stated in Schreiber, 128 F.3d at 1478 (quoting
Swinehart, 439 F.2d at 213):
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

With respect to claim language, during examination, the PTO must
interpret terms in a claim using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
ANALYSIS
We agree with the Examiner that Livak’s probe meets all of the
limitations in claim 1. Livak’s probe has a fluorescent moiety, 6-FAM, and
a fluorescence quenching moiety, TAMRA (see FF 2, 3). Thus, Livak’s
probe meets the limitation of claim 1 requiring the compound to have a
fluorophore group and a fluorescence quenching group.
Moreover, Livak’s quenching moiety is attached to the 3'-end of the
oligonucleotide probe (FF 3). Appellant’s Specification discloses that, in
general, leaving groups are suitably attached to any atom that is reactive
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with a nucleophile (FF 4), and in particular, that the 3'-hydroxy group of an
oligonucleotide is a suitable location for a quenching leaving group (FF 5).
Thus, because claim 1 does not limit the leaving group to any
particular structure, or any particular reaction conditions or attacking
nucleophile, and because Livak’s TAMRA is attached to a position on an
oligonucleotide disclosed in the Specification as being susceptible to
nucleophilic attack, we also agree with the Examiner that it was reasonable
to conclude that Livak’s fluorescent quenching moiety is capable of
functioning as a leaving group.
When a reasonable basis exists for concluding that a prior art product
inherently meets a functional limitation recited in a product claim, Appellant
bears the burden of establishing non-anticipation. See In re Schreiber, 128
F.3d at 1478.
Appellant contends that because the Examiner interpreted the term
“fluorescence quenching leaving group” in a manner inconsistent with the
Specification, the Examiner interpreted that term too broadly (see Br. 14-
17). Specifically, Appellant contends that “even when guidance is not
provided in explicit definitional format, the specification may define claim
terms by implication such that the meaning may be found in or ascertained
by a reading of the patent documents” (id. at 13 (citing Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Vitronics Corp. v.
Conceptronic lnc., 90 F.3d 1576 (Fed. Cir. 1996); Novartis Pharms. Corp. v.
Abbott Labs., 375 F.3d 1328 (Fed. Cir. 2004)). Thus, Appellant reasons, the
Specification’s “descriptions and examples clearly imply that the
fluorescence quenching leaving group in the context of the instant
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application is not any fluorescence quenching group; rather, it is a group that
is both a quencher and a leaving group as a single entity” (Br. 16).
Appellant’s argument does not persuade us that the Examiner was
unreasonable in concluding that claim 1’s recitation “fluorescence
quenching leaving group” encompasses Livak’s quenching group.
Specifically, “while ‘the specification [should be used] to interpret the
meaning of a claim,’ courts must not ‘import[ ] limitations from the
specification into the claim.’ . . . [I]t is improper to ‘confin[e] the claims to
th[e] embodiments’ found in the specification . . . .” In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (quoting Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (citations omitted, bracketed text in
internal quotes in original); see also Sjolund v. Musland, 847 F.2d 1573,
1581 (Fed. Cir. 1988) (“[W]hile it is true that claims are to be interpreted in
light of the specification and with a view to ascertaining the invention, it
does not follow that limitations from the specification may be read into the
claims.”); In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004) (“[A]bsent claim
language carrying a narrow meaning, the PTO should only limit the claim
based on the specification . . . when [it] expressly disclaims the broader
definition.”).
Thus, even if claim 1 is interpreted as being limited to a compound
whose quencher and leaving group are a single entity, as Appellant urges,
claim 1 still does not limit that single entity to any particular chemical
moiety; nor does claim 1 place any limit on the reaction conditions or
attacking nucleophile that must cause the group to leave. Because claim 1
has essentially no limitation on the quenching group’s structure, or the
conditions that must cause the quenching group to leave, and because
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Livak’s TAMRA quencher is attached to a position on an oligonucleotide
disclosed in the Specification as being susceptible to nucleophilic attack (see
FF 3, 5), we agree with the Examiner that it was reasonable to conclude that
claim 1 encompasses Livak’s compound.
Appellant argues that Livak’s rhodamine quencher “is not a ‘leaving
group’ as defined in the claimed invention” because Livak’s quencher “does
not activate the atom (to which it is attached) for attack by a nucleophile
group” (Br. 18 (citing Specification [0035]). We are not persuaded by this
argument.
It is well settled that argument by counsel cannot take the place of
evidence. In re Cole, 326 F.2d 769, 773, (CCPA 1964); In re Geisler, 116
F.3d 1465, 1471 (Fed. Cir. 1997). Appellant has not provided, nor do we
see, any evidence showing that Livak’s TAMRA group would fail to
activate its attached atom for nucleophilic attack under the appropriate
conditions. Rather, given the fact that claim 1 encompasses groups that
leave under any reaction conditions, and given the TAMRA group’s
attachment at a location on an oligonucleotide disclosed in Appellant’s
Specification as being susceptible to nucleophilic attack (see FF 3, 5), we
agree with the Examiner that it was reasonable to conclude that Livak’s
quencher would be a leaving group given an appropriate set of conditions.
Appellant argues that it was not reasonable for the Examiner to
conclude that Livak’s quencher was a leaving group because it is Livak’s
reporter dye, rather than the quencher, that leaves the oligonucleotide when
enzymatic cleavage occurs, the quencher remaining attached to the probe
(Br. 18-19). Appellant argues that it was not reasonable for the Examiner to
conclude that any fluorescent quenching group would also inherently be a
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leaving group (id. at 18), given the disclosures of Livak, Moran,5 and
Bichenkova,6 which disclose nucleic acid detection with fluorescent labels
that do not act as leaving groups (id. at 16).
We are not persuaded by these arguments. Claim 1 does not limit the
fluorescence quenching leaving group to a moiety that leaves only under a
specific set of reaction conditions. Rather, claim 1 encompasses quencher
moieties that leave under any reaction conditions. Thus, while the
fluorescent moieties of Livak, Moran, and Bichenkova may remain attached
to oligonucleotides under the limited set of conditions disclosed in those
references, that fact does not demonstrate that Livak’s quencher moiety
would fail to leave the oligonucleotide molecule under any of the wide
variety of reaction conditions encompassed by claim 1.
In sum, for the reasons discussed above, we agree with the Examiner
that it was reasonable to find that Livak anticipates claim 1. Because
Appellant has failed to meet the burden of showing that the Examiner’s
reasonable finding of anticipation was erroneous, we affirm the Examiner’s
rejection of claim 1 as anticipated by Livak. Because claims 2-8, 10, 11, and
14 were not argued separately, they fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

5 Moran, N. et al., Detection of a single DNA base-pair mismatch using an
anthracene- tagged fluorescent probe, Chem. Commun., 2006, 5003-5005
(2006).
6 Bichenkova, E.V. et al., Detection of nucleic acids in situ: novel
oligonucleotide analogues for target-assembled DNA-mounted exciplexes,
5 Org. Biomol. Chem. 1039-1051 (2007).
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ANTICIPATION -- XU
ISSUE
Claims 1, 5-7, 9 and 12-14 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Xu (Ans. 4-5).
The Examiner contends that Xu anticipates claim 1 because it
discloses “a fluorophore compound consisting of two nucleic acid probe
pairs, where the 13 bp probe contains a FAM fluorophore and the 7 bp probe
contains either a ROX acceptor (= quencher) or a HEX acceptor
(= quencher)” (Ans. 4).
Appellant contends that “Xu does not teach or suggest a fluorescence
quenching leaving group for their 13-mer or 7-mer probe, let alone a
fluorophore compound as a single molecule comprising a fluorophore group
and a fluorescence quenching leaving group, as claimed in the instant
application” (Br. 20).
The issue with respect to this rejection, then, is whether the Examiner
erred in concluding that claim 1’s “fluorophore compound” encompasses
Xu’s probe pairs.
FINDINGS OF FACT
6. Xu discloses that adjacently hybridizing probes can become
nonenzymatically ligated (Xu 148). Because the ligation reaction depends
on specific hybridization, the presence of a ligated product can be used to
detect point mutations in nucleic acid sequences (id.).
7. In the diagnostic methods, Xu uses three distinct probes: (a) a
“universal probe” consisting of an oligosaccharide labeled with
5-carboxyfluorescein (FAM), which is used as the fluorescence resonance
energy transfer (FRET) donor; (b) a “WT” probe consisting of an
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oligosaccharide having a sequence complementary to the wild-type form of
the gene to be detected, the WT probe being labeled with
hexachlorofluorescein (HEX), a FRET acceptor; and (c) a “MUT” probe
consisting of an oligosaccharide having a sequence complementary to the
mutated form of the detected gene, the MUT probe being labeled with
rhodamine (ROX), a second FRET acceptor (Xu 150, especially Figure 3).
8. When hybridized with a target sequence, if either the WT or MUT
probe hybridizes adjacent to the universal probe and becomes ligated to it,
the label on the WT or MUT probe will quench the universal probe’s FAM
dye and fluoresce in its respective color (Xu 150).
ANALYSIS
We agree with Appellant that the Examiner erred in finding that Xu’s
probe compositions anticipate claim 1.
Claim 1 requires its composition to contain a fluorophore compound
that has a fluorophore group and a fluorescence quenching group. None of
Xu’s probes has both a fluorophore group and a fluorescence quenching
group. Rather, Xu’s probes are compounds that have either a fluorophore
group or a fluorescence quenching group (see FF 7-8).
Because Xu’s probes do not meet all of the limitations required of
claim 1’s fluorophore compound, we agree with Appellant that Xu does not
anticipate claim 1, or its dependent claims 5-7, 9, and 12-14.
The Examiner argues that because the Specification does not define
the term “fluorophore compound,” it is proper to interpret it as “either [a]
unimolecular or multimolecular entity” (Ans. 3). The Examiner urges that
this interpretation of the word “compound” is consistent with the
understanding of one skilled in the art because, “for example, ‘a protein’
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does not imply a single molecule, since a large proportion of proteins are
multimolecular. Further, the specification does not explicitly exclude the
possibility that the compound contains more than one molecule” (id. at 5).
We are not persuaded by this argument. While claim terms must be
given their broadest reasonable interpretation consistent with the
Specification, that interpretation must also be consistent with the
understanding of a person of ordinary skill in the art. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997). In the instant case, we do not agree with
the Examiner that a person of ordinary skill would interpret the term
“compound” in claim 1 to encompass Xu’s compositions having two
separate non-covalently linked probe molecules, as urged by the Examiner.
Therefore, because we agree with Appellant that Xu’s probes do not
meet all of the limitations required of claim 1’s fluorophore compound, we
reverse the Examiner’s anticipation rejection of claim 1, and its dependent
claims 5-7, 9, and 12-14.
NEW GROUND OF REJECTION -- ANTICIPATION
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection: Claim 12 is rejected under 35 U.S.C. § 102(b) as
being anticipated by Livak.
Claim 12 recites “[t]he composition of claim 1, wherein the
fluorophore compound further comprises a nucleophilic group.” The
Specification states:
In general, nucleophilic groups (contemplated in this Invention)
include phosphorothioate and phosphoroselenoate groups, thiol
and thiolate groups, hydroxy and oxyanion groups, amines,
hydroxylamines, hydrazines, hydrazides, phosphines, thioacids
and their conjugate bases, selenols and selenoates. These can be
attached to any molecule or object.
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(Spec. [0036] (emphasis added).)
As discussed above, we agree with the Examiner that the
oligonucleotide probes of Livak anticipate claim 1. Because the purines and
pyrimidines in Livak’s oligonucleotide probes contain amine groups, and
because amines are disclosed in Appellant’s specification as being suitable
nucleophiles, Livak also anticipates claim 12.
NEW GROUND OF REJECTION -- OBVIOUSNESS
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection: Claim 9 is rejected under 35 U.S.C. § 103(a)7 as
being obvious in view of Livak.
Claim 9 recites “[t]he composition of claim 6, wherein the quenching
leaving group is attached to the 5' hydroxyl group of the nucleic acid.”
Claim 6 recites “[t]he composition of claim 1, wherein the
fluorophore compound is a nucleic acid.”
Recently addressing the question of obviousness, the Supreme Court
reaffirmed that under the controlling inquiry, “the scope and content of the
prior art are to be determined; differences between the prior art and the
claims at issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved.” KSR Int' l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734

7 35 U.S.C. § 103(a) states:
A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains. Patentability shall not be negatived by
the manner in which the invention was made.
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(2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
18 (1966)).
Emphasizing a flexible approach to the obviousness inquiry, the
Supreme Court reasoned that the analysis under 35 U.S.C. § 103 “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 1741.
The Court further advised that “[a] person of ordinary skill is . . . a person of
ordinary creativity, not an automaton.” Id. at 1742.
As discussed above, we agree with the Examiner that Livak
anticipates claims 1 and 6. As also discussed above, Livak discloses
oligonucleotide probes having a fluorophore group at the 5' end of the
molecule and a fluorescence quenching leaving group at the 3' end of the
molecule (FF 3).
Livak therefore differs from claim 9 in that Livak’s fluorescence
quenching leaving group is attached to the 3' end of the oligonucleotide
rather than the 5' hydroxyl as recited in claim 9. However, Livak discloses
that, based on the results of their experiments, “oligonucleotides with
reporter and quencher dyes attached at opposite ends can be used as
homogeneous hybridization probes” (Livak 357 (abstract); see also Livak
362 (“The results presented here demonstrate that the simple addition of a
reporter dye to one end of an oligonucleotide and a quencher dye to the other
end generates a fluorogenic probe that can detect hybridization or PCR
amplification.”)).
Thus, one of ordinary skill in the art, being a person of ordinary
creativity and common sense, see KSR, 127 S. Ct. at 1742-43, and being
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advised by Livak of the usefulness of probes with reporter and quencher
dyes at opposite ends of the molecule, would have reasonably inferred from
Livak that probes having a quenching leaving group at the 5' hydroxyl end
and a reporter moiety at the 3' hydroxyl would be equivalently useful to the
exemplified probes for detecting hybridization or PCR amplification. That
is, in view of Livak’s general disclosure of the usefulness of probes with
reporter and quencher moieties at the molecules’ ends, one of ordinary skill
would have reasoned that a probe having the quencher and reporter moieties
at either end of the molecule would be useful for detecting hybridization or
PCR amplification.
Because a person of ordinary skill would therefore have recognized
the usefulness of probe molecules having a quenching leaving group at the 5'
hydroxyl position and a reporter dye at the 3' end, we find that the ordinary
artisan would have been prompted to prepare such a molecule. We therefore
conclude that claim 9 would have been obvious to a person of ordinary skill
at the time the invention was made.
SUMMARY
We affirm the Examiner’s rejection of claims 1-8, 10, 11, and 14
under 35 U.S.C. § 102(b) as being anticipated by Livak.
We reverse the Examiner’s rejection of claims 1, 5-7, 9, and 12-14
under 35 U.S.C. § 102(b) as being anticipated by Xu.
We enter a new ground of rejection of claim 12 under 35 U.S.C.
§ 102(b) as anticipated by Livak. See 37 C.F.R. § 41.50(b).
We enter a new ground of rejection of claim 9 under 35 U.S.C.
§ 103(a) as being obvious over Livak. See 37 C.F.R. § 41.50(b).

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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 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 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 . . . .

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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).

AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b)

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