Ex Parte LukasikDownload PDFPatent Trials and Appeals BoardMay 14, 201914898260 - (D) (P.T.A.B. May. 14, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/898,260 12/14/2015 22879 7590 05/16/2019 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Derek Lukasik 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. 83268938 8380 EXAMINER TORRENTE, RICHARDT ART UNIT PAPER NUMBER 2485 NOTIFICATION DATE DELIVERY MODE 05/16/2019 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEREK LUKASIK Appeal2018-007737 Application 14/898,260 Technology Center 2400 Before JAMESON LEE, MICHAEL R. ZECHER, and JUSTIN T. ARBES, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellant appeals the Examiner's Final Rejection of claims 1-9, 12, 13, and 16-19. App. Br. 2. 1 Claims 10, 11, 14, and 15 were cancelled. Id. We have jurisdiction under 35 U.S.C. § 6. We affirm-in-part and enter a new ground of rejection. 1 Our decision will make reference to Appellant's Appeal Brief ("App. Br.," filed March 12, 2018), Appellant's Reply Brief ("Reply Br.," filed July 11, 2018), the Examiner's Answer ("Ans.," mailed May 11, 2018), and the Final Action ("Final Act.," mailed October 12, 2017). Appeal2018-007737 Application 14/898,260 Appellant's Invention Appellant's field of invention generally relates to the encoding and transmission of video frames. Spec. ,r 1. According to Appellant, as frame size increases, the required computation time per frame also increases, and given the current trends for increasingly higher definition and larger frame sizes, the increased latency may be unacceptable for real-time interactivity. Id. ,r,r 8, 10. Appellant, therefore, discloses techniques for dividing the work for encoding each video frame among available hardware resources, which allows encoding to proceed in parallel and reduces the latency required to produce each frame. Id. ,r,r 12, 38. Illustrative Claim Claims 1, 9, and 13 are independent claims and these claims are directed to "[a] device," "[a] method," and [a] non-transitory computer- readable storage medium," respectively. App. Br. 16-19 (Claims Appendix). Claims 2-8 and 16-19 depend directly or indirectly from independent claim 1, and claim 12 depends directly from independent claim 9. Independent claim 1 is illustrative of the disclosed invention and is reproduced below: 1. A device, comprising: a division unit to divide a video frame into a plurality of subframes; and a plurality of encoding units, each of encoding units to encode a corresponding one of the plurality of subframes, wherein the division unit is to determine a number of the subframes the video frame is to be divided into based on a number of the plurality of encoding units, the number of the plurality of encoding units is based on a number of processors included in the device, and 2 Appeal2018-007737 Application 14/898,260 each of the encoding units do not communicate with each other. Id.at 16. Mauchly Watanabe Jia Prior Art Relied Upon U.S. Patent Application Pub. No. 2007/0086528 Al U.S. Patent Application Pub. No. 2008/0079743 Al U.S. Patent No. 9,100,509 Bl Rejections on Appeal published Apr. 19, 2007; filed Oct. 6, 2006 published Apr. 3, 2008; filed Sept. 4, 2007 issued Aug. 4, 2015; filed Feb. 7, 2012 The Examiner rejects claims 1 and 4--7 as anticipated under 35 U.S.C. § I02(a)(2) 3 by Watanabe. Final Act. 2-3. The Examiner rejects claims 2, 3, 8, 9, 12, and 13 as unpatentable under 35 U.S.C. § 103 over the combined teachings of Watanabe and Mauchly. Final Act. 4--6. The Examiner rejects claims 16-19 as unpatentable under § 103 over the combined teachings of Watanabe and Jia. Final Act. 6-7. Examiner's Findings 1. The Examiner finds that Figure 1 of Watanabe discloses all the limitations of independent claim 1. Final Act. 2-3. The record is unclear, 2 For clarity and ease of reference, we only list the first named inventor. 3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA"), amended 35 U.S.C. §§ 102, 103, and 112. Because the application at issue contains claims having an effective filing date after the effective dates of the applicable AIA amendments, we refer to the post-AIA versions of 35 U.S.C. §§ 102, 103, and 112. 3 Appeal2018-007737 Application 14/898,260 however, as to whether the Examiner determines that the clam term "division unit" is governed by 35 U.S.C. § 112([). 2. For independent claim 9, the Examiner relies on Watanabe to teach all the limitations, except "determining a total number of processors included in a device and selecting a threshold number of the total number of processors to be dedicated to encoding." Final Act. 5; Ans. 10. The Examiner turns to Mauchly to teach this limitation. Ans. 10 ( citing Mauchly ,r,r 7, 50, Fig. 1 ). The Examiner concludes that it would have been obvious to incorporate Mauchly's teachings into Watanabe for the benefit of improving encoding speed with a dedicated processor for encoding. Id. at 10-11. 3. For independent claim 13, the Examiner finds that the combined teachings of Watanabe and Mauchly account for all the limitations. Final Act. 6. In particular, the Examiner finds that both Watanabe and Mauchly teach that a threshold number of a plurality of processors to encode a video frame is greater than one. Ans. 11. The Examiner further relies on Mauchly to teach "the threshold number is determined based on a number of the plurality of processors to be dedicated non-encoding processes," as claimed. Id. at 11-12 (citing Mauchly ,r,r 7, 50, Fig. 1). Appellant's Contentions 1. Appellant asserts that Watanabe does not disclose all of the limitations of independent claim 1 because Watanabe does not disclose a "division unit" that performs the functions recited in the claim. App. Br. 4-- 7; Reply Br. 2-5. Appellant does not address whether the claim term "division unit" is governed by 35 U.S.C. § 112([). 4 Appeal2018-007737 Application 14/898,260 2. Appellant also disputes the Examiner's finding that Mauchly teaches "determining a total number of processors included in a device and selecting a threshold number of the total number of processors to be dedicated to encoding," as recited in independent claim 9. App. Br. 8-9; Reply Br. 6-7. Appellant further argues that the Examiner has failed to articulate a sufficient rationale to support modifying the teachings of Watanabe with those ofMauchly. App. Br. 9-10. 3. For independent claim 13, Appellant argues that the Examiner has overlooked that this claim requires that the threshold number of encoding processors is greater than one. App. Br. 11. Appellant also contends that the Examiner has failed to show that Mauchly teaches that "the threshold number is determined based on a number of the plurality of processors to be dedicated non-encoding processes," as claimed. App. Br. 11; Reply Br. 8. II. ISSUES 1. Is the claim term "division unit" recited in independent claim 1 governed by 35 U.S.C. § 112(±) and, if so, is independent claim 1 definite under 35 U.S.C. § 112(b)? 2. Has the Examiner erred in finding that the combined teachings of Mauchly and Watanabe account for all the limitations recited in independent claim 9, and in presenting a sufficient rationale to combine the teachings of Watanabe with those of Mauchly? 5 Appeal2018-007737 Application 14/898,260 3. Has the Examiner erred in finding that Watanabe and Mauchly teach that "the threshold number is greater than one" and "the threshold number is determined based on a number of the plurality of processors to be dedicated non-encoding processes," as recited in independent claim 13? III. ANALYSIS New Ground of Rejection Claim 1 Independent claim 1 recites, in relevant part, "a division unit to divide a video frame into a plurality of subframes" and "to determine a number of the subframes the video frame is to be divided into based on a number of the plurality of encoding units." As we explain below, we determine that these limitations are governed by 35 U.S.C. § 112(±). We further determine that the specification does not disclose sufficient structure that corresponds to the claimed functions, such that independent claim 1 is indefinite under 35 U.S.C. § 112(b). Accordingly, we do not assess the merits of the Examiner's anticipation rejection of independent claim 1. The Examiner's anticipation rejection of independent claim 1 must fall because it is necessarily based upon speculative assumption as to the meaning of independent claim 1. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962). Independent claim 1 does not include the word "means" and, therefore, a rebuttable presumption exists that§ 112(±) does not apply to independent claim 1. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en bane). This presumption can be overcome, however, if the claim "fails to 'recite sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that 6 Appeal2018-007737 Application 14/898,260 function."' Id. at 1349 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Here, the term "unit" recited in independent claim 1 is a nonce word that replaces the word "means." See Manual of Patent Examining Procedure § 2181(I)(A) (9th ed. Rev. 08.2017, Jan. 2018) (identifying "unit for" as a generic placeholder that may invoke § 112(±)). Independent claim 1 describes this "unit" solely in relation to the functions it performs-namely, "to divide a video frame into a plurality of subframes," and "to determine a number of the subframes the video frame is to be divided into based on a number of the plurality of encoding units." See Diebold Nixdorf, Inc. v. Int 'l Trade Comm 'n, 899 F.3d 1291, 1294, 1297-98 (Fed. Cir. 2018) (holding that the term "cheque standby unit" is a means-plus-function term where the claims describe the term solely in relation to its function and location). Accordingly, because the claimed "division unit" fails to recite sufficiently definite structure, the presumption against means-plus-function claiming is rebutted, and this term is governed by§ 112(±). As the claimed "division unit" is governed by§ 112(±), we next consider whether the specification discloses sufficient structure that corresponds to the claimed functions. First, we must identify the claimed functions. Williamson, 792 F.3d at 1351. Second, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. "Even if the specification discloses corresponding structure, the disclosure must be of 'adequate' corresponding structure to achieve the claimed function." Id. at 1352. Where, as here, there are multiple claimed functions, there must be an adequate corresponding structure to perform all 7 Appeal2018-007737 Application 14/898,260 of the claimed functions. Id. at 1351-52. If adequate corresponding structure is not disclosed, then the claim is indefinite. Id. at 1352. As to the first inquiry, the claimed "division unit" performs two functions. First, the division unit "divide[ s] a video frame into a plurality of subframes." Second, the division unit "determine[s] a number of the subframes the video frame is to be divided into based on a number of the plurality of encoding units." As to the second inquiry, the specification describes division unit 120 as a generic "hardware device including electronic circuitry for implementing the [described] functionality," such as "control logic and/or memory," or "as a series of instructions encoded on a machine-readable storage medium and executable by one or more processors." Spec. ,r 14. This description alone is not sufficient because "the structure disclosed in the specification [must] be more than simply a general purpose computer or microprocessor." Williamson, 792 F.3d at 1352; see also Finisar Corp. v. DirecTV Grp., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008) ("Simply reciting 'software' without providing some detail about the means to accomplish the function is not enough."). Instead, this description amounts to no more than generic computer components, software, and processors to perform the functions of the claimed "division unit." In this case, a disclosure of adequate corresponding structure "require[ s] that the specification disclose an algorithm for performing the claimed function." Williamson, 792 F.3d at 1352. "When the specification discloses some algorithm, ... the question is whether the disclosed algorithm, from the viewpoint of a person of ordinary skill, is sufficient to define the structure and make the bounds of the claim understandable." 8 Appeal2018-007737 Application 14/898,260 Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012). The specification states: "For example, if there are four encoding units 13 0-1 to 130-[ 4], the division unit 120 may divide the video frame 150 into four subframes 152-1 to 152-4." Spec. ,r 16. It is not clear from the record, however, that one of ordinary skill in the art would have understood the bounds of the claim from this disclosure, which is presented only as an example. That is, it is unclear from the specification whether applying a 1: 1 relationship between the number of encoding units and number of subframes is part of an algorithm for determining the number of subframes based on the number of encoding units, or whether the 1: 1 ratio is simply an example of one result of the operation of an unspecified algorithm. See Aristocrat Techs. Aust!. Pty Ltd. v. Int'! Game Tech., 521 F.3d 1328, 1335 (Fed. Cir. 2008) (holding that the disclosure of "examples of the results of the operation of an unspecified algorithm" is not a disclosure of sufficient structure for a means-plus-function claim limitation). Furthermore, the cited disclosure only describes the result of the dividing function, not how the division is performed. Accordingly, we determine that the specification does not disclose adequate corresponding structure for performing the functions of the "division unit" recited in independent claim 1 and, therefore, independent claim 1 is indefinite under§ 112(b ). Claims 2-8 and 16--19 By virtue of their dependency, claims 2-8 and 16-19 include the "division unit" recited in independent claim 1. Dependent claims 2-8 and 16-19 do not add any limitations that inform the structural character of the claimed "division unit" or otherwise impart structure to this claim term. At most, dependent claims 5, 16, and 19 recite additional functions performed 9 Appeal2018-007737 Application 14/898,260 by the claimed "division unit"----e.g., to "divide[ ] the subframes to be approximately equal in size" and "not overlap with respect to the video frame" ( claim 5), and "to determine which of the number of processors included in the device are available for use as the plurality of encoding units" (claim 16). For these reasons and the same reasons discussed above with respect to independent claim 1, we determine that dependent claims 2- 8 and 16-19 are indefinite under§ 112(b). § 103 Rejection Based on the Combined Teachings of Watanabe and Mauchly Claim 9 Based on the record before us, we discern no error in the Examiner's obviousness rejection of independent claim 9, which recites, in relevant part, "dividing the video frame into a plurality of subframes based on the number of processors," "determining a total number of processors included in a device," and "selecting a threshold number of the total number of processors to be dedicated to encoding." The Examiner finds that it would have been obvious to combine the teachings of Watanabe and Mauchly to account for these limitations. Final Act. 2-5; Ans. 10. Appellant does not challenge the Examiner's reliance on Watanabe, except that Appellant contends that the Examiner failed to address the limitation of independent claim 1 that "requires a division unit to determine a number of subframes the video frame is to be divided into based on a number of the plurality of encoding units." App. Br. 8. Appellant's argument, however, is not commensurate in scope with independent claim 9 because independent claim 9, unlike independent claim 1, does not recite "a division unit to determine a number of subframes the video frame is to be divided into." 10 Appeal2018-007737 Application 14/898,260 Instead, independent claim 9 recites "dividing the video frame into a plurality of subframes," and we agree with the Examiner that Figure 1 of Watanabe teaches this limitation in illustrating Slice O and Slice 1. Final Act. 2 (citing Watanabe, Fig. 1). We also agree with the Examiner that this "dividing" step is "based on the number of processors" in the combination of Watanabe and Mauchly. First, Watanabe illustrates dividing one slice per encoding unit. See id. (finding that "the subframes slice O and slice 1 are divided into two for the two encoding units"). Second, we agree with the Examiner that it would have been obvious for each of the encoding units to use a separate one of the processors given the teachings of Mauchly. Id. at 4 ( citing Mauchly ,r 7 ("separate processors can encode ... separate slices in parallel")); see also Mauchly ,r 50 (explaining that each of the processors may perform a separate function and can be referred to by the name of that function, including a number of encoders). The Examiner relies on Mauchly's teaching that refers to the use of "15 encoder[s] or more" to account for the limitation reciting "determining a total number of processors included in a device." Ans. 10 ( emphasis omitted) ( quoting Mauchly ,r 50). The teachings of Mauchly support the Examiner's finding that each of the encoders corresponds to a processor. See Mauchly ,r,r 7, 50 ( explaining that separate processors can encode separate slices in parallel and that each processor may be referred to by the name of the function it is performing). Furthermore, Appellant does not dispute this specific finding and, therefore, we adopt it as our own. Accordingly, we determine that the Examiner did not err in finding that Mauchly teaches "determining a total number of processors included in a device." 11 Appeal2018-007737 Application 14/898,260 Appellant does dispute the Examiner's finding that Mauchly teaches "selecting a threshold number of the total number of processors to be dedicated to encoding," as recited in independent claim 9. The Examiner relies on Mauchly's teaching that "the number of encoders used depends on the resolution of the video, the computational power of the processors, and so forth" (Mauchly ,r 50), equating the threshold number to the limit of the number of processors that can be used for encoding. Ans. 10. But according to Appellant, the claim term "threshold" is not equivalent to determining a maximum or limit, but is instead representative of a minimum number of processors. Reply Br. 6-7. We agree with the Examiner that Mauchly teaches "selecting a threshold number of the total number of processors to be dedicated to encoding" because the Examiner applies the claim term "threshold" in a way that is consistent with the specification. The specification states, in relevant part: "[T]he allocation unit 220 may determine that at least 2 processors 232-5 and 232-[6] may be needed by the device 200 to adequately process non-encoding tasks. Thus, the threshold number 224 may be set to 4." Spec. ,r 25. In other words, in this embodiment, a limit/maximum of four processors may be used for encoding because the other two processors are already in use for non-encoding. See id.; see also id. ,r 32 ("[I]f the device 300 includes six processors and two of the processors are dedicated to non- encoding processes, the threshold number may be four (six minus two)."). Appellant also asserts that the Examiner has failed to articulate a sufficient rationale to support modifying the teachings of Watanabe with those of Mauchly because Watanabe presumably already provides a benefit of viewing transmitted encoded videos. App. Br. 9. Although we recognize 12 Appeal2018-007737 Application 14/898,260 that Watanabe already generally discloses "parallel processing," Mauchly describes this concept in more detail by explaining that separate processors encode separate slices in parallel, that the number of encoders may equal 15 or more, and that the number of encoders will depend on video resolution and processing power. Compare Watanabe ,r 58, with Mauchly ,r,r 7, 50. The Examiner did not err in considering the teachings of Mauchly that describe in more detail the "parallel processing" concept that is already taught by Watanabe for purposes of mapping the combined teachings of these prior art references to the limitations of independent claim 9. Lastly, Appellant argues that, unlike Watanabe, Mauchly's objective is to use multiple encoders to operate on the same slice of a video frame. App. Br. 9-10 (citing Mauchly, Abstract, ,r 21). Here, Appellant improperly argues Mauchly in isolation, as the Examiner's obviousness rejection does not propose adding Mauchly's teaching of using multiple encoders for the same slice of video frame to Watanabe. Instead, the Examiner proposes adding Mauchly's teaching of using a separate processor for each encoding unit to Watanabe. See Final Act. 4; Ans. 10. Accordingly, for all the reasons discussed above, we are not persuaded that the Examiner has erred in determining that the combined teachings of Watanabe and Mauchly render the subject matter of independent claim 9 unpatentable. Claim 12 Appellant relies upon the same arguments presented against the Examiner's obviousness rejection of independent claim 9 to rebut the Examiner's obviousness rejection of dependent claim 12. App. Br. 7-10. We, however, are not persuaded that the Examiner erred in rejecting independent claim 9 as obvious over the combined teachings of Watanabe 13 Appeal2018-007737 Application 14/898,260 and Mauchly. Accordingly, we also are not persuaded that the Examiner has erred in determining that the combined teachings of Watanabe and Mauchly render the subject matter of dependent claim 12 unpatentable. Claim 13 Based on the record before us, we discern no error in the Examiner's obviousness rejection of independent claim 13, which recites, in relevant part, "the threshold number [of encoding processors] is greater than one," that a processor is to "divide the video frame into the threshold number of subframes," and "the threshold number [ of encoding processors] is determined based on a number of the plurality of processors to be dedicated non-encoding processes." Appellant asserts that the Examiner has overlooked the fact that independent claim 13 recites that the "threshold number is greater than one." App. Br. 11 ( emphasis omitted). The Examiner's Answer clarified how both Watanabe and Mauchly teach the use of multiple encoders-two in Watanabe and four in Mauchly. Ans. 11. Appellant does not challenge this explanation (see Reply Br. 8), and we do not discern error in the Examiner's finding in this regard. Next, as with independent claim 9 above, Appellant contends that the Examiner failed to address the limitation of independent claim 1 that "requires a division unit to determine a number of subframes the video frame is to be divided into based on a number of the plurality of encoding units." App. Br. 11. Appellant's argument, however, is not commensurate in scope with independent claim 13 because independent claim 13, unlike independent claim 1, does not recite "a division unit to determine a number of subframes the video frame is to be divided into." 14 Appeal2018-007737 Application 14/898,260 Instead, independent claim 13 recites that the processor is to "divide the video frame into the threshold number of subframes." We agree with the Examiner that Figure 1 of Watanabe illustrates dividing a video frame into a number of subframes (Slice O and Slice 1) that correspond to the number of encoding units 3 and 4. Final Act. 2 (citing Watanabe, Fig. 1). We, therefore, tum to the issue of whether the combination of Watanabe and Mauchly renders obvious the limitation requiring the number of subframes, each assigned to one of the encoding processors, to be a "threshold" number as required by independent claim 13. Independent claim 13 recites that "the threshold number is determined based on a number of the plurality of processors to be dedicated non- encoding processes." On this point, the Examiner explains that either four, five, or six processors----each requiring processors used for encoding, non- encoding, or both-would be required to implement the system disclosed in Mauchly's Figure 1. Ans. 12. We determine that at least the Examiner's scenario where four separate processors implement each of the four encoders, one processor implements the video divider, and one processor implements the bitstream mux (id.) is consistent with Mauchly's disclosure. See Mauchly ,r 50 ( explaining that each of the processors may perform a separate function and can be referred to by the name of that function, such that the processor performing the video divider task is called the video divider, and that there are also a number of encoders). In this particular scenario, there are two processors dedicated to non-encoding processes (i.e., the video divider and bitstream mux), such that the remaining number may be used for encoding. As the Examiner explains, the number of processors 15 Appeal2018-007737 Application 14/898,260 that may be used for encoding corresponds to the "threshold number." Ans. 12. Appellant nakedly asserts that Mauchly does not teach independent claim 13 's requirement of determining a threshold number of subframes into which a video frame should be divided based upon the number of processors in a device that are dedicated to non-encoding processes. App. Br. 11. Appellant, however, does not argue that the Examiner erred in the explanation set forth in the Examiner's Answer as to how a number of processors for encoding is determined based on a number of the plurality of processors dedicated to non-encoding. See Reply Br. 8. Instead, Appellant argues that (a) independent claim 13 recites that the processor makes the determination and the Examiner ignores this fact, and (b) the Examiner has erred in interpreting the claim term "threshold" to mean a limit. Reply Br. 8. Beginning with the latter argument (b ), similar to our discussion of independent claim 9 above, the Examiner's application of the claim term "threshold" is consistent with the specification. Turning to Appellant's former argument (a), although independent claim 13 recites that the processor is to "allocate," "divide," and "assign," the additional claim language that "the threshold number is determined" is recited in passive voice, and does not require a specific subject or actor to make the determination as to the threshold number. Accordingly, we are not persuaded by Appellant's argument that the processor must make the determination as to the threshold number because this requirement is not commensurate in scope with independent claim 13. For all the reasons discussed above, we are not persuaded that the Examiner has erred in 16 Appeal2018-007737 Application 14/898,260 determining that the combined teachings of Watanabe and Mauchly render the subject matter of independent claim 13 unpatentable. IV. CONCLUSIONS For the foregoing reasons, we determine that the Examiner has not erred in rejecting claims 9, 12, and 13 under§ 103. We, however, determine that the claim term "division unit" required by claims 1-8 and 16-19 is governed by§ 112(±), and because the specification lacks sufficient structure that corresponds to the claimed functions, these claims are indefinite under§ 112(b ). Accordingly, we reverse, proforma, the Examiner's rejection of claims 1 and 4--7 under § 102(a)(2) and the Examiner's rejection of claims 2, 3, 8, and 16-19 under § 103, and we enter a new ground of rejection against claims 1-8 and 16-19 under § 112(b ). Our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the Examiner's rejections of claims 1-8 and 16-19. V. DECISION We affirm the Examiner's decision to reject claims 9, 12, and 13. We reverse, proforma, the Examiner's decision to reject claims 1-8 and 16-19, and we newly reject claims 1-8 and 16-19 as being indefinite under § 112(b). 37 C.F.R. § 4I.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 17 Appeal2018-007737 Application 14/898,260 37 C.F.R. § 4I.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 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 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. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 37 C.F.R. § 4I.50(b) 18 Copy with citationCopy as parenthetical citation