Ex Parte Milosavljevic

Patent Trial and Appeal Board

Feb 25, 2015

10675128 (P.T.A.B. Feb. 25, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NADA MILOSAVLJEVIC
____________________

Appeal 2012-007261
Application 10/675,128
Technology Center 3600
____________________

Before: JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
BRADLEY B. BAYAT, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
1

Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s Non-Final rejection of claims 1, 7, 22, 24, 25, 29–34, and 36–45.
We AFFIRM IN PART.

1
The Appellant indicates the real party in interest is the Appellant. (App.
Br. 1).
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THE CLAIMED INVENTION
Appellant claims relates to medical references, health care
examinations and treatments, and recording of patients’ medical
information. (Spec. 2, ll. 3–4). Claim 1 is illustrative of the claimed subject
matter:
1. A method for facilitating the evaluation, diagnosis and
treatment of a patient, comprising the steps of:
(a) conducting a preliminary physical examination
of the patient and making a preliminary diagnosis based on the
preliminary physical examination that the patient has a
particular medical disorder;
(b) after the performance of step (a), obtaining a
paper template having only one sheet of paper, the one sheet of
paper having preprinted information listing signs or symptoms
that might be exhibited by one afflicted with the particular
medical disorder and information listing other medical
disorders that might be confused with the particular medical
disorder;
(c) after the performance of step (b), consulting the
paper template for information prompting the user to further
examine the patient for the signs or symptoms listed on the
paper template; and
(d) after the performance of step (c), conducting a
further examination of the patient to determine whether the
patient is exhibiting the signs or symptoms listed on the paper
template and entering onto the paper template hand written
information identifying those of the one or more signs or
symptoms listed on the paper template that are exhibited by the
patient.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Campbell US 6,047,259 Apr. 4, 2000
Iliff US 6,468,210 B2 Oct. 22, 2002
Tetrault US 2002/0172809 A1 Nov. 21, 2002
Liener Chin US 6,632,042 B1 Oct. 14, 2003
Dahlin US 2004/0078215 A1 Apr. 22, 2004

REJECTIONS
The following rejections are before us for review.
The Examiner rejects claims 1, 7, and 32–34 under 35 U.S.C. § 101 as
reciting ineligible subject matter.
The Examiner rejects claims 1, 7, and 32–34 under 35 U.S.C. § 103(a)
as unpatentable over Campbell, Iliff, and Tetrault.
The Examiner rejects claims 22 and 36 under 35 U.S.C. § 103(a) as
unpatentable over Campbell and Dahlin.
The Examiner rejects claims 24, 25, 29–31, 38, and 44 under 35
U.S.C. § 103(a) over Campbell, Dahlin, and Liener Chin.
The Examiner rejects claims 37, 39–43, and 45 under 35 U.S.C.
§ 103(a) over Campbell, Dahlin, and Tetrault.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification describes obtaining a template by example, in that a
user “may have a pad of printed reference devices . . . .” (Page 15, ll. 4–
5).
2. Campbell discloses:
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The diagnosis software uses the observations made during the
medical exam to prepare a rule out list and prescribe a treatment
protocol. Diagnosis software running on the server uses the
observations to generate a list of abnormal observations and
tentative diagnosis. The doctor can then select a tentative
diagnosis by positioning the cursor over a diagnosis and
selecting it. By selecting a tentative diagnosis, the user triggers
the generation of a treatment protocol. This treatment protocol
can then be integrated into future medical exam sessions. It is
integrated because procedures that need to be performed and
observations that need to be made are identified in the graphical
exam screens in follow-up visits.
(Col. 7, ll. 42–53).
3. Tetrault discloses the use of pre-printed “reusable paper plastic” forms.
(¶ 13).
4. Tetrault discloses a paper template provided with pre-printed
information adapted for hand written annotation, in that it discloses a
“writing surface” which :
. . . . may be clear; and/or may have written information (such
as, e.g., a map, etc.) underlying the solid surface, the written
information consisting of ink around which has formed a
unitary block, the writing surface being a top face of the unitary
block and the ink being embedded in the unitary block; etc.
(¶ 17).
5. Liener Chin discloses and embodiment where a “consumer can print
the titles on plain paper and if an error is made or if a change is desired,
it can easily be corrected or changed by printing another sheet of plain
paper and inserting it into the sleeve.” (Col. 3, ll. 24–28).
6. The Specification describes by example that “[m]ost books or other
types of collections of medical information available today contain too
much information or are too bulky, time-consuming, or awkward to be
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useful at a patient’s bedside or under other conditions of limited time or
space. (Spec. 4, ll. 4–6).
7. The Specification describes possible computerized embodiments,
stating “[t]he invention may also be embodied as software for a portable
or hand-held computer or a network computer with terminals accessible
in locations where the invention would be useful.” (Spec. 8, ll. 6–8).
8. Dahlin discloses “an electronic system that facilitates documenting
medical findings of a physical examination in a medical practitioner-
patient encounter and that can serve as a single point of integration for
electronic health care information systems.” (¶ 2).

ANALYSIS
Rejection of claims 1, 7, and 32–34 under 35 U.S.C. § 101
The rejection is affirmed as to claim 1. Appellant does not provide a
substantive argument as to the separate patentability of claims 7 and 32–34
that depend from claim 1, which is the sole independent claim among those
claims. Therefore, we address only claim 1, and claims 7 and 32–34 fall
with claim 1. See, 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue the Examiner’s conclusion that the claim recite
merely an abstract idea is in error, because the claimed template is a
“tangible object” (App. Br. 5–6) and because the claimed method is “a
transformative process, i.e., the process is for changing a patient from sick to
well.” (Reply Br. 1–2).
We are not persuaded by the Appellant’s argument because the claim
recites the abstract idea of evaluating, diagnosing, and treating a patient.
The abstract idea is recited in the preamble and the Field of Invention
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portion of the Specification, and each claim limitation is in furtherance of
the aforementioned abstract idea. Having determined that the claim is
directed to an abstract idea, we next analyze whether the claim includes an
inventive concept. We determine that it does not.
Limitations (a), (c), and (d), which involve conducting an examination
and considering a template, can be performed entirely through mental
thought, by merely looking at a patient and thinking. Limitation (b) involves
obtaining a paper template. The Specification does not define or describe
what “obtaining” entails. The Appellants directs us, for support for this
limitation in claim 1, to Figure 1A, and page 15 of the Specification, lines 1–
18. (App. Br. 2). Figure 1A depicts an example template in the form of a
document or form. (Spec. 5, ll. 20–21). The cited section at page 15
describes by example that a user “may have a pad of printed reference
devices.” (FF 1). Based on this, the act of obtaining the template could
broadly, but reasonably, be construed as encompassing merely looking at it.
In addition, the obtaining provides input information to the subsequent
examination, and thus is merely insignificant extra-solution activity in the
form of data gathering. See Bilski v. Kappos, 545 F.3d 943, 963 (Fed. Cir.
2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010)
(characterizing data gathering steps as insignificant extra-solution activity).
Therefore, we affirm the rejection of claim 1 and dependent claims 7
and 32–34 under 35 U.S.C. § 101.

Rejection of claims 1 and 7 under 35 U.S.C. § 103(a)
The Appellant argues that neither Campbell nor Tetrault each
discloses a paper template with pre-printed medical information. (App. Br.
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7–10, Reply Br. 2–4). The argument fails because the obviousness rejection
is based on a combination of references, where Campbell discloses the steps
of conducting examinations using pre-printed instructions (FF 2), and
Tetrault discloses the use of pre-printed paper forms (FF 3) (i.e., templates).
The Appellant also argues that the combination of Campbell and
Tetrault made by the Examiner is “impermissibly conclusive” and
“illogical,” possible only through impermissible hindsight. (App. Br. 9–10).
The Examiner reasons the combination of Campbell with the paper forms of
Tetrault would be obvious because each predictably performs its previous
function in the same way after combination as before. (Ans. 7–8). We
agree. The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR International Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Merely
printing onto paper information from a computer display in Campbell, would
yield predictable results that would be recognized by the ordinary artisan.
Therefore, the rejection is not based on impermissible hindsight.
The Federal Circuit has stated that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (citation omitted), cited with approval in KSR, 550 U.S. at 418. The
Examiner supports the conclusion of obviousness with a rational
underpinning, when stating, “each element merely would have performed
the same function as it did separately, and one of ordinary skill in the art
would have recognized that the results of the combination were predictable.”
(Ans. 6–7).
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The Appellant also argues Iliff fails to disclose a further examination,
as claimed. (App. Br. 10–11). We are not persuaded by this argument,
because Campbell discloses an additional examination after consulting
information, which is performed after an initial examination. (FF 2). The
disclosure of Iliff, therefore, is cumulative.
Finally, the Appellant argues “[n]othing in Campbell is suggestive of
using a template.” (Reply Br. 4). To the extent Appellant seeks an explicit
suggestion or motivation in the reference itself, this is no longer the law in
view of the Supreme Court’s holding in KSR, at 419. The presentation of
information in Campbell (FF 2) is suggestive of a template, for example, that
of Tetrault.
For these reasons, we affirm the rejection of claim 1, and dependent
claim 7 that is not separately argued. (App. Br. 12).

Rejection of claims 32–34 under 35 U.S.C. § 103(a)
The Appellant argues dependent claims 34–34 by asserting for each
claim that Iliff does not disclose using a paper template. (App. Br. 12–14).
These arguments fail, because the Examiner relies on a combination of
references for the obviousness rejection, and finds that Tetrault discloses the
use of a paper template. (Ans. 6).
The Appellant also argues “computer-based systems and methods
teach away from Appellants [sic] claimed invention because they ‘contain
too much information or are too bulky, time-consuming, or awkward to be
useful at a patient's bedside or under other conditions of limited time or
space’ as set forth at Appellant’s disclosure at page 4, lines 4–15.” (App.
Br. 12). However, the Appellant’s Specification actually discloses this
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disadvantage for books, not computers. (FF 6). Additionally, the
Specification discloses computerized embodiments. (FF 8). Therefore, we
do not agree that the rejection teaches away from the disclosed invention,
because the combination discloses the use of paper templates, and the
claimed invention may be implemented on computers.
Therefore, we affirm the rejection of dependent claims 32–34.

Rejection of claims 22 and 36
Independent claim 22 recites an apparatus, comprising a set of paper
templates, where each template embodies “preprinted information” and “is
adapted for hand written annotation.” Independent claim 36 recites a paper
template “provided with” printed information and “adapted for a hand
written annotation.”
The Appellant argues that neither Campbell nor Dahlin discloses “a
set of ‘paper’ templates, each directed to a different medical disorder.”
(App. Br. 14–16). We are persuaded by the Appellant’s argument. Neither
Campbell nor Dahlin discloses paper with pre-printed information, because
both disclose computer systems with information displayed on a computer
display. (FF 2, 8). For this reason, we will not sustain the rejection of
claims 22 and 36 under 35 U.S.C. § 103(a) over Campbell and Dahlin.
However, we enter a new rejection of claims 22 and 36 under 35
U.S.C. § 102(e) over Tetrault. Tetrault discloses a set of paper templates,
each provided with pre-printed information, and each adapted for hand
written annotation by a user. (FF 4). Tetrault discloses a map and written
information on its paper (Id.), but does not disclose the specific content
claimed, about medical disorders. The content on the claimed templates,
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however, as essentially printed matter, must be examined to see if they have
a functional relationship to the underlying substrate template.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted).
The content of the paper templates does not affect the paper templates
themselves, or their use except to convey the written information and to
provide a place to add more information manually. Tetrault discloses, as set
forth above, paper templates with written information and a place to add
additional information manually. (FF 4). The content of the pre-printed
information has no functional impact on the paper templates, because any
information could be written on them, even though the claim seeks to elicit
certain types of information. Moreover, even if functional, the claimed
templates differ from the prior art only in the content of the information on
the templates, which is not a patentable distinction. As a result, Appellant’s
claimed paper templates do not distinguish the claimed invention from the
prior art.
It has been repeatedly held that an applicant cannot create a novel
product by attaching printed matter to it, even if that printed matter itself is
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new. See, e.g., Ngai. Thus, adding instructions to a kit that describe a
method of using it does not make the kit patentable over the same kit with a
different set of instructions. There are cases in which the descriptive
material can form a functional relationship with the underlying substrate.
For example, in In re Miller, the addition of printed matter to the outside of a
cup permitted an otherwise ordinary cup to be used like a measuring cup to
half recipes. The printed matter in Miller served as a computing or
mathematical recipe conversion device permitting a cook to perform
calculations automatically with no further thought. However, the claim
before us is more like the claim in Ngai than Miller. The fact that the
claimed templates provide a specific type of content does not change the
claimed template itself, which must merely be paper, have pre-printed
information on it, and permit manual annotation. The claimed templates
merely describe a new, non-functional feature for a system that already
exists.
To agree with Appellant’s reasoning would mean that each potentially
novel report type is sufficient to warrant a separate patent even if the
remainder of the invention is unchanged. This would result in Appellant’s
content of templates distinguishing over the prior art, as would every single
unique template. To give effect to Appellant’s argument, we would need to
ignore our reviewing court’s concerns with repeated patenting. We decline
to do so.
The rationale behind this prior art rejection is preventing the repeated
patenting of essentially a known product by the mere inclusion of novel non-
functional descriptive material. King Pharm., Inc. v. Eon Labs, Inc., 616
F.3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this line of cases is
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preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations.”) Cf. In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004) (“If we were to adopt Ngai’s position,
anyone could continue patenting a product indefinitely provided that they
add a new instruction sheet to the product.”).
Our new rejection is based on the finding that the prior art anticipates
claims 22 and 36 because the cited art teaches or suggests each and every
limitation of the claim. Any argued difference between the prior art and the
claimed invention is simply a substitution of one piece of NFDM (e.g., a
map) for another piece of NFDM (information on medical disorders).
Rejection of claims 24, 25, 29, and 30 under 35 U.S.C. § 103(a)
The Examiner rejects these dependent claims with the addition of
Liener Chin. The Examiner contends Liener Chin discloses the elements of
dependent claims 24, 25, 29–31, and 38. The Appellant argues, for claims
24, 25, 29, and 30, that there is no reason to add, for example, transparent
plastic page covers to computers (App. Br. 16–19), thus arguing against the
combination of references.
However, the claim elements which the Examiner asserts Liener Chin
discloses are not disputed. Because we have reversed the rejection of claim
22 under 35 U.S.C. § 103(a), we also reverse the rejection of claims 24, 25,
29, and 30 under 35 U.S.C. § 103(a), for the reason they depend from a
reversed claim where the combination of references was in error, and which
combination also was used in part to reject claims 24, 25, 29, and 30.
We enter a new ground of rejection of claims 24, 25, 29, and 30 under
35 U.S.C. § 103(a) over Tetrault and Liener Chin. As indicated generally
above, the combination involves well-known elements in the art, whose
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function remains the same after combination as before, with predictable
results. The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 416.

Rejection of claim 31 under 35 U.S.C. § 103(a)
Dependent claim 31 recites “wherein the apparatus further comprises
a vision chart.”
The Appellant argues the rejection of claim 31 based on the admission
that the cited art does not disclose a vision chart, as claimed. (App. Br. 19–
20). We find a vision chart is non-functional descriptive material, because it
is content that does not affect the function of the claimed paper template to
convey the information itself. See printed matter discussion above, at claims
22 and 36. Because we have reversed the rejection of claim 22 under 35
U.S.C. § 103(a), we also reverse the rejection of claim 31 under 35 U.S.C.
§ 103(a), for the reason it depends from a reversed claim where the
combination of references was in error, and which combination also was
used in part to reject claim 31.
We enter a new rejection of claim 31 under 35 U.S.C. § 102(e) over
Tetrault, based on the Tetrault disclosure explained above at claim 22, from
which claim 31 depends.

Rejection of claim 38 under 35 U.S.C. § 103(a)
Dependent claim 38 recites “wherein the paper template is composed
essentially of a single sheet of paper in a transparent plastic cover.”
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The Appellant argues the Examiner “has not identified where
Campbell, Dahlin and Chin disclose ‘a single sheet of paper in a transparent
plastic cover.’ The reference to the rejection of claims 24 and 25 is
understood to be the basis for the claim 36 features.” (App. Br. 20). The
Examiner, however, finds that claim 38 “repeats the subject matter of claim
25 . . . .” (Ans. 13). Dependent claim 25 recites “wherein each of the
templates is printed on paper encased in transparent plastic.” Because we
have reversed the rejection of claim 36 under 35 U.S.C. § 103(a), we also
reverse the rejection of claim 38 under 35 U.S.C. § 103(a), for the reason it
depends from a reversed claim where the combination of references was in
error, and which combination also was used in part to reject claim 38. We
agree with the Examiner that claim 38 recites language substantially
identical to claim 25, which the Examiner finds disclosed in Liener Chin.
(Ans. 11–12; see FF 5).
We enter a new rejection of claim 38 under 35 U.S.C. § 103(a) over
Tetrault and Liener Chin, based on the Tetrault disclosure explained above
at claim 36, from which claim 38 depends, and the undisputed Liener Chin
disclosure the Examiner relies on. (Id.). The combination involves well-
known elements in the art, whose function remains the same after
combination as before, with predictable results. The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results. KSR, 550 U.S. at 416.

Rejection of claims 37 and 39 under 35 U.S.C. § 103(a)
The Appellant argues claim 37 by attacking the combination of
Tetrault with Campbell and Dahlin, by asserting “there is no explanation in
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the Office Action of how Tetrault’s note paper is useful with the computer
system of Campbell or the computer system of Dahlin.” (App. Br. 21–22).
Claim 39 is not separately argued. The Appellant does not argue the
limitations the Examiner finds in Tetrault (Ans. 13–14), and thus there is no
dispute that Tetrault discloses the limitations of claim 37 or 39. Because we
have reversed the rejection of claim 36 under 35 U.S.C. § 103(a), we also
reverse the rejection of claims 37 and 39 under 35 U.S.C. § 103(a), for the
reason it depends from a reversed claim where the combination of references
was in error, and which combination also was used in part to reject claims 37
and 39. But because we have entered a new ground of rejection of claim 36
under 35 U.S.C. § 102(e) over Tetrault, and the additional language of
claims 37 and 39 is undisputedly met by Tetrault, as set forth above, we
enter a new ground of rejection of claims 37 and 39 under 35 U.S.C.
§ 102(e) over Tetrault.

Rejection of claims 40–43 under 35 U.S.C. § 103(a)
Claims 40–43 are argued on the basis that the Examiner does not give
patentable weight to the claimed content printed on the paper template, but
the content “provides a novel, nonobvious functional relationship with the
advantages discussed in Appellant’s disclosure.” (App. Br. 22–24). Claims
40–43 recite only details about the content of the paper templates, and
location of the content on the paper templates. As such, they are merely
printed matter, which is considered non-functional descriptive material,
because the only functional relationship of the content with the substrate
template is the conveying of information, and the suggestions of what and
where to write on the printed templates. We therefore, agree with the
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Examiner that the language of claims 40–43 do not receive patentable
weight (Ans. 14–16), under the analysis set forth above at claims 22 and 36.
Because we have reversed the rejection of claim 36 under 35 U.S.C.
§ 103(a), we also reverse the rejection of claims 40–43 under 35 U.S.C.
§ 103(a), for the reason they depend from a reversed claim where the
combination of references was in error, and which combination also was
used in part to reject claims 40–43. But because we have entered a new
ground of rejection of claim 36 under 35 U.S.C. § 102(e) over Tetrault, and
the additional language of claims 40–43 is met by Tetrault, as set forth
above, we enter a new ground of rejection of claims 40–43 under 35 U.S.C.
§ 102(e) over Tetrault.

Rejections of claims 44 and 45 under 35 U.S.C. § 103(a).
Dependent claim 44 recites “[t]he template of claim 36 in combination
with a plurality of additional templates, the combination comprising a pad of
a plurality of the same template.” Dependent claim 45 recites “[t]he
template of claim 36 in combination with a plurality of additional templates,
the combination comprising a pad of a plurality of different templates.”
The Appellant argues the cited art does not disclose a “pad” of papers.
(App. Br. 20–21, 25). The Examiner asserts claim 44 recites the limitations
of claim 24 (Ans. 13), but claim 24 does not recite a “pad.” As to claim 45,
the Examiner cites Tetrault, paragraphs 13–17 and claim 33. Tetrault’s
paragraphs 13–17 do not disclose a “pad” of papers, and claim 33 instead
discloses “wherein the pre-printed underlying written section is selected
from the group consisting of a template, a checklist and a text.” Therefore,
we agree with the Appellant that the Examiner has not set forth a prima facie
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case of anticipation or obviousness of claims 44 or 45. We reverse each of
the rejections of claims 44 and 45.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1, 7, and 32–34 under 35
U.S.C. § 101.
The Examiner did not err in rejecting claims 1, 7, and 32–34 under 35
U.S.C. § 103(a) over Campbell, Iliff, and Tetrault.
The Examiner erred in rejecting claims 22 and 36 under 35 U.S.C.
§ 103(a) over Campbell and Dahlin.
The Examiner erred in rejecting claims 24, 25, 29–31, 38, and 44
under 35 U.S.C. § 103(a) over Campbell, Dahlin, and Liener Chin.
The Examiner erred in rejecting claims 37, 39–43, and 45 under 35
U.S.C. § 103(a) over Campbell, Dahlin, and Tetrault.

DECISION
The Examiner’s rejection of claims 1, 7, and 32–34 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 1, 7, and 32–34 under 35 U.S.C.
§ 103(a) over Campbell, Iliff, and Tetrault is affirmed.
The Examiner’s rejection of claims 22 and 36 under 35 U.S.C.
§ 103(a) over Campbell and Dahlin is reversed.
The Examiner’s rejection of claims 24, 25, 29–31, 38, and 44 under
35 U.S.C. § 103(a) over Campbell, Dahlin, and Liener Chin is reversed.
The Examiner’s rejection of claims 37, 39–43, and 45 under 35 U.S.C.
§ 103(a) over Campbell, Dahlin, and Tetrault is reversed.
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We enter a new ground of rejection of claims 22, 31, 36, 37, and 39–
43 under 35 U.S.C. § 102(e) over Tetrault.
We enter a new ground of rejection of claims 24, 25, 29, 30, and 38
under 35 U.S.C. § 103(a) over Tetrault and Liener Chin.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 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 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART;37 C.F.R. § 41.50(b)

rvb