Ex Parte Peterson

Board of Patent Appeals and Interferences

Dec 14, 2009

10007928 (B.P.A.I. Dec. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARBARA DEEANN PETERSON
____________

Appeal 2009-004944
Application 10/007,928
Technology Center 3600
____________

Decided: December 14, 2009
____________

Before: LINDA E. HORNER, JOHN C. KERINS, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Barbara Deeann Peterson (Appellant) seeks our review under
35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 9, 11,
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and 24. Claims 2-8, 10, 12-23, and 25-28 are cancelled.1 We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART 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 relates to print media for generating
customized picture frames. Spec. 1, para. 0001. Claim 1, reproduced below,
is representative of the subject matter on appeal.
1. A user-customizable print media adapted for use in a
print engine of an imaging device, the print media comprising:
a single layer having an interior portion removably
attached to a surrounding portion;
wherein the print media is customizable by an end user
within the print engine of the imaging device; and
wherein the print media is adapted to produce a tangible
image representative of an image generated by the end user.

THE EVIDENCE
The Examiner relies upon the following evidence:
Schober US 5,404,663 Apr. 11, 1995
Martin US 2001/0025443 A1 Oct. 4, 2001
Huellinghoff US 6,347,469 B1 Feb. 19, 2002

1 The Board remanded this case to the Examiner on December 4, 2008 with
instructions to cancel claims 2-8, 10, and 25-28 withdrawn from this appeal.
The Examiner, in a paper dated December 15, 2008, canceled these claims
and returned the case to the Board.
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THE REJECTIONS
Appellant seeks review of the following rejections by the Examiner:
1. Rejection of claims 1 and 11 under 35 U.S.C. § 102(e) as anticipated
by Huellinghoff.
2. Rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Huellinghoff and Schober.
3. Rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Huellinghoff.

ISSUES
The Examiner’s determination that claims 1 and 11 are anticipated by
Huellinghoff is based in part on the interpretation that claims 1 and 11 are
not directed to an image, but rather require only a user-customizable display.
Ans. 3, 5. Further, the Examiner found that Huellinghoff’s media is user-
customizable in that “users may add additional decorative articles or features
to the media, thereby creating an image that is representative of an image
generated by themselves.” Ans. 3.
Appellant presents several arguments for the patentability of claims 1
and 11. App. Br. 15-17. Appellant contends that Huellinghoff’s magnetic
message display is a composite of a user-generated image and a pre-printed
image, and therefore is not “representative of an image generated by the end
user,” as recited in claims 1 and 11. App. Br. 15. Appellant also contends
that the Examiner’s finding that Huellinghoff’s magnetic message display
has the capability to have decorations added is irrelevant because claims 1
and 11 require that the image be customizable within the print engine of the
imaging device. App. Br. 15-16. More specifically, Appellant argues that
claims 1 and 11 require a print media having a physical structure capable of
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producing a tangible image in the manner claimed, and that Huellinghoff has
a structure that makes it incapable of generating a tangible image as claimed.
Reply Br. 1. Appellant further contends the Examiner cannot rely on the
interpretation that Huellinghoff inherently has a structure adapted to be
customizable by an end user within the print engine of an imaging device
without a supporting reference or a line of reasoning. App. Br. 16-17.
The issues before us are:
Has Appellant shown the Examiner erred in finding that
Huellinghoff’s magnetic message display is “adapted to produce a tangible
image representative of an image generated by the end user”?
Has Appellant shown that the Examiner erred in finding that
Huellinghoff discloses a user-customizable print media?
Has Appellant shown that the Examiner erred in finding that
Huellinghoff’s magnetic message display inherently has a structure adapted
to be customizable by an end user within the print engine of an imaging
device?
The Examiner concluded claim 9 is unpatentable in view of
Huellinghoff and Schober based in part on the finding that Huellinghoff
discloses a frame (punch–out frame member 52) separated from a small
punch out portion 58 by a line of weakness 56. Ans. 3. The Examiner
further found that Schober discloses frame pieces 16 that are beveled.
Ans. 4. The Examiner concluded it would have been obvious to use the
beveled edge of Schober along the line of weakness 56 of Huellinghoff to
create a more decorative frame. Ans. 4-5.
Appellant repeats that arguments made against Huellinghoff for the
rejection of claims 1 and 11 and further argues that Schober does not teach
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or suggest “a continuous void extending between the first portion and the
second portion at an angle to a surface of the print media” as recited in
claim 9. App. Br. 17; Reply Br. 3.
The issue before us is:
Has Appellant shown that the Examiner erred in concluding that
claim 9 is unpatentable in view of Huellinghoff and Schober because
Schober does not disclose “a continuous void extending between the first
portion and second portion at an angle to a surface of the print media?”
The Examiner concluded that claim 24 is unpatentable in view of
Heullinghoff based in part on the finding that while Huellinghoff does not
specifically describe the weight of the media, use of print media with a
weight of up to 160 grams per square meter (gsm) would have been obvious
because “it has been held that discovering an optimum value of a result
effective variable involves only routine skill in the art.” Ans. 3-4 (citing
In re Boesch, 617 F.2d 272 (CCPA 1980)). Appellant argues that In re
Boesch does not apply to the present case. Reply Br. 3-4.
The issue before us is:
Has Appellant shown that the Examiner erred in the rejection of claim
24 because the holding of In re Boesch does not apply?

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 Specification describes the print media as usable in
“conventional imaging devices.” Spec. 2, para. 0006.
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2. Appellant’s Specification describes that the dimensions and weight
of the print media are determined generally by the chosen imaging
device. Spec. 5, para. 0022.
3. Appellant’s Specification describes imaging devices as “printers,
plotters, copiers, facsimile machines, multi-function imaging
devices and other similar devices for transferring a printable image
to a printable surface of a print media.” Spec. 3, para. 0015.
Appellant’s Specification elaborates that “most conventional
imaging devices are capable of handling a wide variety of media
sizes.” Spec. 5, para. 0022.
4. Appellant’s Specification describes that the print engine 464
represents the mechanical aspects of the imaging device 460.
Spec. 6, para. 0025.
5. Appellant’s Specification describes a preferred embodiment of the
system in which a processor-based device 450 communicates
image data for image 455 to imaging device 460, e.g., a printer
coupled to a personal computer. Spec. 6, para. 0024; fig. 4.
Formatter 462 of imaging device 460 interprets the image data,
renders the image data into a printable image, and provides the
printable image to print engine 464, which produces a tangible
image 468 on print media 100. Spec. 6, paras. 0024-0025; fig. 4.
6. Appellant’s Specification does not provide a lexicographic
definition of the claimed phrases “tangible image” and “image
created by the end user,” or the terms within those phrases. Spec.
passim.
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7. Appellant’s Specification describes that “many current
conventional imaging devices are capable of handling print media
of up to a weight of 160 gsm.” Spec. 5, para. 0022.
8. Appellant admits that claims 1 and 11 do not claim an “image.”
Reply Br. 1.
9. Appellant admits that Huellinghoff’s magnetic message display
can produce a user-generated image (within a composite of a user-
generated image and a pre-printed image), and can be “decorated
through addition of decorative articles and the like.” App. Br. 15,
16.
10. Huellinghoff discloses a magnetic message display and methods of
selectively framing messages on a message sheet of the display.
Huellinghoff, col. 1, ll. 6-9.
11. Huellinghoff discloses the magnetic message display comprises a
message sheet 18 made of magnetic sheet material (preferably a
flexible laminate), and is comprised of a magnetic layer 20 and a
“printable” layer 22. Huellinghoff, col. 2, ll. 28-32; figs. 1, 2.
12. Huellinghoff discloses that printable layer 22 has a message
section 30 that has a first face 34 comprised of a plurality of
discrete regions 44, each with a printed message composed of
pictorial message portions 46a-46l (e.g. photographs), and worded
message portions 48a-48l. Huellinghoff, col. 2, ll. 36-57; fig 1.
13. Huellinghoff does not expressly state that the message sheet 18
may be used in a printer or similar device. Huellinghoff, passim.
14. Huellinghoff discloses that message sheet 18 has a frame section
32 that includes a punch-out frame member 52 formed by
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concentric lines of weakness 54, 56. Huellinghoff, col. 2, ll. 36-
38; col. 3, ll. 3-5; fig. 1. Frame member 52 circumscribes a small
punch-out portion 58. Huellinghoff, col. 3, ll. 13-14.
15. Schober discloses art work matting for use in forming an overlay,
which can be placed between art work and a window board to
provide the appearance of a decorative fillet bordering the display
portion of the art work. Schober, col. 1, ll. 37-41; figs. 1, 2.
16. Schober discloses that the art work 10 is supported on a back mat
board 12 and covered with an overlay 14 comprised of four
overlay sections 16, cut from overlay parts 18. Schober, col. 2,
ll. 32-36; figs. 1, 2, 4. Overlay parts 18 include an elongated
strip 22 of art matting material with a beveled edge 30 at about a
45-degree angle to the face of strip 22. Schober, col. 2, ll. 38-42,
62-64; figs. 4, 5a, 5b. See also fig. 2 (beveled edge 30 depicted but
not labeled).

PRINCIPLES OF LAW
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
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art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”) The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
“Section 103 forbids issuance of a patent when ‘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.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art,
(3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
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ANALYSIS
Claim Construction
Claims 1, 9, and 11 recite a “user-customizable print media adapted
for use in a print engine of an imaging device,” that is “customizable by an
end user within the print engine of the imaging device” (emphasis added).
Print media, according to Appellant’s Specification, is usable in
conventional imaging devices with dimensions and weight determined
generally by the imaging device (Facts 1, 2). Imaging devices, according to
Appellant’s Specification, are devices such as printers and “other similar
devices for transferring a printable image to a printable surface of a print
media” (Fact 3). The print engine is described by Appellant’s Specification
as representational of the mechanical aspects of the imaging device, and
produces the tangible image on the print media from the printable image
provided by the formatter of the imaging device (Facts 4, 5). Giving claims
1, 9, and 11 the broadest reasonable interpretation consistent with the
Specification, a person of ordinary skill in the art would understand the
claims do not positively recite the tangible image2, but rather require the
print media to be capable of use in a conventional imaging device that
includes mechanical aspects (print engine) capable of transferring a printable
image to the surface of the print media (a tangible image).

Rejection of claims 1 and 11 under 35 U.S.C. § 102(b) as anticipated by
Huellinghoff
Appellant’s contention that Huellinghoff’s magnetic message display
is a composite of a user-generated image and a pre-printed image, and is

2 Appellant admits that claims 1 and 11 do not claim an image (Fact 8).
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therefore not “adapted to produce a tangible image representative of an
image generated by the end user” is unconvincing. App. Br. 15; Reply Br. 1.
First, by stating that Huellinghoff’s method produces a composite of a
user-generated image and a pre-printed image, Appellant has admitted that
Huellinghoff’s method produces, at least in part, a user-generated image
(Fact 9). Second, the transitional phrase “comprising” recited in claims 1
and 11 is open-ended and does not exclude additional, unrecited elements
such as pre-printed images. See Genentech, Inc. v. Chiron Corp., 112 F.3d
495, 501 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim
language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.). Further, Appellant’s Specification does not define the “tangible
image” or “image generated by the end user” as excluding other elements
(Fact 6). It is Appellant’s burden to precisely define the invention. See In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellant has admitted that
Huellinghoff’s method produces a user-generated image, and claims 1 and
11 do not prohibit the presence of pre-printed images.
We disagree with Appellant’s argument that Huellinghoff’s message
display (print media) lacks the structure to be capable of use in any
conventional imaging device that includes mechanical aspects (print engine)
capable of transferring a printable image to the surface of the print media (a
tangible image). See Reply Br. 1. Huellinghoff discloses a magnetic
message display that is preferably a flexible laminate, and comprised of two
sheets (Facts 10, 11). The back layer is magnetic, and the top layer is
“printable” (Fact 11). The printable layer includes messages comprised of
printable images such as photographs, and worded messages (Fact 12).
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While Huellinghoff does not expressly disclose that the message sheet is
adapted for use in an imaging device (Fact 13), because the layer is flexible,
“printable,” and includes photographs (Fact 10-12), we conclude by a
preponderance of the evidence the message sheet is necessarily capable of
being used and printed on with an imaging device.
Contrary to Appellant’s assertion that Huellinghoff’s message sheet is
too thick or too rigid for use in an imaging device, Huellinghoff discloses
the message sheet is preferably flexible, “printable,” and capable of
including photographs (Facts 10-12). See App. Br. 16. Further, Appellant’s
Specification broadly defines imaging devices as “devices that transfer a
printable image to a printable surface of a print media” (Fact 3).
We are also unpersuaded by Appellant’s assertion that the Examiner’s
finding that Huellinghoff describes a printable layer (media) that “may be
used in a copy machine, for silk screening, or with any other such ‘imaging
device’” is incorrect because silk-screening does not correspond to the
claimed imaging device. App. Br. 16 (quoting the Examiner’s Answer at 3).
This argument does not even address the Examiner’s finding that
Huellinghoff’s message sheet may be used in other imaging devices. Ans. 3.
Appellant cites to In re Zurko in support of the contention that the
Examiner cannot rely on the interpretation that Huellinghoff inherently has a
structure adapted to be customizable by an end user within the print engine
of an imaging device without a supporting reference or a line of reasoning.
In re Zurko, 258 F.3d 1379 (Fed.Cir. 2001); App. Br. 13-14, 16-17; Reply
Br. 2. We disagree.
The Federal Circuit in Zurko was reviewing an obviousness rejection
under § 103 and held that for “core factual findings in a determination of
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patentability, …the Board must point to some evidence in the record to
support these findings” to meet the Board’s responsibility to create an
administrative record for appellate review. In re Zurko, 258 F.3d at 1385-
1386. We do not see how the court’s decision in Zurko can be read to
prohibit a finding of inherent anticipation. In this case, the Examiner
pointed to Huellinghoff as evidence to support his finding of inherent
anticipation.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted).
Appellant asserts that Huellinghoff does not inherently have a
structure adapted to be customizable by an end user within the print engine
of an imaging device. Under principles of inherency, when a reference is
silent about an asserted inherent characteristic, it must be clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991). Once a prima facie case of anticipation has been established, the
burden shifts to the Appellant to prove that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
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applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”). See also In re Spada,
911 F.2d 705, 708-09 (Fed. Cir. 1990). “[A] prima facie case of anticipation
[may be] based on inherency.” In re King, 801 F.2d 1324, 1327 (Fed. Cir.
1986).
Based on our analysis, we find that Huellinghoff necessarily discloses
a message sheet (print media) capable of use in a conventional imaging
device that includes mechanical aspects (print engine) capable of
transferring a printable image to the surface of the print media (a tangible
image), and a person of ordinary skill in the art would recognize as much.
The Examiner has set forth a prima facie case of anticipation, and for the
reasons provided supra, Appellant has not met her burden to show that
Huellinghoff does not necessarily or inherently possess the characteristics of
the claimed print media. As such, Appellant has failed to demonstrate error
by the Examiner in the rejection of claims 1 and 11.

Rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Huellinghoff and Schober
Claim 9 contains the limitation of a continuous void extending
between the first and second portions of the first layer at an angle to the
surface of the print media.
Appellant’s argument that Schober does not teach or suggest “a
continuous void extending between the first portion and second portion at an
angle to a surface of the print media” does not address the rejection. See
Reply Br. 3. The rejection does not find that Schober discloses a continuous
void between a first and second portion, rather the rejection modifies the line
of weakness 56 of Huellinghoff to be a beveled edge as disclosed by
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Schober. Ans. 4-5. Huellinghoff discloses print media with a line of
weakness that is continuous as it circumscribes a small punch-out portion
(Fact 14). Schober discloses a beveled edge at 45 degree angle to the
surface of the material (Facts 15, 16). Thus, using the beveled edge of
Schober along the line of weakness of Huellinghoff forms a continuous void
extending between the first and second portions at an angle to the surface of
the print media as claimed. Appellant’s contention is an unconvincing
individual attack on Schober. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references).
Appellant also recites language in claim 9 that is similar to that of
claims 1 and 11, and repeats the arguments used for claims 1 and 11, adding
that Schober does not cure the deficiencies of Huellinghoff. App. Br. 17;
Reply Br. 2-3. For the reasons explained in the analysis of claims 1 and 11,
supra, these arguments are unconvincing, and there are no deficiencies for
Schober to cure.

Rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Huellinghoff
We agree with the Appellant that the Examiner’s rationale that the
case at hand is like In re Boesch is in error. See Reply Br. 4; Ans. 3-4. In
Boesch, the court held that discovery of an optimum value of a result-
effective variable in a known process is ordinarily within the skill of the art.
In re Boesch, 617 F.2d 272, 276 (CCPA 1980). In the case at hand, the
Examiner has not shown that weight of the print media is a result-effective
variable, and thus the holding of Boesch does not apply.
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NEW GROUND OF REJECTION
While Appellant has demonstrated the Examiner’s rationale for the
rejection of claim 24 is in error, we conclude that use of print media with a
weight of up to about 160 gsm was within the skill in the art at the time of
Appellant’s invention. We enter a new ground of rejection of claim 24
under 35 U.S.C. § 103(a) as unpatentable over Huellinghoff and Appellant’s
Admitted Prior Art. Appellant’s Specification admits that it was known in
the art many conventional imaging devices are capable of handling print
media of up to a weight of 160 gsm (Fact 7). Claim 24 is then using old
elements (Huellinghoff’s print media and use of a print media with a weight
of up to about 160 gsm), with each performing the same function it was
known to perform. Further, use of Huellinghoff’s print media in a weight
compatible with many conventional imaging devices yields a print media
capable of widespread usage, a result no more than what one would expect
from such an arrangement, so that the combination would have been obvious
to one having ordinary skill in the art at the time of Appellant’s invention.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing Sakraida v.
Ag Pro, Inc., 425 U.S. 273 (1976)).

CONCLUSIONS
Appellant has failed to show the Examiner erred in finding that
Huellinghoff’s magnetic message display is “adapted to produce a tangible
image representative of an image generated by the end user.”
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Appellant has failed to show the Examiner erred in finding that
Huellinghoff discloses a user-customizable print media adapted to produce a
tangible image from the print engine of an imaging device.
Appellant has failed to show that the Examiner erred in finding that
Huellinghoff inherently discloses a structure adapted to be customizable by
an end user with a print engine of an imaging device.
Appellant has failed to show that the Examiner erred in concluding
that claim 9 is unpatentable in view of Huellinghoff and Schober because the
proposed combination of Huellinhoff and Schober renders obvious “a
continuous void extending between the first portion and second portion at an
angle to a surface of the print media.”
Appellant has demonstrated the Examiner erred in the rejection of
claim 24 because the holding of In re Boesch does not apply.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1, 9, and 11.
We REVERSE the Examiner’s decision to reject claim 24.
We enter a NEW GROUND OF REJECTION of claim 24 under
35 U.S.C. § 103(a) as being unpatentable over Huellinghoff and Appellant’s
Admitted Prior Art.
Regarding the affirmed rejection(s), 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.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides “[a] new ground

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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
rejections, 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 rejections are 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 rejections, including any timely request for
rehearing thereof.

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

Vsh
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