Ex Parte Thomson

Board of Patent Appeals and Interferences

May 11, 2009

10278462 (B.P.A.I. May. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte RODNEY A. THOMSON 8
___________ 9
10
Appeal 2009-0596 11
Application 10/278,462 12
Technology Center 3600 13
___________ 14
15
Decided:1 May 11, 2009 16
___________ 17
18
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 19
ANTON W. FETTING, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE 1
Rodney A. Thomson (Appellant) seeks review under 35 U.S.C. § 134 of a final 2
rejection of claims 1-12 and 24-37, the only claims pending in the application on 3
appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
We REVERSE and ENTER A NEW GROUND OF REJECTION 6
PURSUANT TO 37 C.F.R §41.50(b) (2008). 7
The Appellant invented a method for addressing a consumer’s needs by 8
allocating resources to the consumer based on the consumer’s requirements 9
(Specification Page 1, lines 5-9). 10
An understanding of the invention can be derived from a reading of exemplary 11
claims 1, 24, and 28, which are reproduced below [bracketed matter and some 12
paragraphing added]. 13
1. A method for matching a resource to a consumer, comprising: 14
[1] detecting a consumer presence on an enterprise site, wherein 15
said step of detecting said consumer presence on said enterprise site 16
comprises: 17
[a] detecting the initiation of communications between a 18
consumer wireless communication device and a wireless network 19
associated with said enterprise site; 20
[2] acknowledging said consumer presence; 21
[3] detecting a need to assist said consumer; and 22
[4] providing a resource to said consumer. 23
24
24. A system for matching a consumer to a resource at an enterprise 25
site, comprising: 26
[1] means at said enterprise site comprising a means for 27
establishing a communication link between said consumer and said 28
resource and a means for detecting the presence of said consumer at 29
said enterprise site; 30
[2] means for detecting a need of said consumer for assistance, 31
wherein a communication of said need of said consumer for assistance 32
is delivered over said communication link; 33
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[3] means for communicating said detected presence of said 1
consumer and said detected need of said consumer for assistance to an 2
enterprise server computer means; and means for providing said 3
consumer with said assistance in response to said detected pressure of 4
said consumer and said need of said consumer for assistance, 5
comprising at least one of means for communicating information from 6
said enterprise server computer means to said consumer, said means 7
for establishing a communication link between said consumer and 8
said resource, means for directing said consumer to a qualified 9
resource, and means for directing said resource to a location of said 10
consumer. 11
12
28. A system for matching a consumer to an on-site enterprise 13
resource, comprising: 14
[1] a wireless network, including: 15
[a] an enterprise antenna, wherein said enterprise antenna is 16
located at an enterprise site; 17
[b] a transceiver; 18
[2] a server computer in communication with said wireless network 19
transceiver, including: 20
[a] a data storage device for storing at least one of 21
applications and data; 22
[b] a processor; 23
[c] software stored in said data storage device and operative 24
on said processor for detecting the presence of a wireless device 25
associated with a consumer in communication with said wireless 26
network at said enterprise site, for detecting a need of said consumer 27
for assistance, and for acknowledging said need of said consumer for 28
assistance; and 29
[d] software stored in said data storage device and operative on said 30
processor for providing at least one of said wireless device with data 31
and a resource to said consumer. 32
33
This appeal arises from the Examiner’s Final Rejection, mailed April 20, 2007. 34
The Appellant filed an Appeal Brief in support of the appeal on September 20, 35
2007. An Examiner’s Answer to the Appeal Brief was mailed on December 13, 36
2007. A Reply Brief was filed on February 13, 2008. 37
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PRIOR ART 1
The Examiner relies upon the following prior art: 2
Duvall US 6,847,825 B1 Jan. 25, 2005 3
4
REJECTIONS 5
Claims 1-5, 7-12, and 24-36 stand rejected under 35 U.S.C. § 102(e) as 6
anticipated by Duvall. 7
Claims 6 and 37 stand rejected under 35 U.S.C. § 103(a) as unpatentable 8
over Duvall. 9
10
ISSUES 11
The issues pertinent to this appeal are (1) whether the Appellant has 12
sustained his burden of showing that the Examiner erred in rejecting claims 1-5, 7-13
12, and 24-36 under 35 U.S.C. § 102(e) as anticipated by Duvall and (2) whether 14
the Appellant has sustained his burden of showing that the Examiner erred in 15
rejecting claims 6 and 37 under 35 U.S.C. § 103(a) as unpatentable over Duvall. 16
The pertinent issues turn on whether Duvall describes an enterprise site and 17
whether Duvall describes detecting a consumer presence on an enterprise site. 18
19
FACTS PERTINENT TO THE ISSUES 20
The following enumerated Findings of Fact (FF) are believed to be 21
supported by a preponderance of the evidence. 22
Facts Related to Claim Construction 23
01. The disclosure contains no lexicographic definition of “enterprise 24
site.” 25
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02. The plain meaning of “enterprise site” is a site modified by the noun 1
adjective enterprise, i.e., being in some manner possessed or owned by 2
an enterprise. The plain meaning of “enterprise site” can be interpreted 3
as a physical location or a virtual site. 4
Facts Related to Appellant’s Disclosure 5
03. The Specification describes an enterprise site as a physical location, 6
illustrated by describing that the detection of a consumer may be 7
performed in connection with a consumer wireless device that is either 8
brought to the enterprise by the consumer, or picked up and activated by 9
the consumer upon entering the site (Specification Page 2, lines 15-18) 10
and by describing that a consumer may be standing at a particular 11
location at an enterprise site (Specification Page 3, lines 1-3). The 12
Specification further describes an enterprise site as a physical location 13
by describing how resources may be dispatched to assist or greet the 14
consumers (Specification Page 3, lines 3-4) and by describing that 15
consumers may be directed to an appropriate area of the enterprise site 16
from the consumer’s present location when the consumer requires 17
assistance in locating a particular item (Specification Page 3, lines 4-6). 18
04. The Specification describes a retail outlet as an example of an 19
“enterprise site” (Specification Page 1, line 10-11). 20
Duvall 21
05. Duvall is directed to vehicle communication equipment that with the 22
use of cell phones and GPS technology can provide services to the driver 23
of that vehicle (column 1, lines 9-13). 24
06. Duvall’s communication equipment’s use begins with a user placing a 25
phone call using the user’s cellular phone and the call is connected 26
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through a network antenna to the call center using a normal voice 1
cellular radio phone channel (column 4, lines 21-27). 2
07. The call center verifies the caller’s user ID by requesting a PIN code 3
from the user (column 4, lines 26-29). 4
08. The call center sends a radio signal on a separate second radio channel 5
to a transponder-GPS receiver module provided in the vehicle (column 6
4, lines 30-34). 7
09. The vehicle module antenna receives the radio signal and activates the 8
GPS receiver (column 4, lines 34-37). The vehicle position is then 9
determined using the signal from the GPS satellite (column 4, lines 37-10
39). 11
10. The vehicle module transponder submits the vehicle location along 12
the second radio channel to the call center (column 4, lines 42-45). 13
11. The call center ties the second radio data channel to the first radio 14
voice channel of the call placed by the user and informs the user of the 15
user’s location on the voice channel (column 4, lines 45-47). 16
Facts Related To The Level Of Skill In The Art 17
12. Neither the Examiner nor the Appellant has addressed the level of 18
ordinary skill in the pertinent art of resource allocation. We will 19
therefore consider the cited prior art as representative of the level of 20
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 21
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill 22
in the art does not give rise to reversible error ‘where the prior art itself 23
reflects an appropriate level and a need for testimony is not shown’”) 24
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 25
158, 163 (Fed. Cir. 1985)). 26
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Facts Related To Secondary Considerations 1
13. There is no evidence on record of secondary considerations of non-2
obviousness for our consideration. 3
4
PRINCIPLES OF LAW 5
Claim Construction 6
During examination of a patent application, pending claims are given 7
their broadest reasonable construction consistent with the specification. In 8
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. 9
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 10
Limitations appearing in the specification but not recited in the claim are not 11
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. 12
Cir. 2003) (claims must be interpreted “in view of the specification” without 13
importing limitations from the specification into the claims unnecessarily). 14
Although a patent applicant is entitled to be his or her own lexicographer of 15
patent claim terms, in ex parte prosecution it must be within limits. In re Corr, 16
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such 17
definitions in the specification with sufficient clarity to provide a person of 18
ordinary skill in the art with clear and precise notice of the meaning that is to be 19
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although 20
an inventor is free to define the specific terms used to describe the invention, this 21
must be done with reasonable clarity, deliberateness, and precision; where an 22
inventor chooses to give terms uncommon meanings, the inventor must set out any 23
uncommon definition in some manner within the patent disclosure so as to give 24
one of ordinary skill in the art notice of the change). 25
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Indefiniteness 1
The test for definiteness under 35 U.S.C. § 112, second paragraph, is 2
whether “those skilled in the art would understand what is claimed when the claim 3
is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, 4
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). 5
Anticipation 6
"A claim is anticipated only if each and every element as set forth in the 7
claim is found, either expressly or inherently described, in a single prior art 8
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 9
(Fed. Cir. 1987). "When a claim covers several structures or compositions, either 10
generically or as alternatives, the claim is deemed anticipated if any of the 11
structures or compositions within the scope of the claim is known in the prior art." 12
Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The identical invention must 13
be shown in as complete detail as is contained in the ... claim." Richardson v. 14
Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be 15
arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., 16
identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 17
1990). 18
Obviousness 19
A claimed invention is unpatentable if the differences between it and the 20
prior art are “such that the subject matter as a whole would have been obvious at 21
the time the invention was made to a person having ordinary skill in the art.” 35 22
U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); 23
Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 24
In Graham, the Court held that that the obviousness analysis is bottomed on 25
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be 26
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determined; [(2)] differences between the prior art and the claims at issue are to be 1
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383 2
U.S. at 17. See also KSR, 550 U.S. at 406-07. “The combination of familiar 3
elements according to known methods is likely to be obvious when it does no more 4
than yield predictable results.” Id. at 416. 5
“When a work is available in one field of endeavor, design incentives and 6
other market forces can prompt variations of it, either in the same field or a 7
different one. If a person of ordinary skill can implement a predictable variation, § 8
103 likely bars its patentability.” Id. at 417. 9
“For the same reason, if a technique has been used to improve one device, 10
and a person of ordinary skill in the art would recognize that it would improve 11
similar devices in the same way, using the technique is obvious unless its actual 12
application is beyond his or her skill.” Id. 13
“Under the correct analysis, any need or problem known in the field of 14
endeavor at the time of invention and addressed by the patent can provide a reason 15
for combining the elements in the manner claimed.” Id. at 420. 16
17
ANALYSIS 18
Claims 1-5, 7-12, and 24-36 rejected under 35 U.S.C. § 102(e) as anticipated 19
by Duvall 20
The Appellant argues these claims in three groups: 21
Group I Claims 1-5 and 7-12 22
Group II Claims 24-27 23
Group III Claims 28-36 24
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Group I 1
We select claim 1 as representative of the group. 2
37 C.F.R. § 41.37(c)(1)(vii) (2008). 3
The Examiner found that Duvall anticipated claim 1 (Answer Page 3). 4
The Appellant contends that (1) Duvall describes requesting location 5
information services using a cellular radio voice channel and using a GPS receiver 6
to determine location, which they argue is different from limitation [1] and 7
limitation [1a] of claim 1 (Br. Page 12, first paragraph and Reply Br. Page 4, first 8
paragraph) and (2) Duvall does not describe an enterprise site as per claims 1 and 3 9
(Br. Page 15, third paragraph, Br. Page 15, last paragraph, and Reply Br. Page 4, 10
last paragraph). 11
We agree with the Appellant. The Appellant’s arguments (1) and (2) are 12
connected in that if the Examiner’s finding of an enterprise site in Duvall is 13
improper, then a consumer in Duvall cannot be detected on an enterprise site. As 14
such, the term enterprise site must first be construed. The Examiner construed this 15
phrase as “a location where business can provider [sic.] customer with services” 16
(Answer Page 14). So we must determine whether this construction is proper. 17
First we look to the context of the claim for limitations. The claim only 18
requires that there be a wireless network associated with the enterprise site and that 19
a consumer presence is detected on the enterprise site. The claim appears to be 20
broad enough to allow for a broad definition of an enterprise site. 21
Next we look for any definition of the term. The Specification is silent on 22
providing a specific definition for an enterprise site. The Appellant contends that 23
the definition of an enterprise site is a retail outlet (Br. Page 15). However, the 24
Specification only describes this as an example and not as a special definition (FF 25
04). 26
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Next we review the Specification to determine whether any broad 1
construction would be unreasonably incompatible with the way the term is used. 2
On its face, the term “enterprise site” could be either a physical or virtual site. If it 3
were a virtual site, the presence detected by detecting a communication would be 4
trivially fulfilled, because communication would be the mechanism for entering a 5
presence. 6
The Specification describes the enterprise site as a physical location, 7
however, illustrated by the Specification describing that the detection of the 8
consumer may be performed in connection with a consumer wireless device that is 9
either brought to the enterprise by the consumer, or picked up and activated by the 10
consumer upon entering the site (FF 03) and by describing that a consumer may be 11
standing in a particular location at an enterprise site (FF 03). The Specification 12
further describes an enterprise site as a physical location by describing that 13
associates may be dispatched to assist or greet a consumer (FF 03) and by 14
describing a consumer may be directed to the specific location of an item (FF 03). 15
The Examiner is also interpreting an enterprise site to be a physical location 16
where a business can provide a consumer with services (Answer Page 14, first 17
paragraph). The Examiner appears to be accepting that the enterprise site is a 18
physical location, and not an internet site, since the Examiner is not raising this as 19
a point of contention. Furthermore, the Examiner’s construction of an enterprise 20
site as anywhere that a voice call can be placed is unambiguously a physical 21
location. Thus, there appears to be agreement that an enterprise site is a physical 22
location rather than a virtual site. 23
The Examiner’s construction of an enterprise site, however, isn’t consistent 24
or even compatible with the description of an enterprise site in the Specification. 25
The Specification illustrates that the enterprise site is more than just a physical 26
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location where a business can provide services. The plain meaning of enterprise 1
site is a site modified by the noun adjective enterprise, i.e., being in some manner 2
possessed or owned by an enterprise (FF 02). The Specification consistently uses 3
this term as a physical location that the business has some ownership or possession 4
over and upon which the consumer may be physically located (FF 03). As such, 5
the Examiner’s construction of an enterprise site is unreasonably broad in that it is 6
incompatible with the usage in the Specification. In particular, the Examiner 7
ignores the plain meaning of the modifier “enterprise” in construing the phrase to 8
mean anywhere (in the world) services may be provided. The Examiner states that 9
the construction comes from the Specification, but provides no definition or 10
analysis to support such a construction. In fact, under the Examiner’s construction, 11
given essentially world wide communication access, there would be no place that 12
would not be an enterprise site. Accordingly, we construe an enterprise site to be a 13
physical site whose domain is in some manner possessed or owned by an 14
enterprise. 15
Referring again to the Examiner’s construction of an enterprise site, the 16
Examiner found that in Duvall, services are provided to a user over the phone. 17
Applying the Examiner’s construction of an enterprise site renders Duvall’s 18
enterprise site being anywhere that a voice call can be placed. With such a 19
construction, the limitation of detecting a consumer presence on an enterprise site 20
would be meaningless, since one would never move onto an enterprise site from 21
off of the site for such detection to occur. 22
As such, we agree with the Appellant with respect to argument (2) because 23
Duvall fails to describe an enterprise site when construing the term enterprise site 24
under the broadest reasonable interpretation. It is not reasonable that anywhere 25
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that a call can be made from is a physical site possessed or owned by an enterprise. 1
It is not reasonable that some location on a public street or highway is an enterprise 2
site. 3
In response to Appellant’s first argument, which is that Duvall does not 4
detect the consumer only by detecting the initiation of communications between a 5
consumer wireless communication device and a wireless network associated with 6
said enterprise site (1), the Examiner responds that Duvall describes limitation [1] 7
and limitation [1a] without using the GPS system and the invention as claimed 8
does not preclude the additional use of a GPS system since claim 1 recites the term 9
“comprising” (Answer Page 12, last paragraph and Page 13, first paragraph). The 10
Examiner is correct in this assertion that the invention as claimed does not exclude 11
additional steps and in the assertion that Duvall detects a consumer presence by 12
detecting the initiation of communication between the consumer and a wireless 13
network of the enterprise site. However, because the Examiner’s construction of 14
an enterprise site is unreasonable, Duvall fails to describe detecting a consumer 15
presence on an enterprise site. For this reason, we agree with the Appellant that 16
Duvall fails to describe this feature. 17
The Appellant has sustained his burden of showing that the Examiner erred 18
in rejecting claims 1-5 and 7-12 under 35 U.S.C. § 102(e) as anticipated by Duvall 19
for the above reasons. 20
21
Group II 22
We select claim 24 as representative of the group. 23
The Examiner found that Duvall described all of the limitations of claim 1 24
and as such anticipated claim 24 (Answer Pages 5-6). 25
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The Appellant contends that (1) Duvall fails to describe limitation [1] of 1
claim 24 (Br. Page 16, last paragraph) and (2) Duvall fails to describe a single 2
means at an enterprise site (Br. Page 16, last paragraph and Br. Page 17, second 3
paragraph). 4
Claims 24-27 recite the term “enterprise site” and the feature of “detecting 5
the presence of said consumer at said enterprise site.” We found the Appellant’s 6
arguments regarding these features sufficient to overcome the Appellant’s burden 7
supra and so find these arguments sufficient here. As such, the Appellant has 8
sustained his burden of showing the Examiner erred in rejecting claims 24-27 9
under 35 U.S.C. § 102(e) as anticipated by Duvall. 10
11
Group III 12
We select claim 28 as representative of the group. 13
The Examiner found that Duvall described all of the limitations of claim 1 14
and as such anticipated claim 28 (Answer Page 7). 15
The Appellant contends that (1) Duvall fails to describe determining whether 16
a consumer is present at an enterprise site (Br. Page 18, last paragraph), (2) Duvall 17
fails to describe matching a consumer with an on-site enterprise resource (Br. Page 18
18, second paragraph), and (3) Duvall fails to describe limitations [1a] and [2c] of 19
claim 28 (Br. Page 18, second paragraph). 20
Claims 28-36 recite the term “enterprise site” and the feature of “detecting 21
the presence of a wireless device associated with a consumer in communication 22
with said wireless network at said enterprise site.” We found the Appellant’s 23
arguments regarding these features sufficient to overcome the Appellant’s burden 24
supra and so find these arguments sufficient here. As such, the Appellant has 25
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sustained his burden of showing the Examiner erred in rejecting claims 28-36 1
under 35 U.S.C. § 102(e) as anticipated by Duvall. 2
3
Claims 6 and 37 rejected under 35 U.S.C. § 103(a) as unpatentable over 4
Duvall 5
The Appellant argues these claims as a group. 6
Accordingly, we select claim 6 as representative of the group. 7
The Examiner found that Duvall fails to describe the limitation of claim 6. 8
However, the Examiner found that Duvall describes the feature enabling customers 9
to use their cellular phone to dial a toll-free number in order to initiate service 10
(Answer Page 10). The Examiner further found that one of ordinary skill in the art 11
would have recognized that voice recognition answer machines provide the benefit 12
of automating the routing of calls to the appropriate resource and it would have 13
been obvious to modify Duvall to include this feature (Answer Page 10). 14
The Appellant contends that (1) Duvall fails to describe interactive voice 15
recognition (Br. Page 20, first paragraph) and (2) claims 6 and 37 are were 16
improperly rejected for the same reasons set forth for independent claims 1 and 28, 17
which claims 6 and 37 depend from respectively (Br. Page 20, first paragraph). 18
The Appellant relies on its arguments in support of claims 1 and 28 above, 19
which we found to be sufficient to overcome the Appellant’s burden supra and so 20
has sustained his burden of showing that the Examiner erred in rejecting claims 6 21
and 37 under 35 U.S.C. § 103(a) as unpatentable over Duvall. 22
23
NEW GROUND OF REJECTION 24
The following new ground of rejection is entered pursuant to 25
37 C.F.R. § 41.50(b). Claims 1-12 and 24-37 are rejected under 35 U.S.C. § 112, 26
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second paragraph, as being indefinite for failing to particularly point out and 1
distinctly claim the subject matter which the Appellant regards as the invention. 2
Claims 1-12 and 24-37 recite the term “enterprise site.” The term 3
“enterprise site” is susceptible to two plausible definitions, which renders the 4
claims indefinite. The claims and Specification fail to provide a specific definition 5
for this term. The ordinary definition for this term could be interpreted to mean a 6
virtual site, such as an ordinary business website (FF 02). As such, it is unclear as 7
to what the Appellant intends to cover with the recited claim language. When a 8
claim is amenable to two or more plausible claim constructions, the claim is 9
indefinite for failing to particularly point out and distinctly claim the subject matter 10
the Appellant considers to be the invention. Ex Parte Miyazaki, 89 USPQ2d 1207, 11
1211 (BPAI 2008). Since the meaning of the claim is subject to two or more 12
plausible claim constructions, including one such construction viz., a virtual site, 13
that would result in the cited prior art trivially describing the claimed invention, a 14
new ground of rejection under 35 U.S.C. § 112, second paragraph, is entered. 15
16
CONCLUSIONS OF LAW 17
The Appellant has sustained their burden of showing that the Examiner erred 18
in rejecting claims 1-5, 7-12, and 24-36 under 35 U.S.C. § 102(e) as anticipated by 19
Duvall. 20
The Appellant has sustained their burden of showing that the Examiner erred 21
in rejecting claims 6 and 37 under 35 U.S.C. § 103(a) as unpatentable over Duvall. 22
A new ground of rejection is entered 37 C.F.R. § 41.50(b) in which claims 23
1-12 and 24-37 are rejected under 35 U.S.C. § 112, second paragraph, as being 24
indefinite for failing to particularly point out and distinctly claim the subject matter 25
which the Appellant regards as the invention. 26
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DECISION 1
To summarize, our decision is as follows: 2
• The rejection of claims 1-5, 7-12, and 24-36 under 35 U.S.C. § 102(e) as 3
anticipated by Duvall is not sustained. 4
• The rejection of claims 6 and 37 under 35 U.S.C. § 103(a) as unpatentable 5
over Duvall is not sustained. 6
• A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). 7
o Claims 1-12 and 24-37 are rejected under 35 U.S.C. § 112, second 8
paragraph, as being indefinite. 9
10
Our decision is not a final agency action. 11
In addition to affirming the Examiner's rejection(s) of one or more claims, 12
this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 13
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this 14
paragraph shall not be considered final for judicial review.” This Decision 15
contains a new rejection within the meaning of 37 C.F.R. § 41.50(b) (2007). 16
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO 17
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the 18
following two options with respect to the new rejection: 19
(1) Reopen prosecution. Submit an appropriate amendment of the 20
claims so rejected or new evidence relating to the claims so 21
rejected, or both, and have the matter reconsidered by the 22
Examiner, in which event the proceeding will be remanded to the 23
Examiner. . . . 24
25
(2) Request rehearing. Request that the proceeding be reheard under 26
§ 41.52 by the Board upon the same record. . . . 27
Should the Appellant elect to prosecute further before the Examiner pursuant 28
to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 29
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U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of 1
the affirmance is deferred until conclusion of the prosecution before the Examiner 2
unless, as a mere incident to the limited prosecution, the affirmed rejection is 3
overcome. 4
If the Appellant elects prosecution before the Examiner and this does not 5
result in allowance of the application, abandonment, or a second appeal, this case 6
should be returned to the Board of Patent Appeals and Interferences for final action 7
on the affirmed rejection, including any timely request for rehearing thereof. 8
No time period for taking any subsequent action in connection with this 9
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 10
11
REVERSED; 37 C.F.R. § 41.50(b) 12
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