10596266 (P.T.A.B. Feb. 26, 2013)

Ex Parte Weitzel et al

Patent Trial and Appeal BoardFeb 26, 2013

10596266 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/596,266 06/07/2006 Hans Peter Weitzel WAS0768PUSA 4695 22045 7590 02/26/2013 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 EXAMINER KOLLIAS, ALEXANDER C ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 02/26/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WACKER CHEMIE AG (Inventors: Hans Peter Weitzel and Franz Jodlbauer) ____________________ Appeal 2012-000532 Application 10/596,266 Technology Center 1700 ____________________ Before FRED E. McKELVEY, CHARLES F. WARREN and MARK NAGUMO, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000532 Application 10/596,266 2 Statement of the case Wacker Chemie AG (“applicant”), the real party in interest (Brief, page 1), 1 seeks review under 35 U.S.C. § 134(a) of a final rejection dated 21 December 2 2010. 3 The application was filed in the USPTO on 07 June 2006. 4 The application on appeal (1) was filed on 09 December 2004 as 5 International Application PCT/EP2004/014044 which entered the national stage as 6 to the United States. 35 U.S.C. § 371. 7 The application on appeal claims priority of German Patent Application 8 103 59 703.4, filed 18 December 2003. 9 The application has been published as U.S. Patent Application Publication 10 2008/0281017 A1. 11 In support of prior art rejections, the Examiner relies on the following 12 evidence. 13 Guerin et al. “Guerin” U.S. Patent 6,369,153 B1 09 Apr. 2002 Botts et al. “Botts” U.S. Patent 7,070,795 B1 04 July 2006 filed 04 June 1999 Weitzel et al. “Weitzel” U.S. Patent Application Publication 2003/0018121 A11 23 Jan. 2003 1 Weitzel U.S. Patent 6,740,692 (25 May 2004) corresponds to the Weitzel U.S. Patent Application Publication. See Brief, page 8 n.4, referring to 7,742,692 with the 2 being an obvious typographical error. Appeal 2012-000532 Application 10/596,266 3 Applicant does not contest the prior art status of the evidence relied upon by 1 the Examiner. 2 Applicant relies on the following evidence. 3 First Declaration of Dr. Hans Peter Weitzel Dated 09 Aug. 2009 Second Declaration of Dr. Hans Peter Weitzel Dated 07 Oct. 2010 We have jurisdiction under 35 U.S.C. § 134(a). 4 Claims on appeal 5 Claims 34-51 are on appeal. Brief, page 2; Answer, page 3. 6 Independent Claims 43 (method) and 49 (composition), which we reproduce 7 from the Claim Appendix of the Brief, read [matter in brackets and indentation 8 added (see 37 C.F.R. § 1.75(i)); principal limitations in issue in italics]: 9 Claim 43 10 A process for increasing the resistance of a cured mineral 11 building product to microbial growth, comprising adding to 12 [1] a curable mineral building product composition, 13 [2] a water redispersible polymer powder composition 14 containing 15 at least one spray dried water redispersible polymer 16 powder admixed with 17 at least one solid biocidally active additive selected from 18 the group consisting of bactericide active (s), fungicide active 19 (s), and algicide active(s). 20 Appeal 2012-000532 Application 10/596,266 4 Claim 49 1 A curable mineral construction product comprising a water-2 redispersible polymer powder composition, said redispersible polymer 3 powder composition consisting of: 4 a water-redispersible polymer powder and 5 at least one biocidal additive selected from the group consisting 6 of bactericide active(s), fungicide active(s), and algicide active(s), 7 the biocidal additive being present in the water redispersible 8 polymer powder composition in an amount of 0.001 to 0.5 percent by 9 weight based on the weight of the water redispersible polymer powder 10 composition, and 11 wherein the water redispersible polymer powder composition 12 optionally contains one or more of emulsifiers, protective colloids, 13 antifoams, antiblocking agents, and hydrophobicizing agents. 14 Rejections 15 The Examiner has maintained three rejections in the Answer. 16 Rejection 1: Claim 43 stands rejected as anticipated under § 102 by Weitzel. 17 Answer, page 4. 18 Rejection 2: Claims 44-46 stand rejected as being unpatentable under 19 § 103(a) over Weitzel and Botts. Answer, page 5. 20 Rejection 3: Claims 49, 34-42, 47-48 and 50-51 stand rejected as being 21 unpatentable under § 103(a) over Guerin and Weitzel. Answer, page 6. 22 Appeal 2012-000532 Application 10/596,266 5 Analysis 1 Rejection 1 2 Claim 43 stands rejected under § 102(b) as anticipated by Weitzel. Answer, 3 page 4. 4 According to applicant, Claim 43 is not anticipated because Weitzel does not 5 describe “fungicidal active(s).” Brief, pages 10-11. Weitzel is characterized as not 6 adding “biocidal actives, but rather adds cyclodextrin complexes of a fungicidal 7 active.” Brief, page 12. 8 The language “fungicidal active(s)” is not defined in applicant’s 9 Specification as filed. The language first appears in an amendment dated 12 May 10 2009, responding to an Office action dated 12 February 2009. We therefore have 11 to determine what “fungicidal active(s)” means in context. 12 Weitzel describes a composition containing a combination of elements a) 13 through e) (¶ 0009). Two elements are: (1) a polymer [element a)] and (2) a 14 “fungicide complexed with cyclodextrin” [element b)] (¶¶ 0008). Alternatively, 15 Weitzel describes the use of a “fungicide b) . . . in the form of a cyclodextrin 16 complex.” (¶ 0034)—see also ¶ 0009 and Claim 1. Preparation of cyclodextrin 17 complexes containing a fungicidal active ingredient are described in Weitzel 18 ¶ 0036.2 19 2 Paragraph 0036 of Weitzel refers to J. Sejtli, “CYCLODEXTRIN TECHNOLOGY”, Kluwer Academic Publishes, 1988, p. 86 ff for a discussion of the preparation of cyclodextrin complexes. In the Brief, applicant cites and discusses Sejtli. Brief, page 6. The Examiner noted, inter alia, that a copy of Sejtli had not been provided. Answer, page 19. We decline to consider arguments based on Sejtli because applicant has not (1) shown where Sejtli was entered in the record by the Appeal 2012-000532 Application 10/596,266 6 According to Dr. Hans Peter Weitzel, an inventor named in the application 1 on appeal, “[a]n ‘active’ is a composition which is wholly biocide.” Second 2 Declaration of Weitzel (dated 7 October 2010), page 2:12-13. Further according to 3 Dr. Weitzel, “[t]he [Weitzel] complex itself is not an ‘active’ as that term is known 4 in the art, as the latter term [“active”] applies only to the complexed ingredient, 5 i.e., N-octylisothiazolinone, not the complex of the ‘active’ with cyclodextrin.” Id. 6 at 2:6-8. Applicant’s use of the term “active(s)” as limited to an active ingredient 7 is consistent with applicant’s description of the prior art in the Specification 8 (page 2:16-17) as filed: “WP10105 discloses coating compositions containing 9 fungicides as complexes with cyclodextrin.” “WP10105” is apparently intended to 10 be a reference to “Wacker Chemie’s internal designation of the” application 11 published as the Weitzel publication.3 Brief, page 10, last three lines. Applicant 12 through use of the language “fungicide active(s)” seemingly would not intend to 13 Examiner or (2) provided a copy in the Evidence Appendix of the Brief. We decline the request in the Reply Brief to take judicial notice of Sejtli. See (1) In re Eynde, 480 F.2d 1364, 1370 (CCPA 1973) (facts constituting the state of the art are normally subject to the possibility of rational disagreement among reasonable people and are not amenable to the taking of official notice) and (2) In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (assertions of technical fact in areas of esoteric technology must always be supported by citation to some reference work [admitted in evidence] and recognized as standard in the pertinent art and facts officially noticed should not constitute the principal evidence upon which a rejection is based). 3 In the event of further prosecution, we recommend that applicant via an appropriate amendment clarify the meaning of the designation “WP10105”. Absent the discussion in the Brief, it is not at all apparent how one skilled in the art reading the application on appeal would know what WP10105 means. An explicit reference to Weitzel should appear in place of “WP10105.” Appeal 2012-000532 Application 10/596,266 7 claim something that applicant admits is part of the prior art. The Specification 1 also states that “[f]or the purposes of the present invention, biocides or biocidally 2 active additives are bactericides, fungicides and algicides.” Specification, 3 page 2:32-34. 4 The Specification, inventor Weitzel’s testimony and the prosecution history 5 are sufficiently clear in our view to hold that “fungicide active(s)” is limited to a 6 fungicidal active ingredient per se. The language “fungicide active(s)” in the 7 claims on appeal does not include a fungicide in the form of a cyclodextrin 8 complex. 9 Since Weitzel describes a combination of a polymer and a fungicide in the 10 form of a cyclodextrin complex, we cannot find that Weitzel describes mixing a 11 polymer with a “fungicide active(s).” It follows that Weitzel does not anticipate 12 Claim 43. 13 Rejection 1 is reversed. 14 The fact that Weitzel does not anticipate Claim 43, however, does not mean 15 that we hold Claim 43 to be patentable. As noted later in this opinion, we enter a 16 new rejection of Claim 43 under § 103 over Guerin and Weitzel. 17 Rejection 2 18 Claims 44-46 depend from claim 43 and stand rejected under § 103 over 19 Weitzel and Botts. Answer, page 5. 20 The Examiner found that Weitzel differs from Claim 44 in that Weitzel does 21 not describe a process of spray drying an aqueous polymer dispersion with a 22 biocide. Answer, page 5. The Examiner turned to Botts to overcome the perceived 23 difference. Id. 24 Appeal 2012-000532 Application 10/596,266 8 Botts does not describe mixing a polymer with a “fungicidal active(s)” as 1 called for by independent Claim 43. Accordingly, the combination of Weitzel and 2 Botts fails to describe all the elements of Claims 44-46. 3 Rejection 2 is reversed. 4 The fact that Weitzel and Botts do not render obvious the subject matter of 5 Claims 44-46, however, does not mean that we hold Claims 44-46 to be patentable. 6 As noted later in this opinion, we enter a new rejection of Claims 44-46 under 7 § 103 over Guerin and Weitzel. 8 Rejection 3 9 Claims 34-42 and 47-51 (all claims except Claims 43-46) stand rejected as 10 being unpatentable under § 103(a) over Guerin and Weitzel. Answer, page 6. 11 Background 12 Applicant provides the following background description in the 13 Specification (page 1:8 to page 2:8) (italics added): 14 Mineral building compositions, for example lime- or cement-15 bonded building materials such as plasters and renders, knifing fillers 16 and building adhesives need to be protected against weathering 17 influences and microbiological attack by microorganisms, fungi and 18 algae. Particularly under moist weathering conditions, exterior walls 19 are regularly damaged after a few years by growth of algae and fungi 20 if they are not protected by means of appropriate measures. This is 21 alleviated in practice by use of fungicides and/or algicides which are 22 added in high active compound concentrations to the building 23 materials in the dry mortar works or on the building site (film 24 Appeal 2012-000532 Application 10/596,266 9 preservation). A disadvantage of this is that these active compounds 1 are [said to be] quickly degraded under the strongly basic conditions 2 prevailing in the liquid building compositions, and for this reason 3 appropriately large amounts have to be used or the effectiveness 4 decreases considerably over the course of time. 5 In the use of polymer dispersions, pot preservation has long 6 been prior art in order to protect the aqueous product against 7 microbiological attack. For this purpose, use is made first and 8 foremost of biocidally active compounds. 9 Water-redispersible powders based on homopolymers or 10 copolymers of ethylenically unsaturated monomers are used as 11 binders in the building sector, for example in combination with 12 hydraulically setting binders such as cement. These serve, for 13 example, to improve the mechanical strength and the adhesion in 14 building adhesives, plasters and renders, mortars and paints. 15 [According to applicant,] [m]icrobiogically active additives 16 have hitherto not been employed in the preparation and use of 17 redispersion powders, since these systems are not prone to attack in 18 the dry state. These redispersion powders corresponding to the prior 19 art therefore [are said to] make no contribution to the protection of 20 coatings on the outside of buildings against microbiological attack and 21 attack by algae and fungi. 22 In presenting the last above-quoted paragraph in the Specification, it appears 23 that applicant was not aware of Guerin. 24 Appeal 2012-000532 Application 10/596,266 10 Guerin 1 One object of the Guerin invention is to provide a redispersible powder 2 for use as an additive to hydraulic binders of the mortar or concrete type. 3 Col. 1:63-66. 4 Guerin reveals (col. 8:64 to col. 9:12) (italics added): 5 [T]he [Guerin] invention relates to the use of the pulverulent 6 compositions described above in the building industry as additives to 7 mixtures of inorganic hydraulic binders for the production of 8 protective and decorative coatings, adhesive mortars and adhesive 9 cements intended for affixing tiles and floor coverings. They prove 10 especially useful for the preparation of ready-to-use powdered 11 products based on cement and also on plaster. 12 * * * 13 The pulverulent compositions . . . can contain, in addition, standard 14 additives, especially biocides, microbiostats, bacteriostatics and 15 silicone and organic . . .[antifoam agents]. 16 What does Guerin mean by “the pulverulent compositions described above”? 17 According to Guerin, the: 18 invention . . . relates, in effect, to a water-redispersible pulverulent 19 composition obtained by mixing and then drying an emulsion of at 20 least one water-insoluble film-forming polymer, at least one main 21 surfactant and at least one water-soluble compound . . . 22 Col. 2:1-6. 23 Appeal 2012-000532 Application 10/596,266 11 The film-forming polymers are those typically used in making water-1 redispersible compositions, e.g., homo- or co-polymers of vinyl acetate and 2 styrene/butadiene copolymers. Col. 2:52-55. See also Weitzel, ¶ 0011 (vinyl 3 acetate) and ¶ 0013 (styrene and butadiene) and compare Specification, 4 page 5:30-32 (homo- and co-polymers of vinyl acetate) and page 6:10-11 5 (copolymers of 1,3-butadiene and styrene). 6 It is known that redispersible powders can be obtained by spraying and 7 drying. Guerin, col. 1:13-15. 8 In its examples, Guerin describes atomizing liquid polymer mixtures to 9 obtain redispersible powders using an entry temperature of 110 ºC and exit 10 temperature of 70 ºC. See, e.g., col. 9:62-64, col. 10:14-16 and 39-41. Compare 11 Specification, page 9:6-13: 12 The dispersions [of applicant’s invention] are preferably spray dried. 13 Spray drying is carried out in customary spray drying units, with 14 atomization being able to be effected by means of single-fluid, two-15 fluid or multifluid nozzles or by means of a rotating disk. The outlet 16 temperature is . . . preferably from 60 ºC to 90 ºC, depending on the 17 unit, the Tg of the resin and the desired degree of drying. 18 Guerin therefore describes a process of spray drying a film-forming polymer 19 containing suitable ingredients (including biocides) to form a redispersible powder. 20 Difference between Guerin and Claim 49 21 The Examiner found that Guerin differs from the subject matter of Claim 49 22 in that Guerin does not describe numerically the use of a biocidal additive in an 23 Appeal 2012-000532 Application 10/596,266 12 amount of from 0.001 to 0.5 weight percent. Answer, page 6. The Guerin 1 disclosure supports the Examiner’s finding. 2 Prima facie case 3 To overcome the difference, the Examiner turned to Weitzel. 4 Weitzel reveals that “fungicides are normally used in an amount of from 5 0.001 to 0.2% by weight, based on the overall weight of . . . [a] coating 6 composition.” Weitzel ¶ 0028, last sentence. 7 The Weitzel fungicide amount falls squarely within applicant’s required 8 range of 0.001 to 0.5% by weight. Applicant concedes that biocides are often 9 added to aid in atomization during spray drying or to prevent a powder from 10 mildewing during storage. Brief, page 18:19-20. But, applicant alleges that 11 Guerin does not indicate “how much” biocide is to be added. Brief, page 18:21. 12 We find it difficult to imagine that one having ordinary skill in this art would not 13 have the necessary skill to ascertain an appropriate amount of biocide to be used 14 when electing to include a biocide in the Guerin invention. Applicant concedes 15 that biocides are often added to aid in atomization during spray drying or to 16 prevent a powder from mildewing during storage. Brief, page 18:19-20; see also 17 Specification, page 1:27-31. Applicant’s argument concerning an alleged inability 18 of one having ordinary skill in the art to be capable of determining an appropriate 19 amount of biocide relegates one skilled in the art to an “automaton”, a notion 20 rejected by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of 21 ordinary skill is also a person of ordinary creativity, not an automaton.”). 22 Applicant argues that Weitzel teaches away from the Claim 49 invention 23 because Weitzel is limited to a fungicide in the form of a cyclodextrin complex. 24 Appeal 2012-000532 Application 10/596,266 13 Brief, page 18, last paragraph. The Examiner, however, has not relied upon 1 Weitzel to address the use of biocides in redispersible powders. Rather, the 2 Examiner turned to Weitzel to establish the amount of fungicide to be used. 3 Answer, page 32:8-10. Applicant simply cannot deny that when the Weitzel 4 composition is ultimately used that a certain amount of fungicide has to be 5 available (i.e., released from the cyclodextrin complex) in order to achieve the 6 ultimate Weitzel objective. Weitzel tells those skilled in the art how much 7 fungicide to have present. 8 Unexpected results 9 Relevant to the obviousness issue on appeal is data in the Specification and a 10 First Weitzel Declaration (dated 9 Aug. 2009). According to applicant, the data 11 establishes “surprising and unexpected results.” Brief, page 19:5-6. 12 The Specification describes four experiments in which “growth” was 13 measured as a function of the amount of fungicide in a redispersible polymer 14 powder. 15 The results are reported as follows (page 13; Table 2) (ppm and percentages 16 added): 17 Example 3 months 6 months 9 months 12 months ppm % 1 0 0 0 0 22.5 0.00225 2 0 0 0 0 10.5 0.00105 Comp 3 0 + ++ +++ 0 0 Comp 4 0 0 + + 225 0.0225 A zero (0) = no growth, + = small amount of growth, ++ = moderate amount 18 of growth and +++ = large amount of growth. 19 Appeal 2012-000532 Application 10/596,266 14 Additional results are reported in the First Weitzel Declaration, which we 1 understand in a light most favorable to applicant to be as follows (Declaration, 2 pages 3-4): 3 Example 3 months 6 months 9 months 12 months ppm % 5 0 0 0 0 750 0.075 6 0 0 0 0 750 0.075 7 0 0 0 0 750 0.075 The purpose of the Examples 5-7 data appears to be to show that the 4 polymer used to make the redispersible polymer powder makes no significant 5 difference. Example 5 is a vinyl acetate/ethylene copolymer, Example 6 is a vinyl 6 chloride, vinyl laurate and ethylene copolymer and Example 7 is a homopolymer 7 of vinyl acetate. 8 For a variety of reasons, the Examiner declined to credit the “evidence” of 9 “unexpected results.” Answer, pages 33-35 ¶ 25. We agree with some, but not all, 10 of the Examiner’s reasons. 11 An applicant attempting to establish unexpected results must do so with 12 clear and convincing evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It 13 was incumbent upon appellants to submit clear and convincing evidence to support 14 their allegation of unexpected . . . property.”). See also McClain v. Ortmayer, 141 15 U.S. 419, 429 (1891) (conclusive evidence needed to establish new function). 16 Moreover, a showing of unexpected results must be commensurate scope with a 17 claimed range. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“[T]he record 18 does not show that the improved performance would result if the weight-19 percentages were varied within the claimed ranges. Even assuming that the results 20 Appeal 2012-000532 Application 10/596,266 15 were unexpected, Harris needed to show results covering the scope of the claimed 1 range.”). 2 No time frame for fungicidal activity is recited in the claims, e.g. 3 months 3 or 12 months. Answer, page 35:12-14. The range claimed is 0.001 to 0.5%. The 4 data points shown are (1) 0.0105, (2) 0.0255 and (3) 0.075. “Comparative” 5 Example 4, (1) which is compared to “Inventive” Examples 1 and 2 and (2) has an 6 amount of fungicide that falls within the claimed range, (3) reports a small amount 7 of growth of “+”. The “+” result is entirely expected given that the use of no 8 fungicide results in a large amount of growth of “+++”. Comparative Example 4 9 therefore compares the invention to the invention—not the invention to a prior art 10 range outside that of Claim 49. 11 Given that the addition of a fungicide would have been expected to 12 minimize growth, we decline to find that any example shows an unexpected result. 13 Assuming that Examples 1, 2 and 5-7 show an unexpected result, we find that the 14 data does not establish an unexpected result commensurate in scope with the 15 breadth of the claims. Applicant, on this record, has failed to establish that it 16 achieves any new or unexpected function. 17 The Examiner found that Comparative Example 4 is not a proper side-by-18 side comparison noting that the amount of biocide differs from that in Examples 1 19 and 2. Answer, page 34. The Examiner’s point is not altogether clear to us. 20 Examples 1, 2 and 4 appear to be “invention” examples. While we agree with the 21 Examiner that any difference between “small amount of growth” and “no growth” 22 is at best subjective, we do not believe growth test results to be entirely irrelevant. 23 On this record, however, the growth data is simply not convincing of an 24 Appeal 2012-000532 Application 10/596,266 16 unexpected result per se or, if so, that any unexpected result is commensurate in 1 scope with the breath of the claims. We agree with applicant, on the record before 2 us, that the nature of the polymer does not appear to be significant. See, e.g., 3 Examples 5-7. 4 Decision on Rejection 3 5 Rejection 3 is affirmed. Claims 43-46 are deemed to be unpatentable over 6 Guerin and Weitzel for the same reasons that Claim 49 is unpatentable. Applicant 7 has not separately argued the patentability of individual claims. Hence, we have 8 decided Rejection 3 on the basis of Claim 49. 37 C.F.R. § 41.37(c)(1)(vii). The 9 other claims stand or fall with Claim 49. 10 Other observations 11 Applicant refers to Rossmore (HANDBOOK OF BIOCIDE AND PRESERVATIVE 12 USE). Brief, page 6:20-21. The Examiner declined to consider Rossmore because 13 a copy of Rossmore has not been provided. Answer, page 19. We agree that the 14 Examiner properly declined to consider Rossmore. Since Rossmore was not 15 considered by the Examiner, we likewise have not considered Rossmore or 16 arguments based on Rossmore. 17 Two documents in German accompany the Second Weitzel Declaration. No 18 English language translation has been submitted. We therefore have not 19 considered the two documents or arguments based on those documents (Brief, 20 page 4). 21 Appeal 2012-000532 Application 10/596,266 17 Other arguments 1 We have considered applicant’s remaining arguments and find none that 2 warrant reversal of Rejection 3. Cf. In re Antor Media Corp., 689 F.3d 1282, 3 1294 (Fed. Cir. 2012). 4 Decision 5 Upon consideration of the appeal, and for the reasons given herein, it is 6 ORDERED that the decision of the Examiner rejecting Claim 43 as 7 anticipated by Weitzel is reversed. 8 FURTHER ORDERED that the decision of the Examiner rejecting 9 Claims 44-46 over Weitzel and Botts is reversed. 10 FURTHER ORDERED that the decision of the Examiner rejecting 11 Claims 34-42 and 47-51 over Guerin and Weitzel is affirmed. 12 FURTHER ORDERED that Claims 43-46 are newly rejected for 13 reasons given in support of our affirmance of Rejection 3. 14 FURTHER ORDERED that since our rationale for affirmance of 15 Rejection 3 addresses points not raised by the Examiner and we have newly 16 rejected Claims 43-46, our affirmance and new rejection are designated as a new 17 rejection. 37 C.F.R. § 41.50(b). 18 FURTHER ORDERED that our decision is not a final agency 19 action. 20 FURTHER ORDERED that within two (2) months from the date of 21 our decision, appellant may further prosecute the application on appeal by 22 exercising one of the two following options: 23 Appeal 2012-000532 Application 10/596,266 18 Option 1: Request that prosecution be reopened by submitting 1 an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1). 2 Option 2: Request rehearing on the record presently before the 3 Board. 37 C.F.R. § 41.50(b)(2). 4 FURTHER ORDERED that no time period for taking any 5 subsequent action in connection with this appeal may be extended under 37 C.F.R. 6 § 1.136(a)(1)(iv). 7 AFFIRMED 8 9 bar 10