2019004781 (P.T.A.B. May. 19, 2020)

Ford Global Technologies, LLC

Patent Trials and Appeals BoardMay 19, 2020

2019004781 (P.T.A.B. May. 19, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 14/729,121 06/03/2015 Thomas Nelson 83522027 4226 28395 7590 05/19/2020 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER BRASWELL, DONALD H.B. ART UNIT PAPER NUMBER 3648 NOTIFICATION DATE DELIVERY MODE 05/19/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS NELSON, DAVID ANTHONY HATTON, and HUSSEIN F. NASRALLAH Appeal 2019-004781 Application 14/729,121 Technology Center 3600 Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART and enter a NEW GROUND OF REJECTION. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ford Global Technologies, LLC. Appeal Br. 2. Appeal 2019-004781 Application 14/729,121 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to “a method and apparatus for communications between a vehicle and a mobile phone.” Spec. ¶ 1. Claims 1, 8, and 15 are independent. Claims 1 and 15, reproduced below, are illustrative of the claimed subject matter. 1. A system comprising: a processor configured to: receive a vehicle event; based on occurrence of the vehicle event, communicate with a remote server through a vehicle modem, including transmission of a wireless device present connection state; and request that the remote server instruct a wireless device to pair with a vehicle infotainment system if the wireless device present connection state indicates the wireless device is not presently paired. 15. A system comprising: a processor configured to: receive indicia from a vehicle onboard modem that a wireless device is not presently connected to a vehicle infotainment system; select a wireless device for cloud-assisted communication with the vehicle infotainment system; establish communication with the wireless device; and relay communication between the wireless device and the vehicle infotainment system while the wireless device remains unconnected from the vehicle infotainment system. Appeal 2019-004781 Application 14/729,121 3 EVIDENCE The prior art relied upon by the Examiner is: Name Reference Date Bari US 2012/0320824 A1 Dec. 20, 2012 Hatton US 2013/0267193 A1 Oct. 10, 2013 Pal US 2014/0378055 A1 Dec. 25, 2014 Abramson US 2015/0141043 A1 May 21, 2015 Hansen US 2015/0170427 A1 June 18, 2015 Grover US 2016/0116293 A1 Apr. 28, 2016 REJECTIONS Claim 15 stands rejected under 35 U.S.C. § 112(b) as indefinite. Claims 1, 3, 6, 8, 9, and 13 stand rejected under 35 U.S.C. § 103 as unpatentable over Bari and Hatton. Claims 2 and 11 stand rejected under 35 U.S.C. § 103 as unpatentable over Bari, Hatton, and Grover. Claims 4 and 10 stand rejected under 35 U.S.C. § 103 as unpatentable over Bari, Hatton, and Pal. Claims 5, 7, 12, 14, and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over Bari, Hatton, and Hansen.2 Claims 15 and 18 stand rejected under 35 U.S.C. § 103 as unpatentable over Bari and Grover. Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as unpatentable over Bari, Grover, and Hansen. Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable over Bari, Grover, and Abramson. 2 The Examiner discusses claim 20 on pages 24–25 of the Final Action. Appeal 2019-004781 Application 14/729,121 4 OPINION Indefiniteness The Examiner rejects independent claim 15 as indefinite because relaying communication between the wireless device and the infotainment system, as recited in claim 15, connects the wireless device to the infotainment system (albeit indirectly). Final Act. 9. Thus, according to the Examiner, reciting relaying communication between the wireless device and infotainment system “‘while the wireless device remains unconnected from the vehicle infotainment system’ . . . requires the device to be simultaneously connected and unconnected to a vehicle, which [is] not possible and inconsistent with applicant’s specification.” Id. A claim is properly rejected as indefinite under 35 U.S.C. § 112(b) if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (approving, for pre- issuance claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Claims, when read in light of the specification, must “reasonably apprise those skilled in the art both of the utilization and scope of the invention” using language “as precise as the subject matter permits.” Packard, 751 F.3d at 1313. In determining whether a claim is definite under 35 U.S.C. § 112, second paragraph, “[t]he USPTO, in examining an application, is obliged to test the claims for reasonable precision according to [this principle].” Id. Appeal 2019-004781 Application 14/729,121 5 Appellant submits that claim 15 recites that “the processor selects a device, which the processor will assist in communicating with the vehicle.” Appeal Br. 6. According to Appellant, “[t]his device is not connected to the vehicle, at this point, it is connected to the processor.” Id. Appellant contends that the wireless device is not communicating with the vehicle directly, and therefore the cloud-assisted communication is used. The claim is directed to a processor that communicates with the wireless device and with the vehicle computer, but never does the wireless device communicate with the vehicle computing system in the claim. Id. The Examiner provides established definitions of terms such as “connected,” “directly connected,” “device to device connection,” and “paired.” Ans. 4–5. Appellant argues that “[t]he Examiner’s chosen definition of connected, while convenient for the Examiner’s argument, is not what a skilled artisan would understand ‘connected’ to mean.” Reply Br. 2. Appellant contends, [T]he Examiner is choosing definitions of “connected” and “directly connected” that would literally make the paradigm that Applicant is attempting to claim an impossibility, so obviously these are overbroad definitions, because the thing that Applicant is claiming is a reality, so describing it in English only becomes an impossibility when the Examiner overbroadly defines terms so as to effectively close down the ability to distinguish between relayed communication and communication resulting from an actual connection. Id. Appeal 2019-004781 Application 14/729,121 6 The Federal Circuit has described the correct inquiry for determining the broadest reasonable construction as follows: The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (holding that the Board’s construction of the claim term “body” as including components consistently identified and described in the appellant’s patent application specification separately from the “body” was “unreasonable” because it gave “the term ‘body’ . . . a strained breadth in the face of the otherwise different description in the specification”). We turn to Appellant’s Specification for guidance as to how the terms “connected” and “unconnected” are used in the present application. Appellant’s Specification refers to “a wide range of connectivity and interactivity options,” including, “[t]hrough wired and wirelessly connected devices, using short-range communication,” such as communicating with a mobile device through “USB or BLUETOOTH.” Spec. ¶ 2. According to the Specification, “[t]his can include communicating with applications on the device, utilizing data from the device . . . and generally using the device’s remote connectivity to the benefit of the vehicle,” but “[w]hen a local device is not connected, . . . many of these features are not available.” Id. This passage suggests that the term “connected” encompasses both short-range communication capability (e.g., “local device” being or not Appeal 2019-004781 Application 14/729,121 7 being “connected”) and remote communication capability (e.g., “remote connectivity”). Appellant’s Specification also describes two connection examples in paragraphs 3 and 4. In the first “connection example,” a vehicle monitoring system includes a hub unit and a plurality of mobile units, each of which is “locatable at a vehicle” and “includes a vehicle modem directly accessible by cellular telephone users via a cellular telephone network and operable to communicate with a remote hub unit via the cellular telephone network.” Spec. ¶ 3. In the second “connection example,” a cellular telephone communicates wirelessly with a transceiver module that is serially connected to a central processing module and a data interface module, which is serially connected to the central processing module and an electronic network for the vehicle’s electrical devices. Id. ¶ 4. At least the “connection example” in paragraph 3 suggests that a cellular telephone may be “connected” to a vehicle electronics system (mobile unit) via a cellular telephone network and a vehicle modem. Paragraphs 17 and 19 of the Specification discuss “pair[ing]” an onboard BLUETOOTH transceiver with a BLUETOOTH transceiver in a nomadic device (e.g., cell phone, smart phone, or other device having wireless remote network connectivity). The Specification also discloses: When connected in a wired or local-wireless manner to a mobile device, the vehicle computer can use both the mobile device remote communication capability (such as accessing the Internet or communicating with a remote server) and can use functionality provided to the mobile device (e.g., without limitation, GPS data, navigation, mobile apps). The connected Appeal 2019-004781 Application 14/729,121 8 mobile device can also be used to communicate data about an emergency event, for example, or other vehicle events. Spec. ¶ 29. This passage confirms that a wired or local-wireless connection between the vehicle computer and a mobile device with remote communication capability is desirable. However, it does not explicitly limit the scope of “connected” to this type of connection. Moreover, the Specification further alludes to illustrative embodiments proposing “alternative systems and methods for connecting to a mobile device when a local (e.g., short range) wireless connection is not established.” Id. ¶ 30. Thus, the Specification clearly uses the term “connecting” in a sense that is not limited to local, or short range, connections. Similarly, the Specification discusses “the loss of connection to a paired device” when, for example, “a user leaves a vehicle running, and moves outside a connectable range (such that an existing connection is dropped).” Spec. ¶ 34. In this instance, the existing connection is a local connection, but this does not rule out the possibility of other non-local, or remote, connections within the scope of “connected.” Paragraph 34 of the Specification goes on to explain that, when the user returns to the vehicle, “the vehicle ‘standard’ pairing (such as, upon ignition) may not function because a device BLUETOOTH or other wireless connection is disabled. By sending an instruction to the device through the cloud, the device can be instructed to enable the appropriate functionality and pair.” The Specification further discloses that, if a device is paired to the vehicle computer system, the vehicle computer system may use any functionality provided to the device “without the need to establish a connection to the device through the cloud.” Spec. ¶ 35. Used in this manner in the Appeal 2019-004781 Application 14/729,121 9 Specification, a connection of the vehicle computer system to the device through the cloud is a “connection.” Thus, consistent with this usage in the Specification, a device connected to the vehicle computer system (or vehicle infotainment system) through the cloud (or a remote server) seemingly would be “connected” to the vehicle computer system/infotainment system. The Specification also refers to “functionality commonly available to a driver/occupant when the device is locally directly connected (i.e., without the cloud intermediary).” Spec. ¶ 39 (emphasis added). This “locally directly” modifier of “connected” further suggests that “connected” encompasses connections that are not local and/or direct. At first blush, Appellant’s position that the Examiner’s interpretation of “connected” and “unconnected” is overly broad, because such an interpretation would render the invention recited in claim 15 an impossibility (Reply Br. 2), is appealing. However, the Examiner’s interpretation corresponds with what and how Appellant describes a “connection” or “connected” in the Specification. Appellant seemingly urges us to interpret “while the wireless device remains unconnected” in claim 15 as meaning while the wireless device remains locally and directly unconnected, but this is not what claim 15 recites. Interpreting “connected” in a manner that corresponds with what and how the Specification describes connections/connecting, the skilled artisan would understand relaying communication between the wireless device and the vehicle infotainment system, as recited in claim 15, as requiring the wireless device to be connected, at least indirectly, to the vehicle infotainment system. Thus, the Examiner is correct that the limitation “relay communication between the wireless device and the vehicle infotainment system while the wireless Appeal 2019-004781 Application 14/729,121 10 device remains unconnected from the vehicle infotainment system” in claim 15 creates an internal inconsistency in the claim, thereby rendering the scope of claim 15 unclear. Despite Appellant’s intentions in drafting the claims, claim 15, when read in light of the Specification, fails to “reasonably apprise those skilled in the art both of the utilization and scope of the invention” using language “as precise as the subject matter permits,” as required by 35 U.S.C. § 112(b). Packard, 751 F.3d at 1313. Accordingly, we sustain the rejection of claim 15 as indefinite. The Examiner’s indefiniteness rejection does not include claims 16– 20, which depend from claim 15. However, these claims, by virtue of their dependence from claim 15, incorporate the aforementioned “relay communication” limitation without any additional recitations that would resolve the lack of clarity and precision of claim 15 and, therefore, are likewise indefinite. Thus, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION of claims 16–20 under 35 U.S.C. § 112(b) as indefinite. Obviousness: Bari and Hatton Independent claim 1 recites a processor configured to, in pertinent part, request that a remote server instruct a wireless device to pair with a vehicle infotainment system. Claims App. 1. Claim 8 recites a method comprising, in pertinent part, requesting that a pairing instruction to pair with a vehicle computer be sent to a wireless device through a remote server. Id. at 2. The Examiner finds that “Bari discloses a mobile device requests to join a network, therefore the mobile device is present, and it is not presently Appeal 2019-004781 Application 14/729,121 11 joined to the network. The mobile device presents its authentication information to the vehicle device, which then relays the authentication information to a remote user.” Final Act. 11 (boldface omitted) (citing Bari ¶¶ 30–31 (authentication information being transmitted from the cache server to an authentication server)). The Examiner also finds that “Bari discloses a vehicle communication device (the second cache server) . . . can request authorization from the remote server to connect with a mobile device, and . . . can receive authorization from a remote server and then provide access to popular content (the claimed [infotainment] system) to the mobile device.” Id. at 11–12 (citing Bari ¶ 31). The Examiner finds that “Bari does not clearly disclose” instructing a wireless device to pair with a vehicle infotainment system, but relies on Hatton for this feature. Final Act. 12 (boldface omitted). In particular, the Examiner finds that “Hatton discloses a remote server can communicate with vehicle, and the remote server can instruct the vehicle system to pair with the mobile device.” Id. (boldface omitted). The Examiner notes that Bari teaches that pairing a nomadic device and the BLUETOOTH transceiver “can be instructed through a button 52 or similar input,” and explains that, in the proposed combination, “the ‘similar input’ becomes the instruction from the remote server.” Id. (emphasis added) (citing Hatton ¶ 32). The Examiner reasons that Bari and Hatton evidence that “it is known that a server requesting two devices to pair as disclosed by Bari and a server instructing two devices to pair from as disclosed by Hatton are functional equivalents.” Final Act. 12 (boldface omitted). The Examiner determines that “[o]ne would have been motivated to substitute the ‘instruct’ since Appeal 2019-004781 Application 14/729,121 12 Hatton states (paragraph 0004) that such a substitution would provide another tool to make and receive calls when the vehicle is instructed to pair with a user’s mobile device.” Id. Therefore, the Examiner concludes that it would have been obvious “to have substituted instruct for the request because both elements were known equivalents” and “[t]he substitution would have resulted in the predictable result of a vehicle pairing with an occupant’s mobile device.” Id. Appellant argues that neither Bari nor Hatton teaches sending from a remote server “an instruction telling the device to pair with the vehicle.” Appeal Br. 8. Appellant submits that “[w]hether or not various authentication information is received by either the device or vehicle, from the server, the pairing itself is never instructed by a remote server, and certainly the device is never instructed to pair via a message from the remote server.” Id. Appellant contests the Examiner’s finding that Hatton teaches that a remote server instructs a vehicle system and a device to pair. Appeal Br. 8 (submitting that pushing an onboard button or input to tell an onboard CPU that a device is going to be paired with the vehicle system “is not remotely the same thing as the claimed remote server instructing the wireless device to pair with the vehicle”). Further, Appellant adds, “Bari’s teaching of a wireless device requesting to join a network is just more of the same.” Id. According to Appellant, Bari and Hatton provide “examples of the traditional model, where a user requests the pairing, as opposed to the claims, where a server effectively determines that the pairing is ‘missing’ and then tells the wireless device to pair.” Id. For the reasons that follow, Appeal 2019-004781 Application 14/729,121 13 we agree with Appellant that the Examiner has not established a sustainable case of obviousness. Bari discloses sending, from a wireless device (one of client devices 208, 210, 212, 214) to cache server 204, a request to join a wireless network broadcast from the cache server in order to access content cached in the cache server. Bari ¶¶ 20–23, 30. The wireless device sends authentication information to cache server 204. Id. ¶ 30. Before cache server 204 provides the wireless device access to the content cached in the cache server, a determination must be made whether the authentication information sent from the wireless device is valid. Id. If cache server 204 has a list of authentication information for each of a plurality of devices, then cache server 204 compares the authentication information sent from the wireless device to the list to determine whether there is a match; if so, the authentication information sent from the wireless device is valid. Id. If cache server 204 does not have a list of authentication information for a plurality of devices, the wireless device’s authentication information is sent to authentication server 232 (a remote server) via a cellular data connection or cellular network link. Bari ¶ 31; Fig. 2. Authentication server 232 then sends to cache server 204 a notification signal indicating verification of the authentication information. Id. ¶ 31. Upon receipt of the notification signal at the cache server, “the device is authenticated at the cache server” and is provided access to the content cached in the cache server. Id. Even assuming that the notification signal sent from authentication server 232 to cache server 204 can reasonably be considered to be an instruction to pair, as called for in claims 1 and 8, this signal is sent Appeal 2019-004781 Application 14/729,121 14 to the cache server, not to the wireless device, and is thus an instruction to the cache server, not the wireless device. Paragraphs 31 and 32 of Hatton, cited by the Examiner, disclose that the BLUETOOTH transceiver of a vehicle-based computing system can be paired with the BLUETOOTH transceiver of a nomadic device so that the nomadic device can be used to communicate with a network outside the vehicle through, for example, a cellular network, and that the pairing “can be instructed through a button 52 or similar input.” Contrary to the Examiner’s finding on page 12 of the Final Action, Hatton does not teach a “remote server can instruct the vehicle system to pair with the mobile device.” Hatton’s disclosure of instructing through a button or similar input contemplates generally that other vehicle operator input means, other than a button, may be used, but is not a teaching to have an instruction sent from, or through, a remote server, to the wireless device, as called for in claims 1 and 8. Thus, Hatton does not support the Examiner’s finding or cure the deficiency of Bari in this regard. The Examiner finds that the claims do not prohibit the involvement of a button in the method of instructing pairing, and, further, do “not explicitly prohibit the instruction coming through the vehicle modem.” Ans. 9. To the extent that the Examiner means that the claims do not exclude the use of a button to initiate the request for a pairing instruction by or through the remote server, the Examiner is correct. However, claim 1 recites a processor configured to request that a remote server instruct a wireless device to pair, and claim 8 recites a step of requesting a pairing instruction be sent to a wireless device through the remote server. As discussed above, neither Bari nor Hatton teaches requesting a remote server to instruct a wireless device to Appeal 2019-004781 Application 14/729,121 15 pair, or requesting that a pairing instruction be sent to a wireless device through a remote server, either through a vehicle modem or otherwise. Further, the Examiner does not articulate a reason with rational underpinnings as to why, absent the teachings in the present application, a person of ordinary skill in the art would have been prompted, in view of the combined teachings of Bari and Hatton, to modify Bari to request, or configure a processor to request, that an instruction to pair be sent by or through a remote server to a wireless device. The Examiner’s observation about what is possible, namely, that “the command to pair . . . could arrive[] via the vehicle modem, from the remote server” (Ans. 10), is not a reason why a person of ordinary skill in the art would have been prompted to modify Bari in such a manner. The Examiner cites Hatton’s teachings in paragraph 4 regarding the benefits of pairing (i.e., providing another tool to make and receive calls when in the vehicle) as a reason for modifying Bari. Final Act. 12. Notably, the Examiner’s reasoning in this regard addresses providing another tool “when the vehicle is instructed to pair with a user’s mobile device,” not when the mobile device is instructed to pair. See id. Thus, the Examiner’s reasoning does not appear to be rationally related to a proposed modification that would result in the claimed subject matter. Further, this portion of Hatton touts the benefits of the vehicle computing system’s ability to connect to a user’s nomadic device to establish a connection with a remote network. See Hatton ¶¶ 4–5. It is the pairing of the nomadic device to the vehicle computing system, not the manner of initiating or instructing the pairing, that affords these advantages. Thus, it is not apparent, and the Examiner does not adequately explain, how modifying Bari by using a Appeal 2019-004781 Application 14/729,121 16 remote server to instruct the nomadic device to pair with the vehicle computing system would “provide another tool to make and receive calls when the vehicle is instructed to pair with a user’s mobile device” as set forth on page 12 of the Final Action. For the above reasons, the Examiner does not establish a sustainable case of obviousness of the subject matter of claim 1 or claim 8. Accordingly, we do not sustain the rejection of claims 1 and 8, or claims 3, 6, 9, and 13, which depend from claim 1 or claim 8, as unpatentable over Bari and Hatton. Obviousness: Bari, Hatton, and one of Grover, Pal, or Hansen In rejecting claims 2, 4, 5, 7, 10–12, and 14, which depend from claim 1 or claim 8, the Examiner does not articulate any additional findings or reasoning that would make up for the deficiency in the combination of Bari and Hatton. See Final Act. 17–24. Accordingly, we do not sustain the rejection of claims 2 and 11 as unpatentable over Bari, Hatton, and Grover; the rejection of claims 4 and 10 as unpatentable over Bari, Hatton, and Pal; or the rejection of claims 5, 7, 12, and 14 as unpatentable over Bari, Hatton, and Hansen. Appellant points out that claim 20 depends from claim 15, and thus includes features of claim 15 for which the Examiner relies on Grover. Appeal Br. 9–10; see Final Act. 26–27 (stating that “Bari does not disclose, but Grover discloses: . . . ‘while the wireless device remains unconnected from the vehicle infotainment system’” (boldface and emphases omitted)). However, the Examiner’s rejection of claim 20 is based on a combination of Bari, Hatton, and Hanson, and does not rely on Grover, or otherwise address Appeal 2019-004781 Application 14/729,121 17 the limitations of claim 15 for which the Examiner cites Grover.3 See Final Act. 24–25 (relying on Bari in view of Hatton, and further in view of Hansen, for claim 20). Thus, the Examiner does not establish a prima facie case of obviousness of the subject matter of claim 20. Accordingly, we do not sustain the rejection of claim 20 as unpatentable over Bari, Hatton, and Hansen. Obviousness: Bari and Grover, alone or in view of either Hanson or Abramson For the reasons discussed above, claims 15–19 are indefinite. Thus, we cannot sustain the rejection of these claims under 35 U.S.C. § 103, because to do so would require speculation as to the scope of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims); Appeal Br. 10–11 (arguing that Grover would not make up for the deficiency in Bari with respect to the limitation “while the wireless device remains unconnected from the vehicle infotainment system”). It should be understood, however, that our decision in this regard 3 The Examiner’s comment, on page 11 of the Answer, that “this is a minor clerical error regarding placement in the rejection” does not make up for this deficiency in the rejection. Notably, on page 7 of the Remarks in responding to the Non-Final Action dated February 7, 2018, Appellant brought this deficiency in the rejection of claim 20 to the Examiner’s attention, but the Examiner did not correct this deficiency in the Final Action. See Final Act. 24–25. Moreover, even after Appellant raised this issue again on pages 9– 10 of the Appeal Brief, the Examiner declined to formally correct the problem by entering a new ground of rejection. Appeal 2019-004781 Application 14/729,121 18 is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 15 112(b) Indefiniteness 15 16–20 1, 3, 6, 8, 9, 13 103 Bari, Hatton 1, 3, 6, 8, 9, 13 2, 11 103 Bari, Hatton, Grover 2, 11 4, 10 103 Bari, Hatton, Pal 4, 10 5, 7, 12, 14, 20 103 Bari, Hatton, Hansen 5, 7, 12, 14, 20 15, 18 103 Bari, Grover 15, 18 16, 17 103 Bari, Grover, Hansen 16, 17 19 103 Bari, Grover, Abramson 19 Overall Outcome 15 1–14, 16–20 16–20 FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 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 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, 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 Appeal 2019-004781 Application 14/729,121 19 of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. TIME PERIOD FOR RESPONSE 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)