Jon Fatica et al.

Patent Trials and Appeals Board

Aug 21, 2019

12876929 - (D) (P.T.A.B. Aug. 21, 2019)

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.
12/876,929 09/07/2010 Jon FATICA 107945.000005 2254
145584 7590 08/21/2019
Prince Lobel Tye LLP
One International Place
Suite 3700
Boston, MA 02110
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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@princelobel.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JON FATICA, MICHAEL WILLIAMS,
DAVID TURNER, KEVIN O’CONNOR, JOSEPH EMANUELLI,
MILAN P. BORKOVEC, ANANTH MADHAVAN, ARTEM V. ASRIEV,
KUMAR GIRITHARAN, and THOMAS STRANDE
____________

Appeal 2018-005004
Application 12/876,9291
Technology Center 3600
____________

Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–11 and 13–15. We have jurisdiction under 35
U.S.C. § 6(b).

1 The Appellants identify “ITG SOFTWARE SOLUTIONS, INC., . . . a
wholly owned subsidiary of ITG Inc.” as the real party in interest. Appeal
Br. 2.
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We AFFIRM, designating the affirmance of the rejection under
35 U.S.C. § 101 as a NEW GROUND OF REJECTION, pursuant to
37 C.F.R. § 41.50(b).
ILLUSTRATIVE CLAIM
1. A method for making peer group data electronically
accessible on remote electronic devices, said method
comprising the computer implemented steps of:
receiving, via an electronic network, from a plurality of
different electronic trading venues, security transaction data of
a plurality of investment institutions, said transaction data
including identities of traded securities, electronic trading
venue, transaction order sizes, execution prices, peer identities
and timestamps;
grouping, using a computer processor, said transaction
data into orders, wherein each said order is associated with a
peer;
calculating, using said computer processor, an order cost
and at least one environmental factor for each order;
grouping, using said computer processor, said orders into
groups of orders wherein each of said groups of orders defines a
situation;
calculating each peer’s average order cost within each
group of orders in which the peer has one or more orders based
on the calculated order costs;
storing said calculated order cost, at least one
environmental factor for each order, and each peer’s average
order cost, in an electronically accessible database so as to be
readily accessible, on demand, over an electronic data network;
and,
transmitting the stored data in a format so as to be
displayed on a remote display device, said display comprising a
rank and an aggregate cost performance of a peer.
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REJECTIONS
I. Claims 1–11 and 13–15 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–54 of
U.S. Patent No. 7,539,636 B2, issued May 26, 2009.
II. Claims 1–11 and 13–15 are provisionally rejected on the
ground of nonstatutory double patenting as being unpatentable over claims
1–20 of copending Application No. 12/471,185.
III. Claims 1–11 and 13–15 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
RELATED CASES
At the time the Appeal Brief was filed in the present case, a Notice of
Appeal had been filed in the related U.S. Application 12/471,185 (Appeal
2017-011472). The Appellants failed to cite this related Appeal as required
by 37 C.F.R. § 41.37(c)(ii). We remind the Appellants and counsel to
review pending proceedings before the Board, so as to ensure that all related
Appeals are identified.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Double Patenting
The Appellants have not presented any argument regarding either
double-patenting rejection. See Answer 3.
Accordingly, we summarily sustain both double-patenting rejections
of claims 1–11 and 13–15.
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Subject-Matter Eligibility
(New Ground of Rejection)
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under these
judicial exclusions, involves a two-step framework for “distinguish[ing]
between patents that claim the buildin[g] block[s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention.” Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called “abstract
idea”); the second step determines whether there are any “additional
elements” recited in the claim that (either individually or as an “ordered
combination”) amount to “significantly more” than the identified judicially
excepted subject matter itself. Id. at 217–18.
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The USPTO recently published revised guidance on the application of
§ 101, in accordance with judicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“2019
Revised Guidance”). Under the 2019 Revised Guidance, a claim is “directed
to” an abstract idea, only if the claim recites any of (1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes — without integrating such abstract idea into a “practical
application,” i.e., without “apply[ing], rely[ing] on, or us[ing] the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Id. at 52–55. The considerations
articulated in MANUAL OF PATENT EXAMINING PROCEDURE § 2106.05(a)–(c)
and (e)–(h) (“MPEP”) bear upon whether a claim element (or combination
of elements) integrates an abstract idea into a practical application. Id. at 55.
A claim that is “directed to” an abstract idea constitutes ineligible subject
matter, unless the claim recites an additional element (or combination of
elements) amounting to significantly more than the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited, Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
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additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
In the present Appeal, the Appellants argue claims 1–11 and 13–15 as
a group. See Appeal Br. 11–27. Claim 1 is selected for analysis herein. See
37 C.F.R. § 41.37(c)(1)(iv).
Neither the Examiner nor the Appellants question the satisfaction of
Step 1 of the 2019 Revised Guidance — i.e., that the claims are drawn to
subject matter within the scope of § 101.
In relation to Step 2A, Prong One, of the 2019 Revised Guidance, the
Examiner’s analysis of claim 1 states:
Calculating order cost, environment factor for each order
and calculating each peer’s order cost within each group simply
describe the concept of gathering and combining data by
reciting the steps of organizing data through mathematical
relationships. The gathering and combining merely employs
mathematical relationships to manipulate existing data to
generate additional data. This idea is similar to the basic
concept of manipulating data using mathematical relationships
(e.g., converting numerical representation in [Gottschalk v.]
Benson[, 409 U.S. 63 (1972)]), which has been found by the
courts to be an abstract idea.
Also, the concept of displaying ranked data and
aggregate cost performance is similar to other mental processes
found abstract by the courts such as comparing new and stored
information and using rules to identify options in SmartGene[ v.
Advanced Biological Laboratories, 555 F. App’x 950 (Fed. Cir.
2014) (nonprecedential)].
Final Action 5.
Thus, the Examiner identifies limitations reciting two distinct abstract
ideas in claim 1.
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First, the Examiner characterizes the following limitations as
“manipulating data using mathematical relationships”:
calculating, using said computer processor, an order cost
and at least one environmental factor for each order; [and]
calculating each peer’s average order cost within each
group of orders in which the peer has one or more orders based
on the calculated order costs.
Id. Viewed through the lens of the 2019 Revised Guidance, these limitations
of claim 1 could be characterized as reciting an abstract concept belonging
to the category of “[m]athematical concepts” — such as “mathematical
relationships, mathematical formulas or equations, mathematical
calculations” — or as belonging to the category of “[c]ertain methods of
organizing human activity” — such as “fundamental economic principles or
practices (including hedging, insurance, mitigating risk)” or “commercial or
legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations).” 2019 Revised Guidance, 84 Fed. Reg. at 52.
The second abstract idea of claim 1 identified by the Examiner
characterizes the claim 1 limitation of a “display comprising a rank and an
aggregate cost performance of a peer” as a “mental process[ ],” similar to
“comparing new and stored information and using rules to identify options,”
in the manner of SmartGene. Final Action 5. This determination also
comports with the 2019 Revised Guidance, 84 Fed. Reg. at 52, because the
practice of ranking or ordering quantities fits within the category of
“[m]ental processes — concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).”
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Alternatively, we note that all of the claim limitations identified by the
Examiner — together with the further claim 1 limitations of “receiving”
“security transaction data,” “grouping” “said transaction data into orders,
wherein each said order is associated with a peer,” and “grouping” “said
orders into groups of orders wherein each of said groups of orders defines a
situation” — may also be regarded as describing “fundamental economic
principles or practices” or “commercial or legal interactions,” which are part
of the abstract-idea category of “[c]ertain methods of organizing human
activity” identified in the 2019 Revised Guidance. See id.
Although disputing the propriety of the rejection, the Appellants do
not challenge the aspects of the Examiner’s analysis corresponding to Step
2A, Prong One, of the 2019 Revised Guidance. Accordingly, we are not
persuaded of error, in regard to Step 2A, Prong One.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. Id. at 53. The analysis of such an “integration into a
practical application” involves “[i]dentifying . . . any additional elements
recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
Among the considerations “indicative that an additional element (or
combination of elements) may have integrated the exception into a practical
application” is whether “[a]n additional element reflects an improvement in
the functioning of a computer, or an improvement to other technology or
technical field.” Id. at 55 (footnote omitted). “[W]hether an additional
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element or combination of elements integrate the exception into a practical
application should be evaluated on the claim as a whole.” Id. at 55 n.24.
The Appellants’ position, to the effect that the claimed subject matter
is “technological in nature” and accomplishes a “technological
improvement” (Appeal Br. 18, 23), corresponds to Step 2A, Prong Two.
In one aspect, the Appellants contend that technological
improvements arise from the claimed “receiving” of “security transaction
data.” Specifically, the Appellants argue: “[B]y using specialized computer
tools to collect (receive) data from market sources, such as trade venues and
OMS’s, disparate execution data can be grouped by order.” Id. at 21.
According to the Appellants:
An important piece of the present invention relates to the
collection of electronic trading data. Borkovec Dec[l]. ¶ 8.H.
This was no trivial feat in the modem electronic trading
paradigm, especially if it is to be done in real time or near real
time. As explained in the present application, computer tools
are to be utilized to collect the electronic transaction data. For
example, a computerized, automated product called TCA
(transaction cost analysis) can electronically collect and analyze
transaction data. As transactional data is collected, analytics
can be electronically, automatically calculated in real time, and
real-time estimates can be made from historical data, empirical
distributions can be generated, and these quantities can be
compared. This simply could not be accomplished by hand. Id.
Id. at 23–24.
Because the issue of subject-matter eligibility may involve factual
issues, see Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018), the
present Decision takes the Borkovec Declaration into consideration.2 See

2 For clarity, this Decision refers to the Declaration of Milan Borkovec
Pursuant to 37 C.F.R. § 1.132, dated September 23, 2015.
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Appeal Br. 15–18; Reply Br. 2. Nevertheless, the foregoing arguments are
unpersuasive, because claim 1 does not recite the TCA product, nor does it
recite the collection of data “in real time or near real time.” Id.
Furthermore, the Specification indicates that the use of tools such as TCA to
collect and analyze transaction data in real time is a solution that predates
the disclosed subject matter:
Tools can be used to collect trade data. For example,
ITG markets a product called TCA® (transaction cost analysis),
which can collect and analyze transaction data. This tool may
be used to collect transaction data and download the data to
[peer group] database 104. As transactional data is collected,
the costs may be calculated in real-time as the data become
available, or data can be collected later by batch processing.
The data may be separated or organized according to cost
factors, such as Size, Type, etc. Data may be subject to
validation, quality filtration, and canonicalization. In one
embodiment, data may be collected from Order Management
Systems of institutional investors using ITG’s Extract Manager
and pre-processed using an approach such as ITG’s Unified
Data Model (UDM).
Spec. ¶ 137. See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315–16
(Fed. Cir. 2019) (prior-art feature, acknowledged as such in the
Specification, could not effect a “technological improvement[ ]”).
The Appellants also argue that the reasoning of Trading Technologies
International v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)
(nonprecedential), renders the present claims patent-eligible:3
Like the claims in Trading Technologies, the claims at issue
solve problems of prior specialized computer systems in the
context of computerized trading, relating to the gathering data,

3 Although presented as relating to “the second part of the Alice test”
(Appeal Br. 27), the Appellants’ argument concerning Trading Technologies
bears upon the issues of Step 2A, Prong Two.
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on the fly, in real-time, from multiple disparate sources,
calculating certain benchmarks, and making them available to
be displayed in multi-dimensional reports . . . . The claims are
not directed just to any manner of gathering, calculating and
displaying trading cost data, but to very specific machine. And
there is no risk of presumption [sic] what so ever.
Appeal Br. 26–27.
Step 2A, Prong Two, embraces the notion that “an additional element
implement[ing] a judicial exception with, or us[ing] a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
claim” constitutes an “exemplary consideration[ ]” indicating the integration
of a judicial exception into a practical application thereof. 2019 Revised
Guidance, 84 Fed. Reg. at 55 (emphasis added). Yet, the Appellants’
identified particular features of gathering transaction data “on the fly, in
real-time” and displaying benchmarks “in multi-dimensional reports”
(Appeal Br. 27) do not appear in claim 1. In addition to claim 1’s absence of
any real-time data collection feature (as referenced above), claim 1 also
lacks the feature of displaying benchmarks “in multi-dimensional reports.”
Id. Rather, claim 1 simply recites a “display comprising a rank and an
aggregate cost performance of a peer.”
By contrast, in Trading Technologies, the Federal Circuit agreed with
the District Court’s determination that the claims in that case “do not simply
claim displaying information on a graphical user interface,” but rather
“require a specific, structured graphical user interface paired with a
prescribed functionality directly related to the graphical user interface’s
structure that is addressed to and resolves a specifically identified problem in
the prior state of the art.” In particular, the claims in Trading Technologies
include dynamically displaying an indicator in each of a GUI’s bid and ask
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display regions, the regions positioned along a common static price axis, as
well as an order entry region with locations for receiving trade order
commands, and responsive to selecting a particular location: (1)
commodity-related trade order parameters were set and (2) a trade order was
sent to an electronic exchange. Trading Techs., 675 F. App’x at 1003–04.
The Appellants, however, identify no such features of claim 1 in the present
Appeal.
Relatedly, Core Wireless Licensing v. LG Electronics, Inc., 880 F.3d
1356, 1362 (Fed. Cir. 2018), concerned “an improved user interface for
computing devices.” The claim at issue in Core Wireless recited “an
application summary that can be reached directly from the menu,”
specifying a particular manner by which the summary window must be
accessed. Id. at 1359–60, 1362. The claim further required the application
summary window to list a limited set of data, “each of the data in the list
being selectable to launch the respective application and enable the selected
data to be seen within the respective application,” thereby restraining the
type of data that can be displayed in the summary window. Id. at 1359–60,
1363. In addition, the Core Wireless claim required that the summary
window be “displayed while the one or more applications are in an un-
launched state.” Id. In view of such particularized limitations, the Federal
Circuit determined that the Core Wireless claims “disclose a specific manner
of displaying a limited set of information to the user, rather than using
conventional user interface methods to display a generic index on a
computer.” Id. at 1363.
The Appellants also argue that a combination of claim features gives
rise to “a very specific system and method”:
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The appealed claims are directed to a very specific
system and method that include a specific ordered combination
of claim features, including receiving, from a plurality of
different electronic trading venues, security transaction data;
grouping the data in a novel manner; performing novel
calculations; grouping data in another novel manner;
performing additional novel calculations; and storing the data in
a tangible storage medium in a manner so that a novel, concrete
and tangible display may be rendered a [sic] remote display
device. To look at these steps alone, or in an ordinal
combination, and to conclude that they are directed to an
abstract idea violates how the Federal Circuit has taught that
claims must be analyzed.
Appeal Br. 22.
Indeed, the application of Step 2A, Prong Two, involves “evaluating
th[e] additional elements individually and in combination to determine
whether they integrate the exception into a practical application.” 2019
Revised Guidance, 84 Fed. Reg. at 55. Yet, the Appellants provide no
explanation to support the position that this particular set of claim elements
should be regarded as passing muster under Step 2A, Prong Two. Thus, this
aspect of the Appellants’ argument is also deficient. “A statement” — such
as the Appellants’ — that “merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(iv).
Moreover, the Appellants rely upon limitations of claim 1 that are not
“additional elements” in the manner of Step 2A, Prong Two, because they
encompass the identified abstract idea. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55. Both “calculating” limitations are part of an abstract idea
identified by the Examiner (see Final Action 5) — as well as the alternative
abstract idea discussed above. In addition, the two “calculating” limitations,
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along with the “receiving” limitation and the two “grouping” limitations, are
part of the alternative abstract idea discussed above. Such limitations, being
part of an identified abstract idea, cannot be relied upon to show that the
associated abstract idea itself might be integrated into a practical application,
under Section 2A, Prong Two. See 2019 Revised Guidance, 84 Fed. Reg. at
54–55.
In view of the foregoing, we are not persuaded that the Examiner
erred in regard to the analyses corresponding to Step 2A, Prong Two — i.e.,
that claim 1 is directed to judicially excepted subject matter (specifically, an
abstract idea).
Turning to Step 2B of the 2019 Revised Guidance, id. at 56, a claim
that is directed to a judicial exception (such as an abstract idea) might,
nevertheless, be patent-eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “a
specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
With regard to the issues relating to Step 2B, the Appellants contend:
As with the claims in [BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)], as described above and in the attached, unrebutted
declaration, independent claims 1 and 13 recite multiple claim
features, that when viewed as an ordered combination, provide
“significantly more” than simple mathematics, and must be
considered as meaningful limitations. To the extent the claims
recite generic computer components, the claims are patent-
eligible because these components in combination recite a
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particular, specialized, computer-implemented system for
modeling a performance metric of a company or industry using
multiple non-fundamental and non-traditional data sources in
combination.
Appeal Br. 25.
This argument is not persuasive of error. Notwithstanding the general
reference to the Borkovec Declaration, the Appellants do not identify claim
elements (outside of those describing an abstract idea) that, in an ordered
combination, might amount to significantly more than the abstract idea.
Additionally, the Appellants compare the claims in this Appeal to
those in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014), stating: “claims 1–11 and 13–15 are directed to patent-eligible
subject matter because they are necessarily rooted in electronic trading
technology in order to overcome a problem specifically arising in the realm
of electronic trading technology.” Appeal Br. 26.
This argument is also unpersuasive, as it neither identifies the claim
limitations that purportedly accomplish the identified qualities nor
articulates the manner in which “a problem specifically arising in the realm
of electronic trading technology” might be “overcome.” Id. Unlike DDR
Holdings, 773 F.3d at 1258, the Appellants do not indicate any aspect of the
claimed subject matter “that overrides the routine and conventional sequence
of events ordinarily triggered by” the implementation of the technology at
issue, instead of “operating in its normal, expected manner.”
Accordingly, we are not persuaded of error in the aspects of the
Examiner’s analysis corresponding to Step 2B.
Therefore, in view of the foregoing, we sustain the rejection of claims
1–11 and 13–15 under 35 U.S.C. § 101. However, because we depart from
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the Examiner’s reasoning, in certain respects noted above, we designate this
aspect of the Decision as a new ground of rejection, under 37 C.F.R.
§ 41.50(b).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–11 and 13–
15 on the ground of nonstatutory double patenting as being unpatentable
over claims 1–54 of U.S. Patent No. 7,539,636.
We AFFIRM the Examiner’s decision provisionally rejecting claims
1–11 and 13–15 on the ground of nonstatutory double patenting as being
unpatentable over claims 1–20 of copending Application No. 12/471,185
We AFFIRM the Examiner’s decision rejecting claims 1–11 and 13–
15 under 35 U.S.C. § 101, designating this affirmance as a NEW GROUND
OF REJECTION under 37 C.F.R. § 41.50(b).
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 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
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
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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 MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED; 37 C.F.R. § 41.50(b)