LEXIDINE LLC et al.

Patent Trials and Appeals Board

Feb 25, 2022

2022000836 (P.T.A.B. Feb. 25, 2022)

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. 90/020,131 02/20/2020 7609961 80467.00155 7766 164023 7590 02/25/2022 Cortney Scott Alexander 845 Botanica Way Fairburn, GA 30213 EXAMINER WHITTINGTON, KENNETH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/25/2022 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 LEXIDINE LLC Patent Owner and Appellant Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 Technology Center 3900 Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s rejection of claims 1-7 and 12-18 in U.S. Patent No. 7,609,961 B2 (“the ’961 patent”). A video hearing was held on February 3, 2022. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part and enter new grounds of rejection under 37 C.F.R. § 41.50(b). Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 2 TECHNOLOGY The ’961 patent relates to “a vehicle camera that can be readily retrofitted to a vehicle,” especially a “vehicle light.” ’961 patent, 1:52-53, 2:4-15. ILLUSTRATIVE CLAIM Claims 1, 12, and 16 are independent. Claim 1 is illustrative and reproduced below with certain limitations at issue emphasized: l. A vehicle camera, comprising: a vehicle lens of an external light for a vehicle light, the vehicle lens having a translucent area of a predetermined color for allowing light transmission therethrough of the predetermined color and having an opening in the translucent area of the vehicle lens; a camera body within the vehicle lens having a viewing axis through the opening; and a base attached to the vehicle lens, wherein the viewing axis is at an angle between about 15 to 75 degrees with respect to a plane of the base. STATUS OF THE CLAIMS The ’961 patent issued with 23 claims. In the present reexamination, claims 8-11 and 19-22 were confirmed, and new claims 24-27, 29-34, 36- 40, 42-46, 48, 50, 51, 53-56, 58-62, 64-68, 70-75, and 77-82 were allowed. See Adv. Act. (Feb. 26, 2021). New claims 28, 35, 41, 47, 49, 52, 57, 63, 69, and 76 were cancelled. Appellant disclaimed issued claim 23 at the time of the Reply Brief. See Disclaimer in Patent Under 37 CFR 1.321(a) (Nov. 22, 2021). The only remaining claims on appeal are issued claims 1-7 and 12-18, which were not amended during the reexamination. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 3 RELATED PROCEEDINGS Appellant identifies thirteen district court litigations involving the ’961 patent, many of which appear to have been dismissed. Appeal Br. 2. Appellant has not identified any district court decision impacting this case. REFERENCES The Examiner relies on the following references as prior art: Name Number Date Bauer US 6,550,949 B1 Apr. 22, 2003 Hilborn1 US 2003/0227546 A1 Dec. 11, 2003 Kendrick US 6,175,300 B1 Jan. 16, 2001 Lang US 2005/0046696 A1 Mar. 3, 2005 Miki US 6,476,731 B1 Nov. 5, 2002 Ramachandran US 6,259,475 B1 July 10, 2001 Steed US 6,151,065 Nov. 21, 2000 REJECTIONS Based on amendments after the final office action and Appellant’s disclaimer of claim 23, only the following rejections remain at issue. See Adv. Act. (Feb. 26, 2021); Disclaimer (Nov. 22, 2021). Claims 35 U.S.C. § Basis Final Act. 1-3 102 Lang 20-22 12, 14, 15 102 Ramachandran 22-23 1, 2, 4-6, 13 103 Ramachandran, Lang 23-26 1, 2, 4-6, 12-18 103 Steed, Ramachandran 26-32 1 103 Hilborn, Lang 32-34 7 103 Lang, Bauer 35 12, 14, 15 103 Miki, Ramachandran 35-37 12-18 103 Lang, Ramachandran 38-42 16-18 103 Ramachandran 42-43 16-18 103 Kendrick, Ramachandran 43-45 1 The briefs often cite this as “Hillborn” rather than “Hilborn.” Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 4 ISSUES 1. Did the Examiner err in finding Lang discloses the following limitations recited in claim 1: (A) “the vehicle lens having a translucent area of a predetermined color for allowing light transmission therethrough of the predetermined color”; (B) “an opening in the translucent area of the vehicle lens”; and (C) “a camera body within the vehicle lens”? 2. Did the Examiner err in finding Lang, Ramachandran, Steed, Miki, and Hilborn teach or suggest “an opening in the translucent area of the vehicle lens,” as recited in claim 1? 3. Did the Examiner err in determining it would have been obvious to modify Hilborn with Lang for the limitation “the viewing axis is at an angle between about 15 to 75 degrees with respect to a plane of the base,” as recited in claim 1? 4. Did the Examiner err in finding Bauer teaches or suggests “an infrared sensor,” as recited in claim 7? 5. Did the Examiner err in finding Lang teaches or suggests “the vehicle lens is being attached to the camera body,” as recited in claim 12? 6. Did the Examiner err in finding Ramachandran teaches or suggests “an internal reflector surface,” as recited in claim 16? 7. Did the Examiner err in finding Kendrick teaches or suggests “the vehicle lens being attached to the base,” as recited in claim 16? Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 5 ANALYSIS Claim Construction “opening” Every independent claim recites “an opening in the translucent area of the vehicle lens.” Appellant argues that the plain and ordinary meaning of an “opening” requires a “physical aperture.” Appeal Br. 7-12. The Examiner relies on dependent claim 23 and certain related text in the Specification in determining that an “opening” has “two reasonable interpretations”: (1) “a physical opening” and (2) “a clear portion or window within the vehicle lens.” Ans. 4. The Examiner interprets the claimed “opening” to include both of these possibilities, and based on this broad interpretation, applies prior art that lets a camera see through a transparent yet solid window integrally formed into the cover of a brake light. We agree with Appellant. Claim 23 depends from independent claim 16. As issued, claim 16 recites an “opening” similar to independent claim 12 and further recites “a transparent camera lens cover attached to the vehicle lens at the opening for protecting a camera lens within the camera body.” For example, Figure 2 of the ’961 patent shows camera lens cover 114, which can fit into first recess 122 of vehicle lens 120 to protect camera body 111, but is a separate component from vehicle lens 120. ’961 patent, 3:7-9, 3:23-26. Dependent claim 23 then further recites “the transparent camera lens cover is integrally formed with the vehicle lens.” There is only one paragraph in the rest of the Specification that discusses an “integrally formed” embodiment, and that paragraph discloses Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 6 (A) an “opening” and (B) an “integrally formed” cover as alternatives, never in combination: Embodiments of the present invention discussed above include a camera lens cover that is positioned over an opening in the vehicle lens of the present invention. However, embodiments of the present invention include a camera lens cover that is integrally formed with the vehicle lens. An integral camera lens cover in a vehicle lens is made by first forming the vehicle lens as a clear vehicle lens in the appropriate shape with the camera lens cover integral to the rest of the vehicle lens. Then, portions of the clear vehicle lens, other than the camera lens cover area[,] are selectively dyed the appropriate color by masking the camera lens cover are[a] from the dyeing process. Accordingly, a vehicle lens can be made in which has a clear camera lens area and the rest of the vehicle lens is a desired color. ’961 patent, 6:9-22 (emphases added). Notably, independent claim 16 as originally filed did not contain any “opening” so there initially was no conflict with dependent claim 23. Instead, claim 16 was later amended to overcome prior art and added the “opening” limitation, which introduced a conflict with claim 23. See Amendment (May 21, 2009). Because the Specification discloses an “opening” and an “integrally formed” cover as alternatives rather than a combination, issued claim 23 lacked adequate written description and should have been rejected under 35 U.S.C. § 112, first paragraph. Appellant has since mooted this by disclaiming claim 23 entirely, but the point remains that the amendment to claim 16 created a written description problem for claim 23; it did not redefine the meaning of an “opening.” Construing an “opening” to require a physical aperture is also consistent with previous cases. Fuji Photo Film Co. v. Int’l Trade Comm’n, Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 7 386 F.3d 1095, 1098 (Fed. Cir. 2004) (“Because the patent consistently uses the term ‘opening’ to refer to the perforations in the camera’s cover sections or external container, the context strongly suggests that ‘opening’ means a hole, breach, or aperture in the cover”); Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1349 (Fed. Cir. 2010) (affirming the district court’s construction of the term “second opening” to mean the opening must be “exposed to the drive bay region”); Ivera Med. Corp. v. Hospira, Inc., 801 F.3d 1336, 1342- 43 (Fed. Cir. 2015) (noting the parties did not challenge the district court’s construction of (1) “opening” to mean “an entrance or exit to the inner cavity of the cap” and (2) “second opening” to mean “a second, distinct channel or pathway that extends from the interior to the exterior of the cap”); see also Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1329 (Fed. Cir. 2010) (noting how the district court construed “aperture” to mean “an opening”). Therefore, we agree with Appellant that as used in the ’961 patent, an “opening” requires a physical aperture. “attached to” Claim 1 recites “a base attached to the vehicle lens”; claim 12 recites “the vehicle lens is being attached to the camera body”; and claim 16 recites “the vehicle lens being attached to the base.” Appellant argues that “attached to” requires a direct connection. Appeal Br. 12-20. According to Appellant, “[e]very use of ‘attach’ in the ’961 patent refers to a direct connection”; “the specification uses ‘directly attach’ and ‘attach’ interchangeably”; “the Examiner relied on [dictionary] definitions that are inapplicable to the context of the ’961 patent”; and Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 8 “[v]arious courts have also recognized that ‘attach’ or similar terms require direct connection.” Id. at 12, 14, 16. We are not persuaded by Appellant’s arguments. The case law as to whether “attached” includes indirect connections is at best mixed. For example, directly contrary to Appellant’s argument, the Federal Circuit has held that “the ordinary meaning of ‘attached’ includes both direct and indirect attachment.” Southco, Inc. v. Fivetech Tech. Inc., 611 F. App’x 681, 686 (Fed. Cir. 2015) (non-precedential). Appellant’s emphasis on Searfoss v. Pioneer Consol. Corp., 374 F.3d 1142 (Fed. Cir. 2004), is also misplaced because that case was construing “connecting,” not “attaching.” Like “attaching,” the case law on whether “connecting” includes indirect connections is at best mixed. E.g., Ullstrand v. Coons, 147 F.2d 698, 700 (CCPA 1945) (“It is clear that the accepted definition of the term ‘connected’ is restricted to neither a direct nor an indirect connection”). More importantly, the court in Searfoss determined that “a construction of the word ‘connect’ to include ‘indirect’ and non-rigid connections . . . is problematic because it would lead to a reading of the claim such that the cover . . . is exerting a downward force upon itself.” 374 F.3d at 1150. Put another way, in Searfoss, other limitations in the claim besides the term “connecting” required the connection to be direct. The common theme across these cases is that the meaning of a term such as “attached” should not be construed in a vacuum, but instead must consider the particular claims at issue and the rest of the specification. E.g., Searfoss, 374 F.3d at 1150 (“In construing the claim, however, the district court did not, and indeed must not, stop with the dictionary definitions Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 9 offered by Searfoss. Instead, the district court did as it must, and consulted the written description.”); Southco, 611 F. App’x at 686 (holding that although “attached” alone permitted indirect attachment, other limitations in the claim would not be satisfied by an indirect attachment). Here, we find most persuasive that the Specification itself uses the phrase “directly attaching” separately from “attaching” alone. E.g., ’961 patent, 3:2-4 (“The camera body 111 also has mounting tabs 115 for directly attaching the camera body 111 to the interior surface of the vehicle lens 120.”), 4:35-37 (“The camera body 211 also has mounting tabs 215 for directly attaching the camera body 211 to the interior surface of the vehicle lens 220.”) (all emphases added). Under Appellant’s construction, the word “directly” in the phrase “directly attaching” would be superfluous because “attaching” alone would already mean directly connecting. Ans. 7-8. A more natural reading is that “directly attaching” is a sub-type of “attaching.” For similar reasons, we also decline to import a limitation from the embodiments. “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). Instead, we agree with the Examiner that “attached” includes both direct and indirect connections, and that Appellant has added new claims during reexamination to more narrowly cover “direct” attachments. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 10 § 102 Lang (Claims 1-3) For this rejection, the Examiner relies on the embodiment shown in Figure 2 of Lang, which is reproduced below. Figure 2 of Lang is “a side view illustrating a brake light with integrated camera.” Lang ¶ 15. It “includes a camera 14 mounted in a camera holder 16 which in this case is in [the] form of a ball and socket joint holder so as to be capable of swiveling.” Id. ¶ 19. Convex lens 68 protects the camera from the elements. Id. ¶ 24. Light shield 20 shields camera 14 from lighting element 12. Id. ¶¶ 21, 19. Housing cover 72 forms the exterior of the brake light but in Figure 2 “does not enclose camera 14,” whereas “[t]he Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 11 embodiment shown in FIG. 3 differs from FIG. 2 in that the housing cover 22 of FIG. 3 covers camera 14 fully.” Id. ¶ 24. Appellant makes three arguments against the embodiment shown in Figure 2 of Lang. Appeal Br. 20-23. First, claim 1 recites “a camera body within the vehicle lens.” Appellant argues that “housing cover 72 ends at light shield 20 and camera 14 is therefore not included within housing cover 72.” Appeal Br. 21. However, we agree with the Examiner that in Figure 2, “the vehicle lens 72 is on both sides of the opening for the camera 14.” Ans. 13. In particular, at the bottom of Figure 2, the two parallel lines for housing cover 72 (i.e., the claimed “vehicle lens”) extend to the left of and behind camera 14. Similar parallel lines can be seen in Figure 3 just pushed further out to fully enclose camera 14, whereas Figure 2 leaves an aperture in the cover for the camera. See Lang ¶ 24. Although the aperture in housing cover 72 leaves room to swivel camera 14 by hand or actuator (see id. ¶¶ 19, 26), camera 14 is still within housing cover 72. Second, Appellant argues that “even if housing cover 72 extends around the aperture for the camera (as the Examiner asserts), Lang . . . teaches that this area would not allow the transmission of light of a predetermined color therethrough” because “a light shield 20 . . . is specifically provided to prevent the transmission of light from lighting element 12 into the area housing camera 14.” Appeal Br. 21. However, Appellant’s argument does not accurately reflect the claim language, which instead recites “the vehicle lens having a translucent area of a predetermined color for allowing light transmission therethrough of the predetermined color Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 12 and having an opening in the translucent area of the vehicle lens.” Nothing in claim 1 requires that any light from the brake light’s lighting element (let alone light “of a predetermined color”) go out the opening. To the contrary, the purpose of the opening is to let light into the camera: “More specifically, the second recess 123 has an opening 124 within which the camera body is positioned such that the viewing axis of the camera body 111 goes through the opening 124.” ’961 patent, 3:27-30. The claimed opening must be in an area that is “translucent” and “of a predetermined color for allowing light transmission therethrough of the predetermined color,” but that merely requires the capability of transmitting light through the vehicle lens, not actual transmission, and it does not even specify the source of the light. For example, a translucent red lens capable of allowing red light in from outside the vehicle would satisfy the limitation “the vehicle lens having a translucent area of a predetermined color for allowing light transmission therethrough of the predetermined color.” Therefore, Appellant’s arguments about light shield 20 preventing actual transmission of light from lighting element 12 to either the opening or the area of the cover around the opening are not persuasive of error. Third, claim 1 recites “the vehicle lens having a translucent area of a predetermined color for allowing light transmission therethrough of the predetermined color.” Appellant argues that Lang “does not disclose that the housing cover can be a translucent area of a predetermined color” because Lang discloses “the housing cover may also be a generally clear cover and the lighting element can emit a red light.” Appeal Br. 20 (quoting Lang ¶ 11). Put Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 13 another way, Appellant argues that Lang discloses a red-colored light source, not a red-colored lens. Lang discloses multiple embodiments. For this limitation, the Examiner relies on Figure 2 of Lang, not Figure 3. Ans. 12. Lang explains that “[t]he embodiment shown in FIG. 3 differs from FIG. 2 in that the housing cover 22 of FIG. 3 covers camera 14 fully” whereas housing cover 72 from Figure 2 “does not enclose camera 14.” Lang ¶ 24. The paragraph relied upon by Appellant is discussing variations of Figure 3, not Figure 2, as it expressly discusses the “housing cover” enclosing (i.e., over) the camera: The housing cover may also enclose the lighting element and the camera. The cover may be clear in an area through which the camera records for effective camera recording. The housing cover may also be a generally clear cover and the lighting element can emit a red light. Lang ¶ 11. The Examiner determines that this paragraph discloses alternatives of either the whole cover being “clear” or the cover only being “clear in an area through which the camera records.” Ans. 12. The Examiner further points out that Lang repeatedly discloses its invention-including Figure 2-relates to “a brake light” (e.g., Lang ¶¶ 1, 15-17), which “would be colored red . . . as is well known in the art as is provided in most vehicles.” Ans. 12. In at least some jurisdictions, brake lights (also called stop lamps or tail lamps) by law must emit red light. E.g., D.C. Mun. Regs. tit. 18, § 705 (“Each motor vehicle . . . shall be equipped with at least one (1) tail lamp mounted on the rear, which, when lighted as required, shall emit a red light”). However, there are at least two ways of making a brake light red: Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 14 (1) a translucent red cover or (2) a red light source. Although these are not mutually exclusive (e.g., a brake light could have both a red cover and a red light source), Appellant is correct that Lang discloses an example (albeit for Figure 3) using a “generally clear cover” and a “red light.” Lang ¶ 11; Appeal Br. 20. Thus, Lang’s disclosure of a “brake light” does not inherently disclose a red cover. Therasense, 593 F.3d at 1332 (“Anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation.” (quotation omitted)). Moreover, Appellant is correct that nothing in the cited passage of Lang expressly discloses “tinting the housing cover red.” Appeal Br. 21. To the extent paragraph 11 of Lang discloses two alternatives in which one alternative is merely “clear in an area through which the camera records,” Lang does not expressly disclose what color or translucency the rest of the housing cover would have. “To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). We agree with Appellant that Lang does not do this. Appeal Br. 20. Although Lang discloses a “brake light” with a “cover,” Lang does not expressly disclose that the cover of the brake light is red around the opening, nor would a cover of a brake light inherently be red around the opening. As the Federal Circuit has said, “differences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 15 Lang’s disclosure of a “brake light” may well render obvious a cover that is red and translucent around the opening, but it does not anticipate. Accordingly, we do not sustain this anticipation rejection of claim 1, and its dependent claims 2 and 3. Ramachandran (Claims 12, 14, and 15) Independent claim 12 recites “the vehicle lens . . . having an opening in the translucent area of the vehicle lens.” As discussed above, we construe an “opening” to require a physical aperture, not merely a transparent window. The Examiner relies on view port 336 in Ramachandran for teaching the claimed “opening.” Ans. 14-15. However, “Examiners do not dispute the view port of Ramachandran is not a physical opening in the vehicle lens.” Id. at 14. We therefore agree with Appellant that Ramachandran’s view port 336 does not disclose the claimed “opening.” Appeal Br. 23-24. Accordingly, we do not sustain this rejection of claim 12, and its dependent claims 14 and 15. § 103 Ramachandran & Lang (Claims 1, 2, and 4-6) In the Final Office Action, the Examiner relied on Ramachandran for teaching all limitations of claim 1 except a camera being angled, for which the Examiner relied on the embodiment shown in Figure 3 of Lang. Final Act. 23-25 (citing Lang Fig. 3, ¶ 12). In the Appeal Brief, Appellant argued that Ramachandran fails to teach an “opening” and “Ramachandran does not teach that view port 336 is in a translucent portion of the lens.” Appeal Br. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 16 25. In the Answer, the Examiner newly states that in addition to Ramachandran, Lang “further” discloses these limitations “as discussed in Part D.1. above.” Ans. 16. The discussion in the Answer’s Part D.1. relies on the embodiment shown in Figure 2 of Lang. Ans. 11-14 (“FIG. 2 of Lang . . . discloses each and every limitation of claim 1”). As noted above, Figure 2 of Lang discloses a physical aperture in the lens for the camera whereas Figure 3 does not. Lang ¶ 24. In the Reply Brief, Appellant argues that “the Examiner does not assert that it would have been obvious to a POSITA to modify Ramachandran to include a physical aperture.” Reply Br. 21. Given the procedural history here, we agree with Appellant that the Examiner has not yet explained why it would have been obvious to modify Ramachandran to include a physical aperture such as in Figure 2 of Lang. Accordingly, we do not sustain this rejection of claim 1, and its dependent claims 2 and 4-6. Ramachandran & Lang (Claim 13) Claim 13 depends from independent claim 12. For the obviousness of claim 13 over Ramachandran and Lang, the Examiner relies on the anticipation rejection of claim 12 over Ramachandran. Final Act. 25; Ans. 18-19. However, we reversed that rejection of claim 12 for the reasons above. For this rejection, the Examiner does not rely on Lang to cure the deficiencies noted above for claim 12. Accordingly, we do not sustain this rejection of claim 13. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 17 Steed & Ramachandran (Claims 1, 2, 4-6, and 12-18) As discussed above, all three independent claims (1, 12, and 16) recite an “opening,” which we construe to require a physical aperture. Appellant argues that neither Steed nor Ramachandran disclose such a physical aperture as they instead disclose a transparent but solid window. Appeal Br. 31-32; Reply Br. 31-32. We agree with Appellant. Figure 3 of Steed is reproduced below: Figure 3 of Steed depicts “a side view of the camera assembly of FIG. 1.” Steed 3:11. As shown in Figure 3 of Steed, lens cover 14 appears to form a transparent yet solid surface in front of camera 2, not a physical aperture. See also id. at 3:67-4:3 (“A lens cover 14 is secured over the top of base 8, providing protection for both the camera and the light bulbs and concealment for the camera.”). The Examiner also relies on Figure 5 of Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 18 Steed, which is merely “an exploded view of the camera assembly of FIGS. 1-4” (i.e., the same embodiment with the same deficiency). Id. at 3:15-16. Thus, Steed does not teach or suggest the claimed “opening.” As discussed above, Ramachandran also does not disclose the claimed “opening,” and the Examiner does not rely on obviousness to cure this deficiency. Accordingly, we do not sustain this rejection of claims 1, 2, 4-6, and 12-18. Hilborn & Lang (Claim 1) The Examiner relies on Figure 10 of Hilborn, which is reproduced below: Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 19 Figure 10 of Hilborn illustrates an exploded view of a brake light assembly, including light bulbs 160 and 162, viewing device 164 (e.g., a camera), outer covering lens 152, and aperture 166. Hilborn ¶¶ 33, 54, 12. First, claim 1 recites “an opening in the translucent area of the vehicle lens.” Furthermore, claim 1 recites that the translucent area is “of a predetermined color for allowing light transmission therethrough of the predetermined color.” Appellant argues that the Examiner has not shown Hilborn’s opening is “in the translucent area”: As Hillborn’s Figure 10 shows, the outer covering lens 152 has two sections, shown in cross-hatching in Figure 10, that allow light to shine through from bulbs 160 and 162. While these sections may be translucent, aperture 166 is not located in either of those sections. Rather, it is located between those sections. The Examiner pointed to nothing in Hillborn indicating that the remaining surface area of outer covering lens 152 is translucent. Appeal Br. 35. The Examiner determines: Hillborn refers to item 152 as a vehicle lens . . . , which includes the cross hatching area as well as other areas noted by Appellant. A lens is a light transmission element. Furthermore, Hillborn at ¶0054 states that this vehicle lens assembly is used as a brake light assembly and thus would be colored red. Finally, . . . Lang . . . also teaches . . . coloring the vehicle lens red . . . . Ans. 26. Appellant further argues that “‘colored’ and ‘translucent’ are not synonyms.” Reply Br. 35. Appellant appears to be implying that even if Hilborn’s lens 152 were colored red around aperture 166, it would not necessarily be translucent (e.g., it could be red and opaque). Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 20 Unlike the rejection for anticipation over Lang alone, the rejection here is premised on obviousness, not anticipation. Thus, although we agree with Appellant that it is not inherent that the region of lens 152 around aperture 166 is necessarily translucent and red, we agree with the Examiner that it would have been obvious for Hilborn’s component called a lens in a brake light to be translucent and red in its entirety. A person of ordinary skill in the art would have been familiar with actual car brake lights usually being translucent and red (see Appeal Br. 26), and a lens with a single color and a single translucency would have been simpler, cheaper, and more obvious than one of multiple colors or multiple translucencies. See, e.g., DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”). This is true for both upper and lower brake lights. See Hilborn ¶ 15. Thus, Appellant’s argument is not persuasive against the obviousness of this limitation. Second, Appellant argues that it would not have been obvious “to substitute the fixed camera of Hillborn with the swivel camera of Lang” because Hilborn’s “lens is almost exactly the same size vertically as camera 164” and “any angling of the Hillborn camera would move the viewing axis of the camera 164 outside of the viewing port 166.” Appeal Br. 36. However, we agree with the Examiner that “a person of ordinary skill in the Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 21 art is also a person of ordinary creativity, not an automaton, and thus would know to appropriately adjust the location/dimensions of the view port of Hillborn to allow viewing outside the vehicle lens when presented with such teachings.” Ans. 27; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Moreover, as discussed below, Hilborn discloses using a “variable lens” that can change, for example, its field of view, and aperture 166 already would have to accommodate such changes. E.g., Hilborn ¶¶ 16, 42, 53. Appellant also argues that although Lang discloses adjusting the camera either manually or via actuators, manual adjustment “would not be practical in Hillborn given the camera’s recessed position” and actuators “would add significant cost and complexity . . . without any discernible benefit.” Appeal Br. 37. Appellant further argues that Hilborn teaches away because it already teaches a “maximum field of view” and even a “variable lens.” Id. (citing Hilborn ¶¶ 15-16). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation omitted). Thus, “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant has identified the disclosure of alternative designs in Hilborn but no criticisms in Hilborn of Lang’s technique. Thus, we agree with the Examiner that Hilborn’s “mere disclosure of more than one alternative does not constitute a teaching away.” Ans. 27. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 22 Moreover, as Appellant points out (Appeal Br. 37), Hilborn already discloses alternatives that use a “variable lens” rather than a “fixed lens”: The viewing device may be provided with a fixed lens or, if desired, a variable lens to provide wider fields of view, close up, or the like, as is well known in the camera/lens art. If a variable lens is provided on the viewing device, the lens is remotely operated by the operator of the vehicle. Hilborn ¶ 16; see also id. ¶¶ 42 (“a lens that can pan, have various focal distances and the like, all remotely operated by the operator of the vehicle 14”; “the lens 32 may be of conventional design well known in the art”), 53 (similar). Although Appellant argues that actuators “would add significant cost and complexity . . . without any discernible benefit” (Appeal Br. 37), this is contradicted by Hilborn teaching a “variable lens,” i.e., actuators for the lens allowing pan, zoom, etc. Appellant fails to explain why applying actuators to the camera instead of the lens would have been anything more than an obvious design choice, particularly given how Hilborn already discloses the other necessary components (e.g., remote operation by the operator of the vehicle) and how Hilborn repeatedly emphasizes such variable lenses would have been “well known in the camera/lens art.” Hilborn ¶¶ 16, 42, 53; see also KSR, 550 U.S. at 417 (“when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”) (quotation omitted). Accordingly, we sustain this rejection of claim 1. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 23 Lang & Bauer (Claim 7) Claim 7 depends from claim 1 and further recites “the camera body includes an infrared sensor.” The Examiner determines that “Bauer’s camera system uses infrared lights for capturing images with a camera at night time, i.e., in dark conditions” and “the image sensors of such cameras capturing images from IR light would thus be IR image sensors.” Ans. 28. Appellant contends “Bauer teaches the use of infrared LEDs, and that the camera can detect that light without the need for an infrared sensor specifically.” Appeal Br. 38. According to Appellant, “the passages cited by the Examiner do not mention or suggest an infrared sensor” and “the only sensors taught by Bauer are ambient light sensor 34 and direct glare sensor 36.” Id. (citing Bauer Fig. 2). Bauer provides the following discussion of infrared light: For some imaging systems, it may be necessary to provide supplementary illumination during dark conditions to achieve satisfactory imaging. . . . IR LEDs have the advantage of providing light which is detectable by silicon imaging technologies while not being visible to the human eye. Therefore, if IR supplementary illumination is used, IR emitter 140 can be on whenever camera 26a is operating without becoming distracting to other drivers. LEDs of between 780 and 800 nm peak wavelength are preferred, since they are not visible to humans but are near enough to the visible spectrum to not be severely aberrated by an optical system designed for visible wavelengths. Bauer 10:7-20. Thus, Bauer discloses a camera using infrared light “detectable by silicon imaging technologies.” We agree with the Examiner that, especially Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 24 for obviousness, Bauer’s disclosure of a camera using “silicon imaging technologies” to detect infrared light from IR LEDs teaches or at least suggests an “infrared sensor.” “The prior inventor does not need to . . . . conceive of its invention using the same words as the patentee would later use to claim it.” Teva Pharm. Indus. Ltd. v. AstraZeneca Pharms. LP, 661 F.3d 1378, 1384 (Fed. Cir. 2011). Moreover, Bauer is not limited to its preferred embodiment of infrared wavelengths near the visible spectrum. In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“a reference is not limited to the disclosure of specific working examples”). Nevertheless, claim 7 depends from claim 1, for which the Examiner relies on the anticipation rejection over Lang alone. Final Act. 35. We reversed the anticipation rejection of claim 1 over Lang for the reasons stated above, and therefore reverse this rejection of dependent claim 7 based solely on that dependency. Accordingly, we do not sustain this rejection of claim 7. Miki & Ramachandran (Claims 12, 14, and 15) Independent claim 12 recites “an opening in the translucent area of the vehicle lens.” As discussed above, the term “opening” requires a physical aperture, which Ramachandran does not teach or suggest. The Examiner also relies on the embodiment shown in Figure 10 of Miki, which is reproduced below. Final Act. 35-37; Ans. 28-30. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 25 Figure 10 of Miki depicts a “camera in the side lamp cover” of a vehicle. Miki 9:39-40. “In the structure of FIG. 10, a camera lens 21a and a cylindrical portion 21c for mounting a CCD circuit substrate 21b are integrally formed in the lamp cover 92a.” Id. at 9:40-43. Just as the “integrally formed” cover in the ’961 patent does not have an “opening,” so too Figure 10 of Miki lacks a physical aperture in lens 92a. See Appeal Br. 39. The Examiner does not rely on Figure 11 of Miki so we do not address that embodiment here.2 Final Act. 35-37; Ans. 28-30. 2 However, in the event of further prosecution, the Examiner may wish to consider applying Figure 11 of Miki to the claims of the ’961 patent. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 26 Accordingly, we do not sustain this rejection of claim 12, and its dependent claims 14 and 15. Lang & Ramachandran (Claims 12-15) For this rejection of independent claim 12, the Examiner relies on the embodiment shown in Figure 2 of Lang for all limitations except the base “containing a wireless transmission circuit for wirelessly transmitting video signals to a receiver,” for which the Examiner relies on Ramachandran. Final Act. 38-39; Ans. 30. When applied to Figure 2 of Lang, Appellant’s arguments against “an opening in the translucent area of the vehicle lens” and “a camera body within the vehicle lens and at the opening such that the camera body has a viewing axis through the opening” are not persuasive for the reasons discussed above. Appeal Br. 41. Notably, Appellant does not challenge the obviousness of “the vehicle lens having a . . . translucent area of a predetermined color for allowing light transmission therethrough of the predetermined color.” Id. Claim 12 also recites “the vehicle lens is being attached to the camera body.” Appellant argues that Lang “discloses, at best, that vehicle lens 72 and camera body 14 are attached in association with each other via the base 16” whereas “the term ‘attached to’ in the ’961 patent requires a direct connection.” Appeal Br. 41 (quotation omitted). This is not persuasive because we rejected Appellant’s claim construction for “attached to.” For dependent claim 13, Appellant argues that “the Examiner failed to establish that claim 13 is obvious over Lang . . . in view of Ramachandran” “for the same reasons discussed regarding the rejection of claim 13 over Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 27 Ramachandran in view of Lang.” Appeal Br. 42. For that rejection of claim 13, Appellant argued that “[a]s detailed above regarding the rejection of claim 1 . . . one skilled in the art would not have modified Ramachandran to include [Lang’s] tiltable camera such that Ramachandran’s camera would have a viewing axis at an angle between about 15 to 75 degrees with respect to a plane of the base.” Id. at 29. In turn, for the specified rejection of claim 1, Appellant argued that it would not have been obvious to modify Ramachandran’s view port to accommodate Lang’s tilting camera. Id. at 25-28. However, here the Examiner is not modifying Ramachandran’s view port, but instead is relying solely on Lang for these features. Appellant makes no argument that Ramachandran’s wireless transmission (the sole feature for which Ramachandran is used in this rejection of claims 12 and 13) has any impact on the angling of the camera’s viewing axis in Lang. Appellant’s arguments for the Ramachandran/Lang rejection therefore are not applicable to this Lang/Ramachandran rejection. Accordingly, we sustain this rejection of claims 12 and 13, and dependent claims 14 and 15, which Appellant argues are patentable for similar reasons. See Appeal Br. 42; 37 C.F.R. § 41.37(c)(1)(iv). Lang & Ramachandran (Claims 16-18) Unlike independent claims 1 and 12 for which the Examiner relies on Figure 2 of Lang for teaching the claimed “opening,” for independent claim 16, the Examiner relies on Figure 3 of Lang. Final Act. 40; Ans. 31-32. As discussed above, Figure 3 of Lang discloses a clear lens enclosing the camera but no physical aperture. Ramachandran similarly fails to teach a physical aperture for the reasons discussed above. We therefore agree with Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 28 Appellant that the Examiner’s rejection for claim 16 fails to adequately address the claimed “opening.” Accordingly, we do not sustain this rejection of claim 16, and its dependent claims 17 and 18.3 Ramachandran (Claims 16-18) For the reasons discussed above, Ramachandran’s view port 336 fails to teach or suggest an “opening,” as recited in independent claim 16. Accordingly, we do not sustain this rejection of claim 16, and its dependent claims 17 and 18. Kendrick & Ramachandran (Claims 16-18) Independent claim 16 recites “a base for mounting on a vehicle, the vehicle lens being attached to the base.” For this limitation, the Examiner relies on the embodiment shown in Figure 4 of Kendrick, which is reproduced below: 3 In the event of further prosecution, the Examiner may consider applying Figure 2 of Lang to claims 16-18 rather than Figure 3. The Examiner may also wish to consider applying the combination of Lang and Ramachandran to dependent claims 4-6. See Final Act. 25 (finding the additional limitations of claims 4-6 taught in Ramachandran for a different rejection). Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 29 Figure 4 of Kendrick is a “cross sectional view” of Figure 3, and both figures depict a camera 10 mounted in a vehicle’s rear turn signal and stop lamp assembly 6. Kendrick 3:47-51, 4:47-49. “The video camera 10 has a lens 11,” and “the lens portion 7 . . . has a hole . . . through which the lens 11 of the video camera 10 faces.” Id. at 4:42, 4:49-53. “The lens portion 7 . . . has a generally transparent window 12 covering the hole . . . .” Id. at 4:53- 57. A “pair of servos 13,14 permit pivoting of the lens 11 of the video camera.” Id. at 4:63-64. The Examiner determines that “Kendrick discloses a base, identified as the item 10 which supports the camera body, and a vehicle lens 7 which are attached together to form the taillight assembly shown in FIG. 4.” Ans. 35-36. “Since Kendrick discloses at least an indirect connection, Kendrick meets the attached [limitation] as required in claim 16.” Id. at 36. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 30 Appellant argues that “the Examiner’s characterization of Kendrick’s element 10 as the ‘base’ conflicts with Kendrick’s disclosure” because “Kendrick identifies element 10 as a ‘video camera.’” Reply Br. 47 (citing Kendrick 4:38-40). Appellant notes that “Claim 16 separately recites a camera body” as well as a base. Id. Finally, Appellant contends that “Kendrick makes clear that the video camera is a separate piece that is mounted to a previously existing turn signal light.” Appeal Br. 45. We are not persuaded by Appellant’s argument. Here, the Examiner has specifically identified the components in Kendrick that map to the claimed “vehicle lens” (lens portion 7), “base” (the long rectangular box where the line for 10 points to), and “camera body” (the smaller rectangular box between lens 11 and the longer rectangular box that the Examiner has identified as the “base”). Ans. 36; Final Act. 44-45. Kendrick refers to “video camera 10” as including both (1) the smaller rectangular box that the Examiner ties to the claimed “camera body” and (2) the longer rectangular box that the Examiner ties to the claimed “base.” However, independent claim 16 similarly requires, “A vehicle camera, comprising:” (1) “a camera body” and (2) “a base for mounting on a vehicle.” Thus, it is not unreasonable for the Examiner to map sub-components of Kendrick’s “video camera 10” to sub-components of the claimed “vehicle camera.” Kendrick also discloses that “[t]he video camera 10 is designed for mounting to the passenger side 5 of the vehicle 1 adjacent the rear 4 of the vehicle 1.” Kendrick 4:40-42. Thus, it is not unreasonable for the Examiner to map the sub-components of video camera 10 used for Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 31 “mounting to . . . the vehicle 1” as the claimed “base for mounting on a vehicle.” Appellant’s arguments regarding “attached to” requiring a direct connection also are not persuasive for the reasons discussed above. Appeal Br. 46; Reply Br. 47-48. Finally, Appellant argues that “Ramachandran also fails to disclose an internal reflector surface, as required by claim 16.” Appeal Br. 45; see also id. at 43-44 (discussing the same argument for the combination of Lang and Ramachandran). According to Appellant, although Ramachandran teaches that the lens “may have a ribbed or diamond shaped surface,” “Ramachandran does not disclose that the ribbed or diamond shaped surface is for the purpose of (or that it accomplishes) reflecting light (as opposed to, for example, limiting reflection of light).” Id. at 43. However, we agree with the Examiner’s determinations that a person of ordinary skill in the art would have known that the ribbed or diamond shaped surfaces taught by Ramachandran . . . would reflect and refract light. Such is simply a basic property of any lens structure regardless of application. Furthermore, one having ordinary skill in the art would know that providing such a surface on a brake light assembly has the purpose of diffusing light. Ans. 32-33. The prior art need not use the exact same words as the patentee. Teva, 661 F.3d at 1384. Moreover, the Examiner points out that the prior art reference Bauer (applied in another rejection) further confirms that a person of ordinary skill would have understood the purpose of Ramachandran’s ribbed or diamond shaped surfaces: Lens zone 374 overlies the array of LEDs 362 of first light 180 and preferably has a roughened surface to diffuse the light Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 32 emitted from LEDs 362. For example, lens zone 374 could be configured as a comer cube diffuser. The lens zone overlying the two arrays of LEDs 364 of second light 182 may be configured as a Fresnel lens or in any other manner so as to project illumination as fully as possible within the field view of camera 26a. Bauer 12:58-65 (quoted by Ans. 33). “Whether a claim is invalid for obviousness is determined from the perspective of one of ordinary skill in the art.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013) (citing KSR, 550 U.S. at 420 (“The question is . . . whether the combination was obvious to a person with ordinary skill in the art.”)). Other than conclusory and unsupported attorney argument, Appellant fails to adequately challenge the Examiner’s determination that to a person of ordinary skill in the art, Ramachandran’s disclosure of ribbed or diamond shaped surfaces on a lens would have taught or suggested an “internal reflector surface.” Bauer simply confirms what a person of ordinary skill would have understood from Ramachandran’s disclosure of ribbed or diamond shaped surfaces, and Appellant presents no substantive evidence challenging the Examiner’s determination. Accordingly, we sustain this rejection of claim 16, and its dependent claims 17 and 18, which Appellant argues are patentable for similar reasons. See Appeal Br. 46; 37 C.F.R. § 41.37(c)(1)(iv). REJECTIONS UNDER 37 C.F.R. § 41.50(b) Under 37 C.F.R. § 41.50(b), we issue the following two new grounds of rejection for obviousness based on 35 U.S.C. § 103: (1) claims 1-3 over Lang and (2) claim 7 over Lang and Bauer. Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 33 § 103: Claims 1-3 over Lang As discussed above, we reversed the Examiner’s anticipation rejection of claims 1-3 over Lang because Lang does not expressly or inherently disclose “the vehicle lens having a translucent area of a predetermined color for allowing light transmission therethrough of the predetermined color.” In particular, Lang discloses a “brake light,” but a brake light can be red from a red light source rather than a red cover, as evidenced by Lang’s example of “[t]he housing cover may also be a generally clear cover and the lighting element can emit a red light.” Lang ¶ 11. Nevertheless, Lang is not limited to that particular embodiment. See In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment.”). For example, claims 6-8 of Lang apply the “generally clear cover” and “red light” only to dependent claims with the fully-enclosed embodiment shown in Figure 3, not the cover with an opening shown in Figure 2. See also Lang ¶ 11. As suggested by the Examiner, it would have been obvious to a person of ordinary skill in the art to make Lang’s housing cover 72 translucent and red given that was the ordinary and customary practice in the vast majority of vehicles in the United States, thereby providing a clear reason to do so here. Appeal Br. 12. Moreover, by law in at least some jurisdictions, a brake light must emit red light, and whether the red comes from the light source, the cover, or both are “a finite number of identified, predictable solutions” that are obvious variations. KSR, 550 U.S. at 421. Although Appellant is correct that Lang Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 34 does not anticipate this limitation, it nonetheless would have been obvious to a person of ordinary skill in the art. For all other limitations of claims 1-3, we rely on the Examiner’s findings and conclusions for the embodiment shown in Figure 2 of Lang. Therefore, in a new ground of rejection, we reject claims 1-3 under 35 U.S.C. § 103 as obvious over Lang. § 103: Claim 7 over Lang & Bauer Claim 7 depends from claim 1. As discussed above, we reversed the Examiner’s rejection of claim 7 over Lang and Bauer solely because it relied upon the Examiner’s rejection of claim 1 over Lang for anticipation, which we reversed. However, in a new ground of rejection, we reject claim 1 over Lang for obviousness. We therefore modify the Examiner’s rejection of claim 7 over Lang and Bauer to be based on our new ground of obviousness against claim 1. We agree with and adopt the Examiner’s other findings and conclusions for this rejection. OUTCOME The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 1-3 102 Lang 1-3 1-3 103 Lang 1-3 12, 14, 15 102 Ramachandran 12, 14, 15 1, 2, 4-6, 13 103 Ramachandran, Lang 1, 2, 4-6, 13 1, 2, 4-6, 12-18 103 Steed, Ramachandran 1, 2, 4-6, 12-18 1 103 Hilborn, Lang 1 7 103 Lang, Bauer 7 7 12, 14, 15 103 Miki, Ramachandran 12, 14, 15 Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 35 Claim(s) Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 12-18 103 Lang, Ramachandran 12-15 16-18 16-18 103 Ramachandran 16-18 16-18 103 Kendrick, Ramachandran 16-18 Overall Outcome 1, 12-18 2-7 1-3, 7 TIME TO RESPOND 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 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 Appeal 2022-000836 Reexamination Control 90/020,131 Patent 7,609,961 B2 36 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. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED IN PART; 37 C.F.R. § 41.50(b) APJ Initials: MJE JAJ ARM Paralegal Initials: hh