Michael Bodary et al.

Patent Trials and Appeals Board

Dec 3, 2019

14080363 - (D) (P.T.A.B. Dec. 3, 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.
14/080,363 11/14/2013 Michael BODARY 077410.1305 6404
28763 7590 12/03/2019
BAKER BOTTS L.L.P.
30 ROCKEFELLER PLAZA
44th Floor
NEW YORK, NY 10112-4498
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
12/03/2019 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):
DLNYDocket@bakerbotts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL BODARY, DAVID DINIUS,
EDWARD BERNIER, and LIMING CAI

Appeal 2018-008303
Application 14/080,363
Technology Center 3700
____________

Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 12–21, 23–27, 29, and 30.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART and enter NEW GROUNDS 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 Pactiv LLC.
Appeal Br. 2.
2 Claim 22 is cancelled and claims 1–11 and 28 are withdrawn from
consideration. Appeal Br. (Claims App.).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates to a disposable cup for serving
beverages, such as water and coffee, and food items, such as soup or ice
cream. Particularly, the presently disclosed subject matter is directed to a
blank having a multilayer structure to provide improved insulating
properties, among other benefits.” Spec. ¶ 2.
Claims 12 and 21 are independent. Claim 12 illustrates the claimed
subject matter.
12. A multilayer article, comprising:
a first substrate having an inner surface and an
outer surface;
a second substrate having an inner surface and an
outer surface; and
an expandable insulating material applied to the
inner surface of at least one of the first substrate and the second
substrate, wherein the expandable insulating material is in a
first condition and is configured to expand to a second
condition upon application of energy, and
wherein the second substrate is adhered to the first
substrate with the expandable insulating material therebetween
to form a blank, wherein an insulating space is defined in the
blank between the first substrate and the second substrate with
the expandable insulating material therein, the insulating space
having a first volume when the expandable insulating material
is in the first condition and the insulating space having a second
volume when the expandable insulating material is in the
second condition.

Appeal Br. 25 (Claims App.).

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REJECTIONS
The following rejections are before us for review:
Claims 21, 23–27, 29, and 30 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.3
Claims 12–21, 23–27, 29, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mochizuki (US 6,193,098 B1, issued Feb. 27,
2001) and Fu (US 2009/0321508 A1, published Dec. 31, 2009).

ANALYSIS
Written Description
Claim 21 recites “the expandable insulating material is configured to
be expanded from the first condition to the second condition with the
compartment empty to form a finished insulated cup,” and claim 29, which
depends from claim 12, recites “the expandable insulating material is
expanded to the second condition by application of energy with the
compartment empty.” Appeal Br. (Claims App.) (emphasis added). The
Examiner finds that the subject matter of “the expandable material
expanding when the compartment is empty” in claims 21 and 29 is not
described in the Specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventors had possession of the claimed
invention at the time the application was filed. Final Act. 3.
In contrast, Appellant contends that a person of ordinary skill in the
art would understand that Appellant had possession of the claimed subject

3 The heading of the rejection also lists cancelled claim 22. Final Act. 3.
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matter when the application was filed. Appeal Br. 19. In support, Appellant
points out that the Specification describes applying convective heat to an
article at approximately 100°F to approximately 500°F using a convective
heat tunnel. Id. (citing Spec. ¶¶ 67, 994). Appellant contends that a person
of ordinary skill in the art would understand that such heating in a heat
tunnel would occur with the compartment of the article empty. Id.
Appellant also points out that the Specification describes curing an
expandable insulating material for approximately 20 hours to approximately
60 hours, and contends that one of ordinary skill in the art would understand
such curing would occur with the compartment empty, not during use or
consumption. Id. at 19–20 (citing Spec. ¶ 695).
Appellant further points out that paragraph 806 and Figure 7 of the
application disclose a flat blank that has been expanded by the application of
energy. Appeal Br. 20. Appellant asserts that the expanded blank in Figure
7 has no compartment, and thus, this demonstrates that the disclosed subject
matter contemplates expanding the insulating material without contents in
the compartment of a formed cup. Id. Appellant also contends that Figure
10 depicts a flow chart of a method of making a multilayer article according
to an embodiment of the disclosed subject matter, where the method does
not require adding contents to the compartment of a formed article prior to
applying energy to expand the insulating material. Id.

4 Appellant appears to cite description contained in paragraph 97 of the
original Specification, not in paragraph 99.
5 Appellant appears to cite description contained in paragraph 67 of the
Specification, not in paragraph 69.
6 Appellant appears to cite description contained in paragraph 79 of the
Specification, not in paragraph 80.
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In response, the Examiner states, “it is the [E]xaminer’s posit[i]on that
compartment being empty was not described in the specification in such a
way as to reasonably convey to one skilled in the relevant art that . . .
[Applicant] had possession of the claimed invention.” Ans. 7.
The test for sufficiency under the written description requirement of
35 U.S.C. § 112 “is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). To have “possession,” “the specification must . . . show that the
inventor actually invented the invention claimed.” Id.
Appellant’s position is persuasive. Paragraph 63 of the Specification
describes, “the first and second substrates can be adhered to each other and
dried to form a blank and, after forming an article from the blank, can
subsequently be processed with energy, such as but not limited to radio
frequency (RF), infrared, convection, conduction, laser, heat, microwaves, or
the like, such that the expandable insulating material 200 includes a second
condition.” Paragraph 94 describes that “[t]he application of energy can be
applied by any conventional methods as known in the art, for example but
not limited to, by use of an open/closed oven, hot air application,
microwave, laser device, heated mandrel, radio frequency (RF), infrared,
convection, conduction or the like.” The Specification describes applying
convective heat at approximately 400°F–500°F to expand the insulating
material. Spec. ¶ 65. As for the use of a “heated mandrel,” the Specification
describes “a system of mandrels, heated or otherwise, fits within and exterior
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to the insulating cup to form the structure of the cup.” Id. ¶ 93 (emphasis
added).
The Specification appears to describe that mandrels that fit within an
insulating cup can be used to expand the expandable insulating material.
Accordingly, it appears that the insulating cup would not be empty during
such heating. However, the Specification also describes that energy can be
applied to expand the insulating material using other methods, such as hot
air, convection, and RF and infrared radiation. Although Appellant’s
Specification does not appear to expressly describe that the cup is “empty”
when the insulating material is expanded by applied energy, there is no
requirement that the Specification must expressly describe that the article
being processed is empty when the energy is applied in order to satisfy the
written description requirement. The Examiner does not persuasively refute
Appellant’s position that a person of ordinary skill in the art would
understand that heating in a heat tunnel would occur with the compartment
of the article empty, in light of Appellant’s disclosure.
Accordingly, we do not sustain the rejection of claim 21 and
dependent claims 23–27, 29, and 30 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.

New Ground of Rejection – Indefiniteness
Claim 12 is directed to a multilayer article comprising a first substrate
and a second substrate, “wherein the second substrate is adhered to the first
substrate with the expandable insulating material therebetween to form a
blank.” Appeal Br. 25 (Claims App.) (emphasis added). We note that the
Specification describes, for example, Figure 6 as a cross-section view of a
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multilayer blank; Figure 7 as a cross-section view of the multilayer blank of
Figure 6; and Figure 8 as a view of “an insulating cup having a multilayer
blank.” Spec. ¶¶ 21–23. Figure 10 depicts a flow chart of a method of
making a multilayer article, which includes step 509 of “[f]orming the blank
into article.” Based on the method depicted in Figure 10, an article is made
from a blank by forming, but prior to forming the blank is not an article.
We find that it is unclear whether claim 12 is directed to: (1) a
multilayer article formed from the recited “blank”; (2) the blank itself prior
to being formed into a multilayer article; or (3) both a multilayer article
formed from the blank and the blank itself prior to being formed into the
multilayer article.
Appellant contends that “the claimed subject matter . . . relates to a
blank, not a container” (Appeal Br. 10) and “a container is not a blank”
(Reply Br. 5). According to Appellant, “[i]n failing to recognize the
distinction between a blank and a container, the Office Action does not and
cannot identify the differences between the claimed subject matter and the
prior art.” Appeal Br. 12. Appellant also contends, “[t]he Examiner’s
Answer attempts to minimize distinctions between the art of record and the
claimed subject matter by mischaracterizing the finished container of
Mochizuki as a blank on one hand and simultaneously arguing that the
finished containers of Mochizuki and Fu are made from blanks on the
other.” Reply Br. 5.
Appellant’s contentions seem to support our finding that claim 12 is
unclear. Particularly, it is not sufficiently clear that claim 12 is directed to
the recited blank itself, rather than to a multilayer article formed from the
recited blank. Nor is it clear whether claim 12 has a scope that encompasses
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both the recited blank itself and a multilayer article formed from the recited
blank. In this regard, we note that claim 29, which depends from claim 12,
recites that “the multilayer article is a sidewall defining a compartment.”
Appeal Br. 28 (Claims App.). We understand that claim 29 is directed to a
multilayer article (i.e., sidewall) formed from a blank to define a
compartment. As claim 29 recites a multilayer article defining a
compartment (i.e., at least a portion of a container), it is unclear how claim
12 can be construed to not relate to a container and still be consistent with
claim 29. 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 it
“contains words or phrases whose meaning is unclear.” See In re Packard,
751 F.3d 1307, 1310 (Fed. Cir. 2014). Here, claim 12 contains language that
has an unclear meaning. Thus, we conclude that claim 12 and its dependent
claims 13–20 and 29 fail to comply with the requirements of 35 U.S.C.
§ 112, second paragraph. Therefore, pursuant to 37 C.F.R. § 41.50(b), we
enter a new ground of rejection of claims 12–20 and 29 under 35 U.S.C.
§ 112, second paragraph.

Obviousness over Mochizuki and Fu
Claims 12–20 and 29
Having determined above that claims 12–20 and 29 are indefinite, we
cannot sustain the noted rejection of these claims under 35 U.S.C. § 103(a),
because in order to do so would require speculation on our part as to the
scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir.
2011) (holding that the Board erred in affirming an anticipation rejection of
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indefinite claims); In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding
that the Board erred in affirming an obviousness rejection of indefinite
claims because the rejection was based on speculative assumptions as to the
meaning of the claims). Thus, we do not sustain the rejection of claims 12–
20 and 29 as unpatentable over Mochizuki and Fu.7
Claim 21
For claim 21, the Examiner finds that Mochizuki discloses a
multilayer article (heat-insulation container 100) comprising a second
substrate (tubular member 105) joined to a first substrate (side shell-wall
103), and an insulating space defined between the first and second
substrates. Final Act. 8 (citing Mochizuki, col. 1, ll. 48–65). The Examiner
determines that Mochizuki does not disclose an expandable insulating
material and that the second substrate is adhered to the first substrate with
the expandable insulating material therebetween, as claimed. Id.
The Examiner finds that Mochizuki discloses another embodiment in
which a second substrate is adhered to a first substrate. Id. at 9 (citing
Mochizuki, col. 8, ll. 64–66). The Examiner concludes that it would have
been obvious to one of ordinary skill in the art to adhesively join the first
substrate 103 and second substrate 105 of Mochizuki, so that the second
substrate 105 does not come of the first substrate 103. Id.
The Examiner applies Fu as teaching an insulating package having an
expandable insulating material (insulating material 216) applied to the inner
surface of at least one of a first substrate (inner wall 102) and a second

7 It should be understood, however, that our decision is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the references applied in the rejections.
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substrate (outer wall 104), wherein the expandable insulating material is in a
first condition and is configured to expand to a second condition upon
application of energy, and where the insulating package discloses
substantially all limitations of the recited “wherein” clause. Id. (citing Fu
¶¶ 27–29, Figs. 2, 6). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to provide an expandable
insulating material between first substrate 103 and second substrate 105 of
Mochizuki, as taught by Fu, “for the predictable result of providing rigidity
and to prevent creation of hot spots on outer wall when the article is
grabbed.” Id. at 9–10 (citing Fu ¶ 26). Accordingly, the Examiner proposes
to modify the heat-insulating container depicted in Figure 11 of Mochizuki
by incorporating Fu’s insulating material that expands when activated in the
heat insulating space.
Regarding the limitation “the expandable insulating material is
configured to be expanded from the first condition to the second condition
with the compartment empty to form a finished insulated cup,” the Examiner
finds that “the modified Mochizuki is capable of expanding when empty if
exposed to high temperature.” Id. at 10.
Appellant contends that Fu “specifically discloses and emphasizes a
cup having an insulating layer that can be shipped in an unexpanded state to
be expanded during consumption.” Appeal Br. 13 (citing Fu ¶ 40).
Appellant also contends that Mochizuki does not disclose an expandable
insulating material expanded upon application of energy. Id. Appellant
contends that the applied references would have led one skilled in the art “in
a direction divergent from the path that was taken by the applicant.” Id.
(citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
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We are not persuaded that Mochizuki directly contradicts Fu’s
disclosure “by explicitly aiming to provide the benefit of an insulated
container without using expandable plastics as a heat-insulating material.”
Appeal Br. 12. Mochizuki discloses:
In the heat-insulating container 30 as shown in FIG. l(c),
the side wall 5 of the tubular member 20 is supported from the
inside by means of the horizontal ribs 4, unlike the conventional
heat-insulating container 100 as shown in FIG. 11. It is
possible to reduce an amount of inward deformation of the side
wall 5 when the side shell-wall 1 is held with hand.
Mochizuki, col. 4, ll. 47–53 (boldface omitted).
Fu discloses:
When the container 100 is grabbed, a pressure exerted on
the outer wall 104 may act to collapse the outer wall 104 at
pressure points to reduce the air jacket 200 and potentially
initiate contact with an inner wall 102 of the container 100.
The air jacket 200 may collapse under pressure points and may
give a sense of low rigidity, and the contact may create hot
spots on the outer wall 104.
Fu ¶ 26 (boldface omitted).
To address this deformation problem, Fu discloses:
An insulating material 216 applied between the inner
wall 102 and the outer wall 104 may reduce or eliminate this
effect. If a sufficient amount of insulating material 216 is used,
the insulating material 216 may act to provide rigidity without
compromising the thermal insulation of the air jacket 200 to the
outer wall 104 such that the outer wall 104 does not collapse,
completely or partially.
Id. ¶ 27 (boldface omitted). Accordingly, Fu teaches addressing
disadvantages of the structure shown in Figure 2 without the added
insulating material 216 by applying the insulating material 216 between the
inner wall and outer wall to provide rigidity to and maintain the thermal
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insulation of the air jacket 200. Like the horizontal ribs taught by
Mochizuki, Fu’s insulating material is provided to address the problem of
deformation or collapse of the outer wall of a container when grasped by a
user. Accordingly, Appellant does not apprise of any error in the
Examiner’s reasoning that one of ordinary skill in the art would have
combined the teachings of Mochizuki and Fu to provide rigidity and prevent
creation of hot spots on the outer wall of an insulating cup when grabbed.
To the extent it is Appellant’s position that Fu is limited to teaching
insulated containers that use expandable plastics as a heat-insulating
material, we disagree. As noted by the Examiner, Fu discloses that “[t]he
insulating material 216 may be biodegradable, compostable and/or
recyclable.” Ans. 5 (citing Fu ¶ 28).
Also, Appellant does not apprise us of any error in the Examiner’s
position that adding insulating material between two substrates of a sidewall
does not necessarily increase the sidewall’s width. Ans. 5. For example,
Appellant does not persuasively show that adding insulating material in
Mochizuki necessarily increases the sidewall width as compared to the use
of horizontal ribs.
Regarding Appellant’s teaching away position, “[a] reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir.
2016) (citation omitted). “A prior art reference evidences teaching away if it
‘criticize[s], discredit[s], or otherwise discourage[s] the solution claimed.’”
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In re Brandt, 886 F.3d 1171, 1178 (Fed. Cir. 2018) (quoting In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Here, we are not persuaded that Fu teaches away from the limitation
“the expandable insulating material is configured to be expanded from the
first condition to the second condition with the compartment empty to form
a finished insulated cup.” To the contrary, we agree with the Examiner that
Fu teaches this limitation. For example, Fu describes:
Coatings of insulating material 216 may be applied to
paper, which may them be wrapped around a paper cup after the
coating is allowed to air dry. Heat from a heat gun may be used
to heat the part of the insulating material 216 coating indirectly
through the paper shell for one minute. The coating expanded.
Another part of the unheated insulating material 216 coating
may be heated under an IR lamp through the paper. The
insulating material 216 coating expanded.
Fu ¶ 63 (boldface omitted). This description does not indicate that energy
was applied to the article to expand the insulating material with its
compartment not being empty.
As another example, paragraph 81 of Fu describes that “[t]he
insulating material 216 may also be expanded after manufacturing and
before consumer use, such as at the stacking station. The insulating material
216 may be expanded before or after stacking the containers.” (Boldface
omitted).
Paragraph 82 of Fu describes:
The insulating material 216 may be activated during the in-line
manufacturing or afterwards, such as at the consumer stage. To
activate the insulating material 216 in-line, any or all of infrared
(IR), air, convection or conductive heating methods may be
used. The insulating material 216 may take a couple of seconds
to several minutes to fully expand. For example, a mandrel,
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which holds a container from the inside of the container, and/or
a collar, which holds a cup from the outside of the container,
may be used to apply heat to expand the insulating material 216
during the container manufacturing process.
(Boldface omitted, emphasis added).
None of these passages in Fu teaches or suggests that the insulating
material itself is not configured to be expanded with a compartment of the
container empty. Nor do these passages in Fu indicate that: the activation of
the insulating material before consumer use requires the container to not be
empty (i.e., to contain some substance or object) during activation; the
container must be activated only during consumer use; or activation only
prior to consumer use would be insufficient. Even if Fu teaches advantages
of activating the insulating material at the consumer stage, we are not
persuaded that Fu fails to teach, or teaches away from, activating the
insulating material “with the compartment empty.” Accordingly, we sustain
the rejection of claim 21 as unpatentable over Mochizuki and Fu.
Claims 23–27 and 30
For each one of claims 23–27 depending from claim 21, Appellant
merely states what the claim recites and asserts that its recited features are
not disclosed or suggested by the art of record. Appeal Br. 18–19.
However, as stated in In re Guldenaar Holding B.V., 911 F.3d 1157, 1162
(Fed. Cir. 2018):
our case law and Rule 41.37(c)(1)(iv) make clear that, for
an applicant to receive separate consideration by the Board for
each of its appealed claims, an applicant’s appeal brief must
contain substantive argument beyond “a mere recitation of the
claim elements and a naked assertion that the corresponding
elements were not found in the prior art.” In re Lovin, 652 F.3d
1349, 1356 (Fed. Cir. 2011); see also Rule 41.37(c)(1)(iv).

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Accordingly, Appellant’s contentions for claims 23–27 are insufficient, and
thus, do not apprise us of error.
Claim 30 depends from claim 21 and recites that “the expandable
insulating material is expanded to the second condition upon the application
of thermal energy between approximately 400° F and approximately 500°
F.” Appeal Br. 28 (Claims App.). As claim 30 depends from claim 21,
claim 30 incorporates the requirement that the expandable insulating
material is expanded to the second condition upon the application of thermal
energy with the “compartment empty.” Appellant contends that this
limitation would not have been obvious in view of Fu. Appeal Br. 16.
However, Appellant’s position is premised on Fu disclosing that activation
occurs at the consumption or use stage, not at the processing stage. Id. at 17.
This contention is unpersuasive for reasons discussed above.
Accordingly, as Appellant does not apprise us of error, we sustain the
rejection of claims 23–27 and 30 as unpatentable over Mochizuki and Fu.

New Ground of Rejection – Anticipation by Fu
As noted, the Examiner finds that Fu teaches an insulating package
having an expandable insulating material (insulating material 216) applied to
the inner surface of at least one of a first substrate (inner wall 102) and a
second substrate (outer wall 104), wherein the expandable insulating
material is in a first condition and is configured to expand to a second
condition upon application of energy, wherein the second substrate is
adjacent to the first substrate with the expandable insulating material
therebetween, and wherein an insulating space is defined between the first
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substrate and the second substrate with the expandable insulating material
therein. Final Act. 9 (citing Fu, Figs. 2, 6, ¶¶ 27–29).
Regarding the limitation “a base coupled to the bottom portion of the
sidewall when the expandable insulating material is in the first condition,”
Figure 2, for example, of Fu depicts a container 100 including a base
coupled to a bottom portion of a “sidewall.” As for the limitation that “the
expandable insulating material is configured to be expanded from the first
condition to the second condition with the compartment empty to form a
finished insulated cup,” as discussed above, we agree with the Examiner that
Fu also teaches this limitation. Thus, as we find that Fu discloses all
limitations recited in claim 21, pursuant to 37 C.F.R. § 41.50(b), we enter a
new ground of rejection of claim 21 under 35 U.S.C. § 102(b) as anticipated
by Fu. 8

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
21, 23–27,
29, 30
112, first
paragraph
Written
Description
21, 23–
27, 29, 30

12–21, 23–
27, 29, 30
103(a) Mochizuki, Fu 21, 23–
27, 30
12–20, 29
12–20, 29 112,
second
paragraph
Indefiniteness 12–20,
29
21 102(b) Fu 21
Overall
Outcome

21, 23–
27, 30
12–20, 29 12–21,
29

8 We leave it to the Examiner to determine whether Fu anticipates claims
23–27 and 30 depending from claim 21.
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FINALITY OF DECISION AND RESPONSE
This Decision contains new grounds 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,
[Appellant], within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground[s] 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[s] of rejection [are]
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[s] 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[s] of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground[s] 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 MPEP § 1214.01.
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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)