Michio Murai et al.

Patent Trials and Appeals Board

Jan 21, 2022

2021000477 (P.T.A.B. Jan. 21, 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. 13/812,913 01/29/2013 Michio Murai 10633US01 3007 154930 7590 01/21/2022 XSENSUS LLP 100 Daingerfield Road Suite 402 Alexandria, VA 22314 EXAMINER LOPEZ, RICARDO E. ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 01/21/2022 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): Faith.Baggett@xsensus.com Sandy.Miles@Xsensus.com anaquadocketing@Xsensus.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHIO MURAI and ATSUSHI MITSUI Appeal 2021-000477 Application 13/812,913 Technology Center 1700 Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and JANE E. INGLESE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1, 2, 4, 6, 8-11, and 14-23 under 35 U.S.C. § 103(a) as unpatentable over Honda (US 2004/0026178 A1, pub. Feb. 12, 2004), Huang (US 2012/0004351 A1, pub. Jan. 5, 2012), and Furukawa (US 2002/0006998 A1, pub. Jan. 17, 2002).3 1 This Decision includes citations to the following documents: Specification filed Jan. 29, 2013 (“Spec.”); Final Office Action dated Oct. 22, 2019 (“Final Act.”); Appeal Brief (“Appeal Br.”) and Claims Appendix (“Claims App.”) filed Apr. 24, 2020; Examiner’s Answer dated Aug. 6, 2020 (“Ans.”); and Reply Brief filed Sept. 14, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Mitsubishi Electric Corporation. Appeal Br. 2. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2021-000477 Application 13/812,913 2 For the reasons explained below, we affirm the Examiner’s decision to reject claims 1, 2, 4, 6, 8-11, and 14-23, but denominate the affirmance a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). We also enter a new ground of rejection of claims 8 and 9. CLAIMED SUBJECT MATTER The invention relates to an elevator rope for suspending an elevator car. Spec. ¶ 1. According to the Specification, “[i]n order to stop an elevator for a long period of time, it is necessary to maintain the static condition of a car by the frictional force between a rope and a sheave.” Id. ¶ 8. “[I]n order to perform an emergency stop or sudden stop of the elevator in operation, it is necessary to brake the elevator by the frictional force between the rope and the sheave . . . .” Id. A drawback of conventional elevator rope covering materials is that frictional heat can cause a decrease in strength. Id. The invention addresses this problem by providing “an elevator rope which has a stable friction coefficient that does not depend on temperature or sliding velocity.” Id. ¶ 9. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An elevator rope, comprising: a rope main body; and a covering resin layer that covers the periphery of the rope main body, the covering resin layer comprising a cross- linked product of a resin composition, wherein: the resin composition comprises a thermoplastic polyurethane elastomer and a crosslinking aid consisting of a vinyl compound having two or more vinyl groups per molecule; the thermoplastic polyurethane elastomer is selected from the group consisting of an ether-based thermoplastic Appeal 2021-000477 Application 13/812,913 3 polyurethane elastomer obtained from diphenylmethane diisocyanate, polytetramethylene glycol and butanediol, and an olefin-based thermoplastic polyurethane elastomer obtained from dipheylmethane diisocyanate, polybutadiene polyol and 2- ethyl-1,3-hexanediol; the thermoplastic polyurethane elastomer is the sole elastomer in the resin composition; the resin composition further comprises at least one inorganic filler in an amount so that the cross-linked product has a JIS A hardness of 98 or less and a glass transition temperature of -20°C or less; the at least one inorganic filler is in either fibrous or plate-like form; the amount of the at least one inorganic filler is equal to or less than 10 parts by weight, relative to 100 parts by weight of the thermoplastic polyurethane elastomer; and the elevator rope has a friction coefficient of 0.15 or more at a low sliding velocity of 1 x 10-5 mm/s and at the time of an emergency stop. Claims App. 1. OPINION Before discussing the merits of the rejection, we address the Appellant’s request that we reverse the rejection because the Examiner relied on MPEP § 2112(III), which relates to a rejection made under both 35 U.S.C. § 102 and § 103. Appeal Br. 6 (citing Final Act. 8). According to the Appellant, “[t]his is reversible error because the present rejection is not, and cannot be, lodged as a concurrent rejection under §§102 and 103. The rejection relies on three prior art references and therefore must be made under §103.” Id. The PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in Appeal 2021-000477 Application 13/812,913 4 “notify[ing] the applicant . . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). The Appellant’s argument does not persuade us that the Examiner failed to meet this procedural burden. First, it is clear from the heading and the rejection statement on page 2 of the Final Office Action that the rejection is under 35 U.S.C. § 103. The Examiner’s MPEP § 2112(III) citation appears only in the Final Office Action’s Response to Arguments section. Even if the Appellant had been confused by this citation, the Examiner quoted the appropriate language from MPEP § 2112.01 in the Advisory Action dated February 6, 2020. See Ans. 8; see also Advisory Action dated March 31, 2020. We turn now to the merits of the rejection. The Examiner made the following undisputed findings: the combined teachings of Honda, Huang, and Furukawa disclose or suggest an elevator rope comprising a resin layer that covers a rope’s main body; and the resin layer’s composition comprises “an ether-based thermoplastic polyurethane elastomer obtained from diphenylmethane diisocyanate, polytetramethylene glycol and butanediol,”4 “a crosslinking aid consisting of a vinyl compound 4 The claim language “obtained from diphenylmethane diisocyanate, polytetramethylene glycol and butanediol” is a product-by-process limitation. “The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or Appeal 2021-000477 Application 13/812,913 5 having two or more vinyl groups per molecule,” and “at least one inorganic filler” present in an amount of “equal to or less than 10 parts by weight, relative to 100 parts by weight of the thermoplastic polyurethane elastomer” (claim 1). See Final Act. 3-5; see generally Appeal Br. 5-10. The Examiner found that the references fail to explicitly disclose or suggest the following claim 1 limitations: “the resin composition further comprises at least one inorganic filler in an amount so that the cross-linked product has a JIS A hardness of 98 or less and a glass transition temperature of -20°C or less”; and “the elevator rope has a friction coefficient of 0.15 or more at a low sliding velocity of l x 10-5 mm/s and at the time of an emergency stop.” See Final Act. 5. obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.1985) (citations omitted). Had the Appellant challenged the Examiner’s determination that the Honda-Huang ether-based thermoplastic polyurethane elastomer patentably differed from the claimed ether-based thermoplastic polyurethane elastomer, the burden would have shifted to the Appellant to show that the use of diphenylmethane diisocyanate, polytetramethylene glycol and butanediol imparted structural and functional differences distinguishing the claimed ether-based thermoplastic polyurethane elastomer from the prior art ether-based thermoplastic polyurethane elastomer. See Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1267-68 (Fed. Cir. 2012). Though unnecessary to our decision, we note that Naito’s disclosure, discussed infra, suggests that the use of diphenylmethane diisocyanate, polytetramethylene glycol and butanediol does not impart a structural and functional difference that would distinguish the claimed and prior art ether-based thermoplastic polyurethane elastomers. Appeal 2021-000477 Application 13/812,913 6 Naito (WO 2010/071061 A1, published June 24, 2010)5 discloses “an elevator rope which has a stable friction coefficient that does not depend on temperature or sliding velocity.” Naito Abstract. According to Naito, the inventors found that “a material having small sliding velocity dependency of the friction coefficient has small frequency dependency of the loss modulus in a viscoelastic master curve.” Id. ¶ 10. Based on these findings, the inventors found that both the frequency dependency of the loss modulus and sliding velocity dependency of the friction coefficient could be reduced in an elevator rope by covering the rope’s main body with a resin material obtained by adding (a) a thermoplastic resin (other than a thermoplastic polyurethane elastomer) and an isocyanate compound having two or more isocyanate groups per molecule to a thermoplastic polyurethane elastomer or (b) inorganic fillers to a thermoplastic polyurethane elastomer. Id. Naito describes Embodiments (1) and (2) in which the resin materials comprise the aforementioned resin materials (a) and (b), respectively. See id. ¶¶ 21-38. Naito describes Embodiments (1) and (2) as providing “an elevator rope having a small variation in the friction coefficient in a wide range of sliding velocities from a small sliding velocity range required for maintaining a static condition of an elevator car to a large sliding velocity range during emergency or sudden stops of an elevator in operation.” Id. ¶¶ 33, 38. As to both Embodiments (1) and (2), Naito discloses that “an ether- based thermoplastic polyurethane elastomer is preferably used to prevent 5 Naito was cited by the Appellant in an Information Disclosure Statement filed November 30, 2017. We cite to the national stage application-US 2011/0192131 A1, published August 11, 2011-for an English language translation. Appeal 2021-000477 Application 13/812,913 7 hydrolysis which occurs in a usage environment.” Id. ¶ 23; see id. ¶ 35. “In consideration of flexibility and durability of the elevator rope, a polyether- based thermoplastic polyurethane elastomer having a JIS A hardness (hardness specified by JIS K7215 using a type A durometer) of 85 or more and 95 or less is more preferably used.” Id. For the reasons indicated by Naito, the ordinary artisan would have formulated the ether-based thermoplastic polyurethane elastomer used in Honda’s elevator rope to have a JIS A hardness range of 85 to 95. Naito discloses that the JIS A hardness of the final molded rope covering is 98 or less and preferably 85 or more because, when “the hardness is more than 98, the flexibility of the rope is liable to be impaired, resulting in an increase in the power consumption of the elevator.” Naito ¶ 28. Naito discloses that “sliding velocity dependency of the friction coefficient becomes smaller as the glass transition temperature of the molded product increases, while the elastic modulus of the molded product becomes larger as the glass transition temperature of the molded product increases.” Id. ¶ 29. The glass transition temperature is specified as -20°C or less, even more preferably -25°C or less, because the inventors have found that when a molded product having a higher glass transition temperature is employed for an elevator rope as the covering resin layer, the flexibility of the rope is liable to be impaired or fatigue failure such as cracking of the covering resin layer is liable to occur due to stress applied to the covering resin layer when the rope is bent repeatedly in an environment having a temperature higher than the glass transition temperature of the molded product. Id. As to Embodiment (1), Naito discloses that the blending ratio of resin composition (thermoplastic resin and isocyanate compound) to thermoplastic Appeal 2021-000477 Application 13/812,913 8 polyurethane elastomer can be adjusted to achieve a final molded rope covering having a JIS A hardness and glass transition temperature within the desired range. Naito ¶ 27. Naito discloses that “[t]he friction coefficient can be more stabilized against temperature or sliding velocity by adding inorganic fillers” to the resin composition-thermoplastic polyurethane blend. Id. ¶ 30. Naito discloses that “[t]he blending amount of the inorganic fillers may be appropriately adjusted so that the molded product has a JIS A hardness of 98 or less and a glass transition temperature of -20°C. or less.” Id. ¶ 31. The inorganic fillers described as suitable for use in Naito’s Embodiments (1) and (2) are the same. Compare Naito ¶ 30, with Naito ¶ 36. These fillers are also the same as those used in the present invention. Compare Naito ¶¶ 30, 36, with Spec. ¶ 29. Naito discloses that adding inorganic filler(s) improves the rope covering composition’s thermal conductivity, “and hence the composition can suppress a temperature variation on a friction interface, resulting in reduction of the variation in the friction coefficient even in the case where frictional heat is generated on the surface of the rope.” Naito ¶¶ 30, 36. “[I]n order to reduce a variation in the friction coefficient, a fibrous inorganic filler and a plate-like inorganic filler are preferably used.” Id. As to Embodiment (2), Naito discloses that [t]he mixing ratio between the thermoplastic polyurethane elastomer and inorganic filler is not particularly limited, but is preferably adjusted so that the inorganic filler is mixed in an amount within the range of 3 parts by mass or more and 20 parts by mass or less with respect to 100 parts by mass of the thermoplastic polyurethane elastomer and so that the molded product has a JIS A hardness of 98 or less and a glass transition temperature of -20°C. or less. If the amount of the inorganic filler is less than 3 parts by mass, a covering resin layer having a stable friction coefficient may not be obtained, while if the Appeal 2021-000477 Application 13/812,913 9 amount is more than 20 parts by mass, flexibility of the rope may be impaired or the covering resin layer may become fragile. Naito ¶ 37. Based on the benefits described in Naito, the ordinary artisan would have adjusted the inorganic filler and vinyl compound in the Honda-Huang- Furukawa composition so that the cross-linked product had a JIS A hardness of 98 or less and a glass transition temperature of -20°C or less. See, e.g., Naito ¶¶ 28-29. Naito describes preparing twenty-three different inventive compositions by adding at least one of an isocyanate batch-obtained by kneading 1.85 parts by mass of a polystyrene resin, 1.3 parts by mass of an epoxy resin, and 1.85 parts by mass of 4,4'-diphenylmethane diisocyanate-and a filler to an ether-based thermoplastic polyurethane elastomer. See Naito ¶¶ 57-79. The compositions differed in the combinations of the ether-based thermoplastic polyurethane elastomer’s JIS A hardness (80-95), amount of the isocyanate batch (0-20 parts by mass), and the amount and type of filler(s) (0-20 parts total). The compositions were extruded, applied to rope main bodies and heated at 100°C for 2 hours to form twenty-three resin covering layers. See id. ¶¶ 27, 77. Naito reported that each resin covering layer had a glass transition temperature of -20°C or less and JIS A hardness within the range of 85-98. See id. ¶¶ 84-85, 91 (Table 1). “Friction Coefficient of Rope” was measured in a small sliding velocity range, “defined as 1 x 10-5 mm/s” (id. ¶ 87) and in large sliding velocity range at the time of an emergency stop (id. ¶ 89). In each of the twenty-three examples, the elevator rope had a friction coefficient of 0.15 or more at a low sliding velocity of 1 x 10-5 mm/s and at the time of an emergency stop. Id. ¶ 91 (Table 1). Appeal 2021-000477 Application 13/812,913 10 Naito also describes preparing four comparative example compositions containing ether-based thermoplastic polyurethane elastomers, but no isocyanate batch or fillers. See Naito ¶¶ 80-83. The comparative compositions differed in the elastomer’s JIS A hardness (85, 90, 95, and 98, respectively). See id. In Comparative Examples 1-3, each resin covering layer had a glass transition temperature of -20°C or less. See id. ¶ 91 (Table 1). But the elevator rope had a friction coefficient of less than 0.15 at a low sliding velocity of 1 x 10-5 mm/s and at the time of an emergency stop. Id. In Comparative Example 4, which used an elastomer having a JIS A hardness of 98, the friction coefficient at a low sliding velocity of 1 x 10-5 mm/s was at least 0.15 but less than 0.2. Id. But the glass transition temperature was -10°C and the friction coefficient at the time of an emergency stop was less than 0.15. Id. From Naito’s testing of the examples and comparative examples, the ordinary artisan at the time of the invention would have sought to formulate the Honda-Huang-Furukawa composition to provide an elevator rope having a friction coefficient of more than 0.15 at a low sliding velocity of 1 x 10-5 mm/s and at the time of an emergency stop. See Naito ¶ 92. The ordinary artisan would have had a reasonable expectation of success in achieving this friction coefficient, as well as a JIS A hardness of 98 or less and a glass transition temperature of -20°C or less, by formulating Huang’s composition to include Furukawa’s plate-like or fibrous inorganic filler in an amount of 0- 20, preferably 5 to 10, parts by weight, and a crosslinking aid-a vinyl compound having two or more vinyl groups per molecule-present in an amount of 0-20, preferably about 10 parts by weight or less relative to 100 parts by weight of the ether-based thermoplastic polyurethane elastomer Appeal 2021-000477 Application 13/812,913 11 having a JIS A hardness of 85-95 and obtained from diphenylmethane diisocyanate, polytetramethylene glycol and butanediol. See id. (“[I]n Examples 13 to 20 where the isocyanate compound serving as a cross-linking agent and the inorganic filler were used in combination, variations in the friction coefficients were found to be small. Specifically, in the cases of the ropes having added thereto the plate-like inorganic filler such as talc or mica and the ropes having added thereto the fibrous inorganic filler such as the glass fiber or the carbon fiber, variations in the friction coefficients were found to be small.”); see also id. ¶¶ 69-76 (Examples 13-20 which included an ether-based thermoplastic polyurethane elastomer having a JIS A hardness of 90 or 95, 10 parts by mass isocyanate batch, and 5 or 10 parts by mass filler). The Appellant argues that the Examiner reversibly erred in finding that the elevator rope resulting from the Honda, Huang, and Furukawa combination would have inherently possessed “a friction coefficient of 0.15 or more at a low sliding velocity of 1 x 10-5 mm/s and at the time of an emergency stop” (claim 1). The Appellant argues that “the coefficient of friction depends on many variables, none of which are disclosed in the three- way combination of references.” Appeal Br. 9; see also id. at 8-9 (discussing Exhibit A: Gallagher, Coefficient of Friction, https://gallaghercorp.com/polyurethane-coefficient-of-friction/). The Appellant cites U.S. Patent No. 4,366,301, issued December 28, 1982 (“Le Roy”)6, as evidence that “altering the amount of cross-linking agent has a 6 Prior versions of claims 1, 2, 4, 6, 8-11, and 14-23 were rejected under 35 U.S.C. § 103(a) as unpatentable Honda, Le Roy, and Furukawa. See Final Appeal 2021-000477 Application 13/812,913 12 profound impact on the ultimate physical characteristics of the resulting polymer.” Reply Br. 1 (citing Le Roy 4:48-53). These arguments and evidence are not persuasive given Naito’s teaching of the variables that affect friction coefficient. In particular, Naito directs the ordinary artisan to select, from among the materials described in Huang and Furukawa, the same components in amounts that overlap those used in the Appellant’s covering layer: an ether-based thermoplastic polyurethane having a JIS A hardness of 85-95 (see Spec. ¶ 15); a cross- linking aid in amount of 0-20 parts by weight (see id. ¶ 18); and a fibrous or plate-like filler in an amount of 0-20 parts by weight (see id. ¶ 29). Further, Naito directs the ordinary artisan to use the same molding method and heat treatment conditions to form the resin covering layer described in the Specification. Compare Spec. ¶ 32 (Resin compositions having the compositions described in Table 1 were supplied to an extrusion molding machine, respectively, to thereby cover the periphery of rope main bodies with the resin compositions. The rope main bodies were covered with the resin compositions, respectively and then the resin compositions were irradiated with 150 kGy using a 10 MeV electron beam from an electron beam irradiation apparatus.7 The rope main bodies were heated at 100 °C for 2 hours in order to accelerate the cross-linking reaction and curing of an adhesive, to thereby obtain elevator ropes having a diameter of 12 mm.), ¶ 40 (Table 1, Example 7: mixture of ether-based thermoplastic polyurethane elastomer Office Action dated June 14, 2018. This rejection was withdrawn in an Advisory Action dated Nov. 13, 2018. 7 “As the cross-linking treatment, a heating treatment, an electron beam irradiation treatment or combinations thereof is conducted.” Spec. ¶ 20. Appeal 2021-000477 Application 13/812,913 13 having a JIS A hardness of 95, 5 parts by weight of a glass fiber and 5 parts by weight of a cross-linking aid; final product having a JIS A hardness of 98, glass transition temperature of -23 °C small sliding rope friction coefficient of 0.2 to less than 0.25, emergency stop friction coefficient of 0.25-0.6, and normal operation friction coefficient of 0.25-0.6), with Naito ¶ 57 (Example 1: The mixture was “supplied to an extrusion molding machine, to thereby mold the mixture as a covering resin layer for covering the periphery of a rope main body. The rope main body was covered with the covering resin layer and then heated at 100° C. for 2 hours to promote a reaction between the ether- based thermoplastic polyurethane elastomer and the isocyanate batch, to thereby obtain an elevator rope having a diameter of 12 mm.”), ¶ 75 (Example 19: “The same procedure as in Example 1 was carried out except that an ether- based thermoplastic polyurethane elastomer having a JIS A hardness of 90[,] . . . 10 parts by mass of a glass fiber and 10 parts by mass of the isocyanate batch were used . . . .”), ¶ 91 (Table 1, Example 19 final product: JIS A hardness of 97, glass transition temperature of -25 °C, small sliding rope friction coefficient of 0.2 to less than 0.25, and emergency stop friction coefficient of 0.25 or more), ¶ 92 (normal operation friction coefficient of 0.3 to 0.4). Where . . . the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. Appeal 2021-000477 Application 13/812,913 14 See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). We have considered the Appellant’s arguments and Le Roy, but are not persuaded of reversible error given the strong evidence of prima facie obviousness. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1371 (Fed. Cir. 2011) (“A strong case of prima facie obviousness, such as that presented here, cannot be overcome by a far weaker showing of objective indicia of nonobviousness.” (emphasis omitted)). Because our decision relies on disclosure in Naito-a reference that was not cited in the Examiner’s rejection-we denominate our affirmance as a new ground of rejection of claims 1, 2, 4, 6, 8-11, and 14-23 under 35 U.S.C. § 103(a) as unpatentable over Honda, Huang, Furukawa, and Naito. NEW GROUND OF REJECTION Claims 8 and 9 are rejected under pre-AIA 35 U.S.C. § 112, fourth paragraph, or 35 U.S.C. § 112(d) for failure to further limit the subject matter of the claim from which they depend. Claim 8 depends from claim 2 and recites, “wherein the polyol having a vinyl group comprises a polybutadiene polyol or a polyisoprene polyol.” Claims Appendix 2. Claim 2 does not recite a “polyol having a vinyl group,” but recites “an olefin-based thermoplastic polyurethane elastomer obtained from . . . [a] polybutadiene polyol.” Id. Claim 9 depends from claim 2 and recites, “wherein the organic polyisocyanate is an aromatic polyisocyanate.” Claims Appendix 3. Claim 2 does not recite an “organic polyisocyanate,” but recites “diphe[n]ylmethane diisocyanate.” Id. at 2. Appeal 2021-000477 Application 13/812,913 15 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 4, 6, 8-11, 14-23 103(a) Honda, Huang, Furukawa8 1, 2, 4, 6, 8-11, 14-23 103(a) Honda, Huang, Furukawa, Naito 1, 2, 4, 6, 8-11, 14-23 8, 9 112 Improper Dependency 8, 9 Overall Outcome 1, 2, 4, 6, 8-11, 14-23 TIME PERIOD FOR RESPONSE 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) further states that 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. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. 8 We enter a new ground of rejection over Honda, Huang, Furukawa, and Naito. Appeal 2021-000477 Application 13/812,913 16 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 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)