2021002326 (P.T.A.B. Nov. 3, 2021)

SAASSI LLC

Patent Trials and Appeals BoardNov 3, 2021

2021002326 (P.T.A.B. Nov. 3, 2021)

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. 15/996,822 06/04/2018 Joshua Benjamin Komenda VEYOP001C2 4667 67362 7590 11/03/2021 MLO 12707 High Bluff Drive, Suite 200 San Diego, CA 92130 EXAMINER DESAI, RESHA ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 11/03/2021 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): MLOPAIR@mlo-ip.com eofficeaction@appcoll.com heather@mlo-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSHUA BENJAMIN KOMENDA and JEREMY SCHRAGE ____________ Appeal 2021-002326 Application 15/996,822 Technology Center 3600 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and SHEILA F. McSHANE, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-002326 Application 15/996,822 2 STATEMENT OF THE CASE1 Joshua Benjamin Komenda and Jeremy Schrage (Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of claims 21−40, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a way of facilitating transactions between buyers and sellers. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 32, which is reproduced below (bracketed matter and some paragraphing added). 32. A method comprising: [1] receiving, by a computer, a request for an order comprising order information from an electronic device of a registered user; [2] transmitting, by the computer, an inquiry to the electronic device of the registered user to verify a previous location of the registered user from a previous order; [3] receiving, by the computer, a verification of the previous location from the electronic device of the registered user; [4] verifying, by the computer, without interaction by the registered user, a validity of the request; 1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal Br.,” filed November 6, 2020) and Reply Brief (“Reply Br.,” filed February 16, 2021), and the Examiner’s Answer (“Ans.,” mailed December 22, 2020), and Final Action (“Final Act.,” mailed September 3, 2020). 2 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 SAASSI, LLC (Appeal Br. 3). Appeal 2021-002326 Application 15/996,822 3 [5] identifying, by the computer, a provider from multiple providers based on characteristics of the provider, wherein one of the characteristics is a proximity of the previous location to a device of the provider, and wherein the provider provides taxi, transportation, delivery, or towing services; [6] translating, by the computer, the request into a form understandable by the device of the provider; and [7] providing, by the computer, the request to the device of the provider. The Examiner relies upon the following prior art: Name Reference Date Bright US 2002/0013731 A1 Jan. 31, 2002 Ergezinger US 2004/0139204 A1 July 15, 2004 Himebaugh US 2004/0117332 A1 June 17, 2004 Claims 21−30 and 32−40 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ergezinger and Himebaugh. Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ergezinger, Himebaugh, and Bright. ISSUES The issues of obviousness turn primarily on whether the prior art describes the claim limitations. Appeal 2021-002326 Application 15/996,822 4 FACTS PERTINENT TO THE ISSUES Facts Related to the Prior Art Ergezinger 01. Ergezinger is directed to providing services through a wide area network, in particular the Internet, to user terminals. Ergezinger para. 2. Himebaugh 02. Himebaugh is directed to combined metering and dispatch service for mobile units as used with on screen advertising located in the mobile unit. Himebaugh para. 2 ANALYSIS Claims 21−30 and 32−40 rejected under 35 U.S.C. § 103(a) as unpatentable over Ergezinger and Himebaugh Relevant to element [3] of independent claim 323, we are persuaded by Appellant’s argument that: the retrieved cookie cannot encompass previous location information of the user since the URL rewriter adds the location data in the request message which is a current location and not a “previous location of the registered user from a previous order,” as specifically recited in claim 21 of the present application. Ergezinger teaches adding a current location related to the current request message and not verifying a previous location from a previous order. Moreover, Ergezinger is not capable of performing the verification of the previous location since the message/cookies (and URL rewriter) provides the current location of the current message. Thus, Ergezinger does not 3 The only other independent claim, claim 21, contains a similar element. Appeal 2021-002326 Application 15/996,822 5 disclose “transmit an inquiry to the electronic device of the registered user to verify a previous location of the registered user from a previous order,” as recited in claim 21. Reply Br. 2–3. The Examiner instead determined: an example of an optimized service provided by the cookie can include parts of a website visited by a user. However, it is known by one of ordinary skill in the art that a cookie is able to store any type of data used by a website, which is clarified by paragraph [0077] of Ergezinger. Paragraph [0077] explains in a preferred embodiment, parameters, such as location data identifying the location of the user, can be added to the request message, by the URL rewriter, in order for the service provider to optimize the service for the user. As explained in paragraph [0020] the term message is analogous to the term cookie. Therefore, the retrieved cookie as explained in paragraphs [0020] and [0073] can encompass previous location information of the user, which can be used to verify the previous location of the registered user. Ans. 5. In particular the Examiner determines what “can” be done rather than what “would” be done. The Examiner makes no determinations that show what “can” be done “would” be done. “Obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (2015). Accordingly, the above rejections of claims 21–30 and 32–40 are not sustained. Claim 31 rejected under 35 U.S.C. § 103(a) as unpatentable over Ergezinger, Himebaugh, and Bright This claim depends from claim 21 above and the reasoning follows accordingly and the rejection of this claim is therefore not sustained as well. Appeal 2021-002326 Application 15/996,822 6 NEW GROUND OF REJECTION The following new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). Claims 21−40 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. STEP 14 Claim 32, as a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it is directed to a judicial exception without significantly more. STEP 2 The Supreme Court: set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us? To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent- eligible application. [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 4 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Appeal 2021-002326 Application 15/996,822 7 566 U.S. 66 (2012)). To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea). Then, if the claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg. at 54. If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 At a high level, and for our preliminary analysis, we note that method claim 32 recites receiving request data, transmitting inquiry data, receiving verification data, verifying the validity of a request, identifying provider data, translating format data, and providing request data. Verifying, identifying, and translating formats of data are rudimentary forms of analyzing data. Verifying request validity per se is conventional and generic data analysis and processing. Providing data is transmitting and receiving data. Thus, claim 32 recites receiving, transmitting, analyzing, and processing data. None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. Appeal 2021-002326 Application 15/996,822 8 From this we see that claim 32 does not recite the judicial exceptions of either natural phenomena or laws of nature. Under Supreme Court precedent, claims directed purely to an abstract idea are patent in-eligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include (1) mathematical concepts5, (2) certain methods of organizing human activity6, and (3) mental processes7. Among those certain methods of organizing human activity listed in the Revised Guidance are commercial or legal interactions. Like those concepts, claim 32 recites the concept of managing commercial orders. Specifically, claim 32 recites operations that would ordinarily take place in advising one to format and prepare transportation orders based on prior location data. The advice to format and prepare transportation orders based on prior location data involves receiving a request for an order, which is an economic act, and identifying a provider, which is an act ordinarily performed in the stream of commerce. For example, claim 32 recites “receiving . . . a request for an order,” which is an activity that would take place whenever one is managing commercial orders. 5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). 6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219−20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed. Cir. 2018). 7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Appeal 2021-002326 Application 15/996,822 9 Similarly, claim 1 recites “identifying . . . a provider ,” which is also characteristic of managing commercial orders. The preamble to claim 32 does not recite what it is to achieve, but the steps in claim 32 result in managing commercial orders by formatting and preparing transportation orders based on prior location data absent any technological mechanism other than a conventional computer for doing so. As to the specific limitations, limitation 1 recites receiving data. Limitations 2–7 recite generic and conventional receiving, transmitting, analyzing, and processing of order related data, which advise one to apply generic functions to get to these results. The limitations thus recite advice for formatting and preparing transportation orders based on prior location data. To advocate formatting and preparing transportation orders based on prior location data is conceptual advice for results desired and not technological operations. The Specification at paragraph 2 describes the invention as relating to facilitating transactions between buyers and sellers. Thus, all the intrinsic evidence shows that claim 32 recites managing commercial orders. This in turn is an example of commercial or legal interactions as a certain method of organizing human activity because managing commercial orders is a way of organizing order fulfillment activity. The concept of managing commercial orders by formatting and preparing transportation orders based on prior location data is one idea for coordinating such activity. The steps recited in claim 32 are part of how this might conceptually be premised. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. Intellectual Ventures I LLC v. Appeal 2021-002326 Application 15/996,822 10 Capital One Financial Corporation, 850 F.3d 1332, 1340 (Fed. Cir. 2017) (collecting, displaying, and manipulating data). Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of receiving, transmitting, analyzing, and processing data mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). Claim 32, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data reception, transmission, analysis, and processing and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). As such, claim 32 recites receiving, transmitting, analyzing, and processing data, and not a technological implementation or application of that idea. From this we conclude that at least to this degree, claim 32 recites managing commercial orders by formatting and preparing transportation orders based on prior location data, which is a commercial and legal interaction, one of certain methods of organizing human activity identified in the Revised Guidance, and, thus, an abstract idea. STEP 2A Prong 2 The next issue is whether claim 32 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to Appeal 2021-002326 Application 15/996,822 11 some technological implementation or application of, or improvement to, this concept i.e. integrated into a practical application.8 At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, “all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted). Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, devoid of implementation details. Step 1 of claim 32 is a pure data gathering step. Limitations describing the nature of the data do not alter this. All steps recite generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. Reciting particular items of equipment, such as an electronic device, is unavailing. The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into “significantly more” than a claim to the abstract idea itself. “We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are ‘insufficient to 8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). Appeal 2021-002326 Application 15/996,822 12 pass the test of an inventive concept in the application’ of an abstract idea.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017)(citations omitted). Similarly, reciting generic operations, such as verifying and translating data without reciting any technological implementation details will not confer eligibility. At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea. Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). Doing so without user interaction also will not confer eligibility, as this is what computers do by convention. At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions. Both the prosecution history and the specification emphasize that the key distinguishing feature of the claims is the ability to automate or otherwise make more efficient traditional price-optimization methods. . . . But relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible. OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015). All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such Appeal 2021-002326 Application 15/996,822 13 a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Appellant’s claim 32 simply recites the concept of managing commercial orders by formatting and preparing transportation orders based on prior location data as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and do not recite any particular implementation. Claim 32 does not, for example, purport to improve the functioning of the computer itself. Nor does it effect an improvement in any other technology or technical field. The 13 pages of specification do not bulge with disclosure, but only spell out different generic equipment9 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of managing commercial orders by formatting and preparing transportation orders based on prior location data under different scenarios. They do not describe any particular improvement in the manner a computer functions. Instead, claim 32 at issue amounts to nothing significantly more than an instruction to apply managing commercial orders by formatting and preparing transportation orders based on prior location data using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. 9 The Specification describes a computer, iPhone, Blackberry, PDA, or a mobile phone running software application. Spec. para. 25. Appeal 2021-002326 Application 15/996,822 14 None of the limitations reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. We conclude that claim 32 is directed to achieving the result of managing commercial orders by advising one to format and prepare transportation orders based on prior location data, as distinguished from a technological improvement for achieving or applying that result. This amounts to commercial or legal interactions, which fall within certain methods of organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application. STEP 2B The next issue is whether claim 32 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. The introduction of a computer into the claims does not generally alter the analysis at Mayo step two. the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not Appeal 2021-002326 Application 15/996,822 15 enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223–24 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer.” Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for receiving, transmitting, analyzing, and processing data amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). None of these activities is used in some unconventional manner nor does any produce some unexpected result. Appeal 2021-002326 Application 15/996,822 16 Appellant does not contend it invented any of these activities. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claim 32 add nothing that is not already present when the steps are considered separately. The sequence of data reception-transmission- analysis-processing is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission); Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. We conclude that claim 32 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception. REMAINING CLAIMS Claim 32 is representative. The remaining method claims merely describe process parameters. We conclude that the method claims at issue Appeal 2021-002326 Application 15/996,822 17 are directed to a patent-ineligible concept itself, and not to the practical application of that concept. As to the structural claims, they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] ... against” interpreting § 101“in ways that make patent eligibility ‘depend simply on the draftsman’s art.’ Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any particular machine. LEGAL CONCLUSION From these determinations we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this we conclude the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the commercial and legal interaction of managing commercial orders by advising one to format and prepare transportation orders based on prior location data, without significantly more. CONCLUSIONS OF LAW The rejection of claims 21−30 and 32−40 under 35 U.S.C. § 103(a) as unpatentable over Ergezinger and Himebaugh is not proper. The rejection of claim 31 under 35 U.S.C. § 103(a) as unpatentable over Ergezinger, Himebaugh, and Bright is not proper. Appeal 2021-002326 Application 15/996,822 18 A new ground of rejection is raised of claims 21−40 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. CONCLUSION The rejection of claims 21–40 under § 103 is reversed, and a new ground of rejection of claims 21–41 under § 101 is raised. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed New Ground 21−30, 32−40 103 Ergezinger Himebaugh 21−30, 32−40 31 103 Ergezinger, Himebaugh, Bright 31 21–40 101 Eligibility 21–40 Overall Outcome 21–40 21–40 Our decision is not a final agency action. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[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: Appeal 2021-002326 Application 15/996,822 19 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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) (2011). REVERSED; § 41.50(b)