William C. Moision et al.

Patent Trials and Appeals Board

Aug 30, 2019

14271518 - (D) (P.T.A.B. Aug. 30, 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.
14/271,518 05/07/2014 William C. Moision 83430867 3553
121691 7590 08/30/2019
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
EXAMINER
HOANG, MICHAEL G
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM C. MOISION and
ELIZABETH THERESE HETRICK1
____________________

Appeal 2019-000591
Application 14/271,518
Technology Center 3700
____________________

Before: JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William C. Moision and Elizabeth Therese Hetrick (“Appellants”)
appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting
claims 1 and 3–20. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM-IN-PART and enter NEW GROUNDS of rejection
pursuant to 37 C.F.R. § 41.50(b).

1 Appellants identify the real party in interest as Ford Global Technologies,
LLC. Appeal Br. 3.
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BACKGROUND
Appellants’ invention relates to an electrode for resistance spot
welding. Claim 1, reproduced below, illustrates the claimed invention, with
a key limitation italicized:
1. A welding electrode assembly, comprising:
a body;
an electrode cap carried on said body, said
electrode cap having a liquid cooling passage, a mounting end
connected to said body, a working end for welding and a raised
rim extending concentrically around the electrode cap between
said mounting and working ends to protect said body during
electrode cap welding and dressing, facilitate removal when
changing said electrode cap, and limit and control electrode cap
engagement.

REJECTIONS
I. Claim 1 stands rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Kerr (US 2,761,953, iss. Sept. 4, 1956). Final Act. 2–3.
II. Claims 1, 3–8, 11, and 12 stand rejected under 35 U.S.C. § 103
as unpatentable over Applicant’s Admitted Prior Art (“AAPA”) and Kerr.
Final Act. 5.
III. Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as
unpatentable over AAPA, Kerr, and Flater (US 4,760,235, iss. July 26,
1988). Final Act. 11.
IV. Claim 13–16, 19, and 20 stand rejected under 35 U.S.C. § 103
as unpatentable over AAPA and Ogden (US 3,731,048, iss. May 2, 1973).
Final Act. 13.
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V. Claims 17 and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over AAPA, Ogden,2 and Flater. Final Act. 18.
The Examiner also objects to claims 13–20, which is petitionable,
rather than appealable (MPEP § 1002.02(c)(1); however, because the
objection is at least indirectly related to the rejection of claim 13, we address
the objection below. See Final Act. 2.

ANALYSIS
Objection to Claims 13–20
The Examiner objects to claim 13 because the term “the improvement
[comprising]” in the preamble lacks antecedent basis. Final Act. 2. The
Patent Rules, however, specifically provide that:
Where the nature of the case admits, as in the case of an
improvement, any independent claim should contain in the
following order:
(1) A preamble comprising a general description of all the
elements or steps of the claimed combination which are
conventional or known,
(2) A phrase such as “wherein the improvement
comprises.”
37 C.F.R. §1.75(e) (emphasis added).
Because Appellants’ claim 13 describes an improvement over AAPA
and is written in conformance with the Rules, the objection is not sustained.
Rejection I; Anticipation by Kerr
The Examiner finds that Kerr discloses each of the limitations of
claim 1, contending that Kerr’s annular shoulder 140 is a raised rim

2 We understand the Examiner’s omission of Ogden from Rejection IV to be
a typographical error in that claims 17 and 18 depend from claim 13.
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“extending concentrically (i.e. shoulder 140 is ‘annular,’ so it extends
concentrically) around the electrode cap (around the periphery of the
electrode cap) between the mounting and working ends.” Final Act. 3. The
Examiner considers that the claim limitation “to protect said body during
electrode cap welding and dressing, facilitate electrode cap removal when
changing said electrode cap, and limit and control electrode cap
engagement” is functional language that Kerr’s shoulder 140 is capable of
performing. Id. Specifically, the Examiner considers that Kerr’s shoulder
140 would protect the body by “impeding spatter,” would facilitate cap
removal “by physically grabbing the rim,” and would “limit and control
electrode cap engagement (via the threading of threaded counter-bore 13).”
Id. (citing Kerr, 1:63–2:11).
Appellants argue that Kerr’s annular shoulder 140 is not raised.
Appeal Br. 11. Specifically, Appellants assert that “the annular shoulder
140 in Kerr is not raised with respect to the cap 14,” and therefore is not
“raised” as claimed or as shown, for example, in Figure 1 of the present
invention. Id. Appellants contend that Kerr’s shoulder 140 defines a recess
for receiving a sealing O-ring, and “not only does the annular shoulder 140
in Kerr fail to qualify as the claimed raised rim, but it does not (and cannot)
perform any of the recited functions of the raised rim stated in claim 1.” Id.
at 12.
The Examiner responds that Figure 1 of Kerr depicts plural raised and
lower portions, and the raised portions are “commensurate with the scope of
the claims, i.e. what the claims literally recite.” Ans. 4. As to the recited
functions of the rim, the Examiner states that Appellants’ argument
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concerning Kerr’s O-ring recess “is not relevant to whether or not Kerr
anticipates (emphasis added) all of the limitations of claim 1.” Ans. 6.
Appellants have the better position. Their Specification discloses that,
“[i]n one possible embodiment, that rim 42 is raised between 1.2 mm and
2.4 mm above the outer surface of the (working) end 38.” Spec. ¶ 28, Fig. 1.
Based on a broadest reasonable interpretation consistent with the
Specification, the claimed “raised” rim is raised with respect to the outer
surface of the cap.
Kerr’s electrode 10 includes a tip 14 (cap) and body 11, as seen in
Figure 1, reproduced below.

Figure 1 is a vertical sectional view through a two-piece finned
electrode. Kerr, 1:46–47. As seen in Kerr’s Figure 1, a first end of cap 14
includes plural supporting fins 19 and a second end of cap 14 is threaded
into threaded counter-bore 13 of body 11. See Kerr, 1:72–2:2; 2:36–37.
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Kerr’s Figure 1 shows fins 19 having the same radial extent as cap 14.
Although Kerr depicts cap 14 with different radial extents, the main portion
of the cap including fins 19 and shoulder 140 has the largest radial extent,
and would be considered as the outer radial surface of the cap. That is,
Kerr’s shoulder 140 is not a raised rim, because it is not raised with respect
to other surfaces of the cap and, instead, Kerr includes portions (i.e.,
recesses) that are lower than the main surface of the cap.
Accordingly, we do not sustain the Examiner’s rejection under 35
U.S.C. § 102(a)(1) of claim 1.
Rejection II; Obviousness Based on AAPA and Kerr
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have modified the AAPA electrode cap to include
a raised rim as taught by Kerr “to provide an adequate electrical contact
between the body and the electrode cap,” and to provide an arrangement “so
that coolant circulating through the lumen U won’t leak outside of the spot
welding electrode.” Final Act. 7.
For the reasons discussed above, Kerr does not disclose a raised rim
as required by claim 1. The Examiner’s reliance on Kerr for this feature is
insufficient to establish a prima facie case of obviousness. We do not
sustain the Examiner’s rejection of claim 1 and claims 3–8, 11, and 12
depending from claim 1 as unpatentable over AAPA and Kerr.
Rejection III; Obviousness Based on AAPA, Kerr and Flater
Claims 9 and 10 depend directly or indirectly from claim 1. The
Examiner does not rely on the disclosure of Flater to cure the deficiency of
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Kerr discussed above for claim 1. Accordingly, we do not sustain the
Examiner’s rejection of claims 9 and 10 for the same reasons.
Rejection IV; Obviousness Based on AAPA and Ogden
The Examiner finds that AAPA discloses many of the limitations of
the electrode of claim 13, including a cap, but relies on Ogden to teach a cap
with a raised rim. Final Act. 13–14. Indeed, AAPA discloses a welding
electrode assembly, comprising a body (shank S) and an electrode cap C
carried on the body. See Spec. ¶ 7, Fig. 3. The electrode cap C has a liquid
cooling passage G, a mounting end M connected to the body, and a working
end D for welding. See Spec. ¶¶ 8–9; Fig. 3. The Examiner find that Ogden
discloses “a welding gun having a contact tip (14, Fig. 1) with a raised rim
(weld spatter[3] guard or shield or deflector A, Fig. 1) that is shaped like an
annular disc.” Final Act. 14 (citing Ogden 5:25–27). Ogden, however, does
not disclose the claimed rim height.
The Examiner concludes that, “[b]ased on Ogden’s teaching,” it
would have been obvious “to modify AAPA by implementing a raised rim
on AAPA’s welding assembly, . . . to deflect spatter, and shield AAPA’s
assembly from spatter.” Final Act. 14. The Examiner also concludes that
the rim being raised “between 1.2 mm and 2.4 mm above the working end”
is discoverable as a working range, which “involves only routine skill in the
art.” Id. at 15 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
According to the Examiner, it would have been obvious “to raise the rim by
any desired range . . . sufficient to deflect spatter.” Id. The Examiner also

3 Appellants and the Examiner use the term “splatter” interchangeably with
the word “spatter,” which is the term used in Ogden.
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finds that the claimed length could be similarly discoverable as a working
range. Id.
Appellants argue that Ogden’s rim is not raised to the claimed
dimensions, and “In re Aller is not applicable because the Examiner fails to
provide that any of the cited references disclose the general conditions of the
claim, i.e., structurally reinforcing the overall length of the shank by either
the mounting end of the electrode cap or the sidewall of the mounting
adapter.” Id.; see also Reply Br. 5. Appellants also contend that the
Examiner’s assertion that the claimed ranges are discoverable by routine
experimentation lacks evidentiary support. Id.; see also Reply Br. 5.
According to Appellants, because their rim is raised “between 1.2 mm and
2.4 mm” to aid in gripping the cap for changing operations, whereas
Ogden’s weld spatter guard is not used for cap changing operations,
Ogden’s rim “has no need to be raised to the express dimensions claimed in
claim 13.” Id.
According to the Examiner, Ogden’s shield impedes weld spatter, and
modifying its height results in a modified size of the “shield”
deflecting/impeding weld spatter. Id. at 13. Further, modifying the size of
Ogden’s weld spatter deflector would change the surface area that can be
gripped for electrode cap changing operations. Id.
Appellants’ arguments are not persuasive. Appellants’ Specification
discloses that “rim 42 is raised between 1.2 mm and 2.4 mm above the outer
surface of the end 38” (see Spec. ¶ 28), but does not disclose that values
outside this range would perform differently. Similarly, the Specification
discloses that “the shank 16 has an overall length of between 0.41 and 0.59
L with between 0.29 and 0.60 L of the mounting end 28 of the shank being
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received in the tapered bore 24,” and “between 0.16 and 0.33 L of the length
of the shank 16 receives the mounting end 36 of the electrode cap 18 and is
thereby effectively reinforced by the cap” (see Spec. ¶ 37), but does not
disclose that values outside these ranges do not reinforce the cap or would
perform differently.
Ogden discloses “a weld spatter guard or shield or deflector A in the
form of annular disc or body 95 fixed to tip 14.” Ogden 5:26–28; see also
Final Act. 14. Consistent with the claim interpretation of “raised rim” set
forth above, Ogden’s deflector A is a “raised rim,” because it is raised with
respect to the outer surface of the cap (tip 14). See Ogden Figs. 1 and 2.
Ogden’s rim (deflector A) shields diffuser B, and is “proportioned to
overlie orifice 85 of diffuser B” to accomplish such shielding. Id. at 3:19–
21, 5:25–30. A skilled artisan would have understood that Ogden’s overall
deflector proportions, including rim height, are relevant to protecting
diffuser B. The height of Ogden’s rim would be understood to vary with the
overall dimensions of the device, and also with the radius of the gas cup 16
surrounding the deflector A, because Ogden’s discussion of rim proportions
appears intended to convey that the dimensions of the deflector, including its
height and taper, would be varied based on dimensions of the other device
components.
We agree with the Examiner’s finding that the references only differ
from the claims in not disclosing the exact range that the rim is raised. In
Gardner v. TEC Syst., Inc., the Federal Circuit held that, where the only
difference between the prior art and the claims was a recitation of relative
dimensions of the claimed device, and a device having the claimed relative
dimensions would not perform differently than the prior art device, the
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claimed device was not patentably distinct from the prior art device.
Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469
U.S. 830 (1984). Ogden’s deflector having the claimed dimensions would
still deflect weld spatter. Moreover, we agree with the Examiner that Ogden
is capable of meeting the “for gripping” functional limitation (see Final Act.
13; Ans. 13), as Appellants do not persuasively explain why an operator
could not grip Ogden’s deflector A when changing out the electrode cap
(i.e., that Ogden’s deflector A would perform differently than their claimed
rim).
As to the shank length, claim 13 recites, in part, “said shank having an
overall length of between 0.41 to 0.59 L with between 0.29 and 0.60 L of
said proximal end of said shank being received in said bore and reinforced
by said mounting adapter[,] and between 0.16 and 0.33 L of said shank
receiving said mounting end of said electrode cap.” Appeal Br. 21 (Claims
App’x). Appellants’ electrode is disclosed to have “the same overall
standard length of the prior art electrode assembly E,” and thus, the length of
the electrode is known. Spec. ¶ 10. AAPA discloses that a proximal
“portion P of the shank S” is received in a bore and that “sidewall R of the
adapter A engages and reinforces this portion P of the shank S.” Spec. ¶ 8;
see also Final Act. 13. Because it is known that the sidewall reinforces the
element that is mounted therein (see SC and SA of Figure 3), we determine
that a device having the claimed relative dimensions would not perform
differently than the prior art device (cf. SC and SA of Figure 2), such that the
claimed device is not patentably distinct from the prior art device. Gardner
v. TEC Syst., Inc., 725 F.2d 1338.
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Accordingly, we affirm the Examiner’s rejection of claim 13. Claims
14–16, 19 and 20 fall with claim 13. Because our conclusion is based on
reasoning that differs from that of the Examiner, we designate our
affirmance a NEW GROUND of rejection under 37 C.F.R. § 41.50(b) to
provide Appellants with a full and fair opportunity to respond to the
rejection.
Rejection V; Obvious Based on AAPA, Ogden, and Flater
Claims 17 and 18 depend from claim 13. Appellants do not argue
separately for the patentability of claims 17 and 18. See Appeal Br. 15–17.
Accordingly, we affirm the Examiner’s rejection of claims 17 and 18
for the same reasons discussed above in Rejection IV, designating our
affirmance a NEW GROUND of rejection under 37 C.F.R. § 41.50(b) to
provide Appellants with a full and fair opportunity to respond to the
rejection.
ADDITIONAL NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following NEW GROUND of rejection.
Claims 1 and 3–12 are rejected under 35 U.S.C. § 103 as unpatentable
over AAPA and Ogden.
Regarding claim 1, and as set forth above in Rejection IV, AAPA
discloses a welding electrode assembly, comprising a body (shank S) and an
electrode cap C carried on the body. See Spec. ¶ 7, Fig. 3. The electrode
cap C has a liquid cooling passage G, a mounting end M connected to the
body, and a working end D for welding. See Spec. ¶¶ 8–9; Fig. 3. AAPA,
however, does not teach a raised rim extending concentrically around the
electrode cap C between the mounting end M and working end D to protect
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the body S during welding and dressing, facilitate removal of the electrode
cap C, and limit and control electrode cap engagement.
Ogden, however, discloses a similar welding electrode assembly (see
Ogden, 1:10–12) having an electrode cap 14 including a raised rim 95
extending concentrically around the electrode cap between a mounting end
(at 77) and working end (at 410) to protect said body during electrode cap
welding and dressing. See Ogden 5:25–29, Figs. 1, 2. The limitations “to . .
. facilitate removal when changing said electrode cap, and limit and control
electrode cap engagement,” are functional limitations that we determine are
capable of being performed by Ogden. That is, Odgen’s enlarged rim 95
would facilitate electrode cap removal by enabling a user to more easily
physically grab the rim, and would also provide a better grip to limit and
control electrode cap engagement. Appellants’ arguments of record,
discussed supra, do not explain that one of ordinary skill in the art could not
perform the claimed functions using Ogden’s raised rim. Further, we agree
with the Examiner’s conclusion, in Rejection IV, that it would have been
obvious to modify the AAPA electrode cap to include Ogden’s raised rim to
protect the electrode body from weld spatter. See Final Act. 14, Ogden
5:25–29.
Regarding claim 3, AAPA and Ogden disclose substantially all of
features of the claim limitations, including the liquid cooling passage
extending through the mounting end (via cooling passage G of AAPA), but
do not disclose that the liquid cooling passage also extends through the rim.
It would have been obvious to have the liquid cooling passage extend
through the rim for the same reason it extends into the cap, i.e., to reduce
electrode heating during the welding process. See Spec. ¶ 9.
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Regarding claims 4–6, AAPA and Ogden disclose substantially all of
the features of these claims, but do not explicitly disclose the claimed ratios
of length of the mounting end to length of the working end. However, as
discussed above in our analysis of Rejection IV, it would have been obvious
for the ratio of length of the mounting end to length of the working end to be
within the claimed ratios because, where the only difference between the
prior art and the claims is a recitation of relative dimensions of the claimed
device, and a device having the claimed relative dimensions would not
perform differently than the prior art device, such that the claimed device is
not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc.,
725 F.2d 1338. Here, the disclosed electrode “is the same overall standard
length of the prior art electrode assembly E,” and the working end has a
length of 9.7 +/-0.3 mm and a diameter of 19.1+/- 0.3 mm. Spec. ¶¶ 10 and
35 (Table 1). It is also known that insertion of one end of an element into
the sidewall of another element reinforces the inserted end. Spec. ¶ 8.
Appellants’ Specification discloses the claimed ratios (Spec. ¶ 30), but does
not disclose that values outside these ranges do not reinforce the cap or
would perform differently. Appellants do not explain that a device having
the claimed relative dimensions would perform differently than the prior art
(AAPA) device.
Regarding claims 7 and 8, AAPA and Ogden disclose substantially all
of the claim limitations, but do not explicitly disclose that claimed ratios of
length of the liquid cooling passage to length of the electrode cap. However,
it would have been obvious for the ratio of length of the liquid cooling
passage to length of the electrode cap to be within the claimed ratios because
where, the only difference between the prior art and the claims is a recitation
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of relative dimensions of the claimed device, and a device having the
claimed relative dimensions would not perform differently than the prior art
device, such that the claimed device is not patentably distinct from the prior
art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338. Here, the disclosed
electrode “is the same overall standard length of the prior art electrode
assembly E,” and the cooling passage G in the electrode cap C “reduce
electrode heating during the welding process.” Spec. ¶¶ 9 and 10.
Appellants’ Specification discloses the claimed ratios (Spec. ¶ 31), but does
not disclose that values outside these ranges do not cool the passage or
would perform differently. Appellants do not explain that a device having
the claimed relative dimensions would perform differently than the prior art
(AAPA) device.
Regarding claim 9, AAPA and Ogden disclose substantially all of the
features of claim 9, including a taper angle of about 1 °26' +/-0°3' (see Spec.
¶ 35), but do not disclose that the mounting end has a wall thickness of
between about 1.98 and 2.71 mm. However, it would have been obvious for
the wall thickness of the mounting end to be to be within the claimed range
because, where the only difference between the prior art and the claims is a
recitation of relative dimensions of the claimed device, and a device having
the claimed relative dimensions would not perform differently than the prior
art device, the claimed device is not patentably distinct from the prior art
device. Gardner v. TEC Syst., Inc., 725 F.2d 1338. Here, the prior art
electrode assembly E has a wall thickness of 1.09 mm–1.70 mm, and teaches
that insertion of one end of an element into the sidewall of another element
reinforces the inserted end. Spec. ¶¶ 8 and 35 (Table 1). Appellants’
Specification discloses the claimed wall thickness (Spec. ¶ 33), but does not
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disclose that values outside these ranges are not load bearing (reinforcing)
the wall or would perform differently. Appellants do not explain that a
device having the claimed relative dimensions would perform differently
than the prior art (AAPA) device.
Regarding Claim 10, AAPA and Ogden disclose substantially all of
the features of claim 10, but do not explicitly disclose that the liquid cooling
passage has a diameter of about 12.7 +/- 0.3 mm. However, it would have
been obvious for a wall thickness of the mounting end to be to be within the
claimed range because, where the only difference between the prior art and
the claims is a recitation of relative dimensions of the claimed device, and a
device having the claimed relative dimensions would not perform differently
than the prior art device, the claimed device is not patentably distinct from
the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338. Here, the
prior art electrode assembly E has a cooling passage diameter of 11.2 mm
+/- 0.3 mm (see Spec. ¶ 35 (Table 1)), and teaches that the cooling passage
reduces electrode heating during the welding process. Spec. ¶ 9.
Appellants’ Specification discloses the claimed passage diameter (Spec. ¶
34), but does not disclose that values outside these ranges do not reduce heat
or would perform differently. Appellants do not explain that a device having
the claimed relative dimensions would perform differently than the prior art
(AAPA) device.
Regarding claims 11 and 12, AAPA and Ogden disclose substantially
all of the features of the claims including a working end having a diameter
of 19.1 +/- 0.3 mm (Spec. ¶ 35 (Table 1)) and generally that the length is
greater than the diameter (Ogden, Fig. 2), but do not explicitly disclose that
the working end has a length of 20.5 +/- 0.3 mm. However, it would have
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been obvious for the length of the working end to be 20.5 +/- 0.3 mm
because, where the only difference between the prior art and the claims is a
recitation of relative dimensions of the claimed device, and a device having
the claimed relative dimensions would not perform differently than the prior
art device, the claimed device is not patentably distinct from the prior art
device. Gardner v. TEC Syst., Inc., 725 F.2d 1338. Here, the disclosed
electrode “is the same overall standard length of the prior art electrode
assembly E” (Spec. ¶ 10), and has a working end D (Spec. ¶ 8). Appellants’
Specification discloses the claimed working end length (Spec. ¶ 35), but
does not disclose that values outside these ranges are not suitable for
dressing or are otherwise unworkable. Appellants do not explain that a
device having the claimed relative dimensions would perform differently
than the prior art (AAPA) device.
This rejection is being designated as a new ground to provide
Appellants with a full and fair opportunity to respond to this new application
of the findings and conclusions.

DECISION
We REVERSE the Examiner’s decision rejecting claim 1 under 35
U.S.C. § 102(a)(1) as being anticipated by Kerr.
We REVERSE the Examiner’s decision rejecting claims 1, 3–8, 11,
and 12 under 35 U.S.C. § 103 as unpatentable over Applicant’s Admitted
Prior Art (“AAPA”) and Kerr.
We REVERSE the Examiner’s decision rejecting claims 9 and 10
under 35 U.S.C. § 103 as unpatentable over AAPA, Kerr, and Flater.
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We AFFIRM the Examiner’s decision rejecting claim 13–16, 19, and
20 under 35 U.S.C. § 103 as unpatentable over AAPA and Ogden,
designating the affirmance a NEW GROUND OF REJECTION.
We AFFIRM the Examiner’s decision rejecting claims 17 and 18
under 35 U.S.C. § 103 as unpatentable over AAPA, Ogden, and Flater,
designating the affirmance a NEW GROUND OF REJECTION.
We ENTER A NEW GROUND OF REJECTION of claims 1 and 3–
12 under 35 U.S.C. §103 as unpatentable over AAPA and Ogden.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 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) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 proceeding 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. . . .
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)