Ex Parte TEDESCO et al - Page 21




          Appeal No. 2004-0403                                                        
          Application 09/100,684                                                      

          combined teachings of the references do not suggest the                     
          limitation of "providing with the billing statement an offer to             
          said individual to pay at least a portion of an amount due on               
          said billing statement if said individual becomes a customer of             
          said second entity."  Accordingly, the rejection of claims 1,               
          11-13, 22, and 29 is reversed.  The added references to Jermyn              
          and Mori do not cure the deficiencies of the rejection.  Thus,              
          the rejection of claims 2-10, 23-26, 28, and 30 is reversed.                
                                     CONCLUSION                                       
               The rejections of claims 1-13, 22-26, and 28-30 are                    
          reversed.                                                                   
               A new ground of rejection has been entered as to claim 28              
          under 35 U.S.C. § 112, second paragraph, and as to claims 22-26             
          and 28-30 under § 101 pursuant to 37 CFR § 1.196(b).                        
               This decision contains a new ground of rejection pursuant to           
          37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final rule            
          notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.              
          Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).  37 CFR              
          § 1.196(b) provides that, "A new ground of rejection shall not be           
          considered final for purposes of judicial review."                          
               37 CFR § 1.196(b) also provides 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                 


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