Appeal No. 96-3690
Application 08/234,516
a new ground of rejection of these claims under 35 U.S.C. § 103 over Isaka 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, “A new ground of rejection shall not be considered final for
purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b) provides: “(b) Appellant may file
a single request for rehearing within two months from the date of the original decision . . . .”
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 rejection to avoid termination of proceedings (37 CFR § 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the application will be remanded
to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the primary examiner pursuant
to 37 CFR § 1.196(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141
or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred
until conclusion of the prosecution before the examiner unless, as a mere incident to the
limited prosecution, the affirmed rejection is overcome.
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