Appeal No. 1998-0515
Application 08/425196
In addition to affirming the examiner’s rejection of one or more claims, this decision contains a
new ground of rejections pursuant to 37 C.F.R. § 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 C.F.R. § 1.196(b) provides, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 C.F.R. § 1.197(b) provides:
(b) Appellant may file a single request for rehearing within two months from the date of
the original decision . . . .
37 C.F.R. § 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 C.F.R. § 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
C.F.R. § 1.196(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or
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