Ex parte LI - Page 20


              Appeal No. 1996-2163                                                                                         
              Application 08/106,541                                                                                       

              § 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.                                

                     If the appellant elects prosecution before the examiner and this does not result in                   
              allowance of the application, abandonment or a second appeal, this case should be                            
              returned to the Board of Patent Appeals and Interferences for final action on the affirmed                   
              rejection, including any timely request for reconsideration thereof.                                         


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