Appeal No. 1998-1711 Page 19
Application No. 08/506,387
37 CFR § 1.196(b) also provides that the 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 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 appellants 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 appellants elect 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 rehearing thereof.
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