Appeal No. 1998-3379 Application No. 08/724,088 computation. However, the step of computing is not claimed nor is it clear how computation is carried out. In view of the above rationale, we find that claims 1 through 3 fail to distinctly point out and distinctly claim the subject matter which the Appellants regard as their invention as required under 35 U.S.C. § 112, second paragraph. 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. and 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 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. . . . 9Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007