Appeal No. 1997-3696 Page 11
Application No. 08/473,419
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 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 considered 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
rehearing thereof.
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