Appeal No. 1998-2521
Application No. 08/184,212
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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