Appeal No. 1999-1606
Application No. 08/968,384
new grounds of rejection, in accordance with 37 CFR 1.196(b), under 35 U.S.C. 112, first and second
paragraphs.
In addition to affirming the examiner’s rejection of one or more claims, 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. & Trademark Office
63,122 (Oct. 21, 1997)). 37 CFR § 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) Appellants 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 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
-9-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007