Ex Parte Trant - Page 13


                 Appeal No. 2004-0974                                                         Page 13                    
                 Application No. 10/117,169                                                                              

                 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) 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                            





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