Appeal No. 2003-1272 Page 22
Application No. 10/039,338
In addition to affirming at least one of the examiner's rejections of claims 18 to
34, this decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review."
37 CFR § 41.50(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 the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should the appellants elect to prosecute further before the examiner pursuant to
37 CFR § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C.
§§ 141 or 145 with respect to the affirmed rejections, 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 rejections are overcome.
Page: Previous 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Next
Last modified: November 3, 2007