Appeal No. 2006-1874
Reexamination Control No. 90/006,351
Conclusion
The rejection of claims 1-16 as unpatentable under 35 U.S.C. § 103 for obviousness over
Marks and the Gold Certificate is reversed.
Claims 13-16 are herein rejected for obviousness under 35 U.S.C. § 103 over the
combined teachings of (1) the patent owner’s admitted prior art, and (2) the operation of the gold
vault of the federal reserve system. We further recommend that upon return of this case to the
jurisdiction of the primary examiner, the examiner consider the patentability of claims 1-12 over
(1) the patent owner’s admitted prior art, (2) the operation of the gold vault of the federal reserve
system, and (3) any other prior art known to the examiner, as appropriate. Means-plus-function
elements must be construed according to the requirements of 35 U.S.C. § 112, sixth paragraph,
for any claim containing a means-plus-function element.
The decision also 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. 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 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 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….
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