Appeal No. 2006-2023 Page 13
Application No. 10/650,785
unremarkable proposition that a broad claim is invalid when the entirety of the
specification clearly indicates that the invention is of a much narrower scope.”).
Because appealed claim 17 is not entitled to the earlier filing date of the ‘044
application, thus making Mueller 35 U.S.C. § 102(a) prior art, and the appellants do not
dispute the examiner’s factual findings that Mueller anticipates claims 17-26, we must
also affirm the rejection of these claims.
IV. Conclusion
The decision of the examiner to reject claims 1-26 under 35 U.S.C. § 102(a) as
anticipated by Mueller is affirmed. However, since our reasoning differs from that of
the examiner, we designate our affirmance as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b).
37 CFR § 41.50(b) provides that “[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...
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