Wednesday, January 02, 2013

Examiner reversed but new obviousness rejections made

From within Ex parte CZYSZCZEWSKI , KSR appears

Additionally, such a modification of Hou’s teaching such that the display on the Fax Server is used to perform the functions of the WEB Client 104 is merely a combination of familiar elements according to known methods that does no more than yield predictable results - an obvious improvement, see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), that can be implemented by a person of ordinary skill, id. at 417.

Although the examiner's rejections were reversed:

We newly reject claims 1, 3, 5, 6, 9-11, 15-17, and 21, and 22-24 under 35 U.S.C. § 103 (a) as being unpatentable over Hou. We also newly reject claim 12 under 35 U.S.C. § 103 (a) as being unpatentable over the combination of Hou and Hu. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) 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 37 C.F.R. § 41.52 by the Board upon the same record. . . .


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