Appeal No. 2001-0299 13
Application No. 08/993,861
untimely and, hence, will not be considered at this point upon rehearing. See
Schreiber, 128 F.3d at 1479, 44 USPQ2d at 1433 and Kroekel, 803 F.2d at 708, 231
USPQ at 642-43. See also Hindersinn, 177 USPQ at 80 and Harvey, 163 USPQ at
573. Moreover, in that claim 1 does not positively recite a fuel injection nozzle, any
such argument is not commensurate with the scope of claim 1.11
For the foregoing reasons, we are unpersuaded by appellants’ request for
rehearing that we erred in affirming the rejection of claims 1 and 12 as anticipated by
Angel. Thus, we decline to make any modification to that portion of our earlier decision.
The rejection based on Dooley
As for the rejection of claim 7, and claims 8, 9 and 14 which depend therefrom,
as being anticipated by Dooley, appellants’ argument that this panel overlooked the
recitation in the preamble of claim 7 of a “tubular swirl cup” (request, page 15) is well
taken. As we pointed out on page 16 of our earlier decision, Dooley does not disclose
a tubular body. It follows that the subject matter of claim 7 cannot be anticipated by
Dooley. Accordingly, we hereby modify our earlier decision by changing the affirmance
of the rejection of claim 7, as well as claims 8, 9 and 14 which depend from claim 7, to
a reversal of that rejection.
We acknowledge appellants’ solicitation on page 18 of their request for rehearing
that the Board provide an explicit statement in accordance with 37 CFR § 1.196(c) as to
11 It is well established that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).
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