Appeal No. 2000-0827
Application 08/466,104
to mean that the claims require the human protein to be in shell
form, i.e., to encapsulate the microbubbles. Instead, it is
clear from the following statement that he believes Appellant's
disclosure of using human protein to stabilize microbubbles is
limited to forming shells of human protein around the
microbubbles: "[Appellant's] instant specification does not teach
microbubbles stabilized by human protein but instead teaches
microbubbles formed of human protein produced by sonicating a
solution of human protein to produce microbubbles within the
solution which is then denatured to form discrete shells around
the microbubbles" (Answer at 7, ll. 8-11) (footnote omitted).3
Turning now to the examiner's rationale for the rejection,
because Appellant does not challenge the examiner's position that
Ruschig is relevant to the facts before us, we assume, without
deciding, that the examiner's reliance on Ruschig is appropriate.
Instead, Appellant argues that the rejected claims "cover a
combination of one of a small number of preferred gases with one
of a small number of known techniques for producing microbubble
3 To the extent this statement is an argument that the
application fails to provide written description support for the
entire scope of the "stabilized by human protein" claim
recitation, the statement will be given no further consideration
because it amounts to a new ground of rejection which does not
fall within the exception to the prohibition against raising a
new ground of rejection in the Answer. 37 CFR § 1.193(a)(2);
M.P.E.P. § 1208.01 (8th ed., Rev. 1, Feb. 2003).
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