Appeal No. 97-0032
Application No. 08/095,295
Administrative Patent Judge Nase states that 37 CFR § 1.192
appears to dictate against raising and considering such the
§ 112, ¶ 6 issue since it was not raised as a point of contention
in the appeal. Section 1.192 sets out the requirements for an
appellant’s brief on appeal and states that any arguments and
authorities not included in the brief will be refused
consideration by the board. In my view, this is a limitation "on
appellants" not a limitation on this board’s authority to raise
new issues. Indeed, such an interpretation is inconsistent with
this board’s statutory authority to examine and reexamine
appealed claims and enter new grounds of rejection. See In re
Loehr, 500 F.2d 1390, 1392-93, 183 USPQ 56, 58 (CCPA 1974). The
interpretation is also inconsistent with the provisions of 37 CFR
§ 1.196(b) and (d).
Judge Nase also refers to § 2183 of the Manual of Patent
Examining Procedure (MPEP), 6th Edition, Revision 2, July 1996,
and to Guidelines on "Means Or Step Plus Function Limitation
Under 35 U.S.C. § 112, 6th Paragraph." However, neither of 9
these consider our reviewing court’s most recent opinions on when
the provisions of 35 U.S.C. § 112, ¶ 6, are invoked. Cole v.
9Published at 1162 Off. Gaz. Pat. Off. 59 (May 17, 1994).
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