Appeal No. 95-2427
Application 08/013,987
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we enter the following new ground of rejection. Claim
2 is rejected under 35 U.S.C. § 112, fourth paragraph. Claim 2, which is dependent on claim1, does not
further limit claim 1. Claim 1 equates the magneto-optic memory film with a rare earth-transition metal alloy
film. Claim 1 defines the thickness of the magneto-optic memory film as being 20-50 nm while claim 2,
defines a broader thickness range the same film, namely, 5-100 nm.
Decision
For the foregoing reasons, the examiner’s rejection of claims 1, 2 and 4-14 under 35 U.S.C. §
103 as being unpatentable over Denwa, Gardner, Tanaka, Imamura, and Takahashi is reversed. This
decision contains new grounds of rejection pursuant to 37 CFR § 1.196(b) (amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. &
Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that “[a] new ground of
rejection shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(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 proceedings (37 CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a showing of facts
relating to the claims so rejected, or both, and have the matter reconsidered by the
examiner, in which event the application will be remanded to the examiner....
(2) Request that the application be reheard under § 1.197(b) by the Board of Patent
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