Appeal No. 96-3821
Application No. 08/122,264
group analysis, a characteristic feature of number
average molecular weight determinations (e.g.,
Polymers; Structure and Bulk Properties, by Patrick
Meares (D. Van Nostrand Company, 1965), pages 55-56,
and Encyclopedia of Polymer Science and Technology,
Vol. 6 (Interscience Publishers, 1967), pages 164-
165 (copies enclosed)), Appellants submit that one
skilled in the art would understand that the term
"average molecular weight" refers to number average
molecular weight. Appellants submit that because
their specification reasonably conveys to those
skilled in the art what they have invented, they
have fully satisfied the requirements of 35 U.S.C. §
112. Compare Staehelin v. Secher, 24 U.S.P.Q.2d
1513 (B.P.A.I. 1992); In re Johnson and
Farnham, 194 U.S.P.Q. 187 (C.C.P.A. 1977); and In re
Moore and Janoski, 439 F.2d 1232, 169 U.S.P.Q. 236,
238 (C.C.P.A. 1971).
The entire line of argument, including the reference to
passages in pages 5, 6, and 8 of the specification and to the
aforementioned texts, is advanced for the first time in
appellants' Request for Rehearing.
A brief before the Board of Patent Appeals and
Interferences ("Board") "must set forth the authorities and
arguments on which appellant will rely to maintain the
appeal." 37 CFR § 1.192(a). A new argument advanced in a
petition for rehearing, but not advanced in appellants' Brief,
is not properly before the Board and will not be considered.
In re Kroekel, 803 F.2d 705, 709, 231 USPQ 640, 642-43 (Fed.
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