Appeal No. 97-4083
Application 08/422,933
c) claims 9 and 10 under 35 U.S.C. § 103 as being unpatentable over Bianchi in
view of Lawrence, and further in view of Green.
Reference is made to the appellant’s main and reply briefs (Paper Nos. 9 and 11)
and to the examiner’s answer (Paper No. 10) for the respective positions of the appellant
and the examiner with regard to the merits of these rejections.
As a preliminary matter, it is noted that the appellant has raised as an issue in this
appeal the refusal of the examiner to enter the amendment filed subsequent to final
rejection on December 24, 1996 (see, for example, pages 1 through 5, 11 and 12 in the
main brief). It is well established, however, that the refusal of an examiner to enter an
amendment after final rejection is a matter of discretion which is reviewable by petition to
the Commissioner rather than by appeal to this Board. In re Mindick, 371 F.2d 892, 894,
152 USPQ 566, 568 (CCPA 1967). Accordingly, we shall not review or further discuss
the examiner’s refusal to enter the appellant’s amendment.
Turning now to the standing 35 U.S.C. § 112, second paragraph, rejection, the
examiner considers claim 9 to be indefinite because “[c]laim 9 recites a decorative frame,
however, claim 9 depends from claim 7 which also recites a decorative frame. It is not
clear if there are one or two decorative frames in the device” (answer, page 3). The
appellant has not specifically disputed the examiner’s reasoning that claim 9 is indefinite.
Instead, the appellant appears to contend that any problem with the claim is
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