Appeal No. 94-0869
Application No. 07/517,719
Appellant initially requests that we designate our
discussion at page 5 of the decision regarding the unpatent-
ability of the claimed invention over Biegler alone a new
ground of rejection in accordance with 37 CFR § 1.196(b).
However, we decline to do so inasmuch as we sustained the
examiner's rejection of the appealed claims under § 103 over
the combined teachings of Winyall and Biegler. Our amplified
reasons supporting our affirmance of the examiner's rejection
does not differ in substance from the "evidentiary scheme"
presented by the examiner and, therefore, does not constitute
a new ground of rejection. In re Boon, 439 F.2d 724, 727, 169
USPQ 231, 234 (CCPA 1971). See also In re Kronig, 539 F.2d
1300, 1303,
190 USPQ 425, 426-27 (CCPA 1976). Also, see In re Halley,
296 F.2d 774, 778, 132 USPQ 16, 20 (CCPA 1961), wherein the
court held that it is not a new ground of rejection to sustain
an examiner's rejection based on a combination of references
in view of the disclosure of only one of the cited references.
Appellant also offers a response to language at page 4 of
our decision, which reads "appellant's specification fails to
set forth any reasonably specific definition of the language
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