Appeal No. 1996-3534
Application 08/323,410
weighed the evidence of obviousness found in the combined teachings of Bernhardt and Ipri with
appellants’ countervailing evidence of and argument for nonobviousness to the extent that the same
apply to the new ground of rejection and, on this record, conclude that, on balance, the claimed
invention as a whole encompassed by claims 1 through 17 would have been prima facie obvious as a
matter of law under 35 U.S.C. § 103. Thus, the burden of going forward as to the new ground of
rejection of claims 1 through 17 that we have entered above remains with appellants. Johnson, supra;
Piasecki, supra.
In summary, we have reversed the ground of rejection of claims 1 through 6 under 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Ipri,
and the ground of rejection of appealed claims 7 and 15 through 17 under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Bernhardt. Under 37
CFR § 1.196(b), we have newly rejected claims 1 through 17 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Bernhardt and Ipri.
The examiner’s decision is reversed.
This decision contains a new ground 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 (§ 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 Appeals and
Interferences upon the same record. . . . .
No time period for taking any subsequent action in connection with this appeal may be
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