Appeal No. 96-3717
Application 08/229,115
At oral hearing, counsel for appellants submitted for our review an “advertisement” in the Japanese
language. The “advertisement” appears to be published by “NIPRO”. A copy of the “advertisement” is
attached. Counsel also provided an enlarged view of Fig. 1 of the “advertise-ment” which includes a
translation of various graphs. One graph is labeled “FLEFLOCATH ... PRESENT INVENTION”. This
application is being remanded to the jurisdication of examiner to have the “advertisement” translated into
English and for the examiner to determine whether the “advertisement” is prior art under 35 U.S.C. § 102.
If it is, then the examiner should determine the patentability of all of the claims pending in this application
under both 35 U.S.C. § 102 and 103 over the “advertisement” either taken alone or in combination with
other prior art.
Conclusion
For the foregoing reasons, we reverse the examiner’s rejections of claims 12-29 under the second
paragraph of 35 U.S.C. § 112 and claims 12, 13, 16-22 and 25-30 under 35 U.S.C. § 102(b) as
anticipated by Lambert, and affirm the examiner’s rejection of claims 12, 13, 16-22 and 25-30 under 35
U.S.C. §§ 102(b) and 103 over Solomon or Lambert. This application is being remanded to the
jurisdiction of the examiner consider new information presented to this merits panel at oral hearing. This
decision also contains a new ground of rejection pursuant to 37 CFR § 1.196(b) (amended effective
December 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (October 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
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