Appeal No. 98-1848
Application 08/500,781
attention to this reference in the hope that it might form the
basis of a new ground of rejection under 37 CFR § 1.196(b) in
the event we were to reverse the standing rejections on the
merits. This “back door” approach of introducing a new issue
on appeal is inappropriate. However, since the examiner has
raised the issue, and since appellant has addressed this
reference in the brief on page 5, it would be appropriate, in
the event of further prosecution, for the examiner to state on
the record his position with respect to the relevance of the
German reference to the claimed subject matter.
In summary, the standing rejections have been reversed on
procedural grounds, and a new rejection of the appealed claims
pursuant to 37 CFR § 1.196(b) has been entered.
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 appellant,
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