Appeal No. 97-2220
Application 08/250,607
(request, page 1). Requests for rehearing must comply with 37 CFR § 1.197(b) (1997) which specifies
that “[t]he request for rehearing must state with particularity the points believed to have been
misapprehended or overlooked in rendering the decision and also state all other grounds upon which
rehearing is sought.”
Appellants submit, with respect to their first contention, that because the examiner did not rely
on any admissions they made in their specification and did not find “that Hensel disclosed ‘copper
deoxidized by phosphorus,’ or rely, explicitly or implicitly, on any such finding,” while we included such
findings in our opinion, we therefore “in effect, totally changed the rationale of the [examiner’s] rejection
[sic, rejections]” (request, page 2). Upon carefully reviewing the record, we cannot agree with
appellants that our opinion constitutes any new ground(s) of rejection.
The predecessor court to our reviewing court set forth the general proposition that “the ultimate
criterion of whether a rejection is considered ‘new’ in a decision by the board is whether appellants
have had fair opportunity to react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300,
1302-03, 190 USPQ 425, 426-427 (CCPA 1976) (“In affirming, the board used the same basis, but
without disagreeing with the examiner’s approach, limited its discussion to the evidence contained” in
three of the four cited references, relying thereon for the same evidence used by the examiner, such that
“[h]aving compared the rationale of the rejection advanced by the examiner and the board on this
record, we are convinced that the basic thrust of the rejection at the examiner and the board level was
the same.”); see also In re Boon, 439 F.2d 724, 727-28, 169 USPQ 231, 234 (CCPA 1971) (Even
though the board’s opinion included “amplified reasons” in support of the affirmance of the examiner’s
rejection that were based on “additional facts, not previously in the record, of which the board took
notice[,] . . . we are satisfied from our review of the record that, even when such facts are included, the
‘evidentiary scheme’ supporting the board’s position on this rejection does not differ in substance from
that of the examiner,” as “the fact so noticed plays a minor role, serving only ‘to fill in the gaps’ which
might exist in the evidentiary showing made by the examiner . . . . [In re Ahlert, 424 F.2d 1088, 165
USPQ 418 ([CCPA] 1970)]. Under such circumstances, as we held in Ahlert, an applicant must be
given the opportunity to challenge either the correctness of the fact asserted or the notoriety or repute of
the reference cited in support of the assertion,” which challenge must “contain adequate information or
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