Ex parte KURODA et al. - Page 2


                 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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