Ex parte KURODA et al. - Page 3

                 Appeal No. 97-2220                                                                                                                     
                 Application 08/250,607                                                                                                                 

                 argument so that on its face it creates a reasonable doubt regarding the circumstances justifying the                                  
                 judicial notice.”); cf. In re Hedges, 783 F.2d 1038, 1039-40, 228 USPQ 685, 686 (Fed. Cir. 1986)                                       
                 (“In Hedges’ case the Solicitor referred to new portions of the references cited by Hedges during                                      
                 examination for further support of the same rejection that had been upheld by the Board. Hedges had                                    
                 relied on these references before the Board, as he does before us, for his argument that viewed as a                                   
                 whole the body of the prior art teaches away from conducting this reaction at high temperatures. The                                   
                 Solicitor should not be constrained from pointing to other portions of these same references in                                        
                 contravention of Hedges’ position.”).                                                                                                  
                          The court in Kronig distinguished, inter alia, In re Waymouth, 486 F.2d 1058, 179 USPQ                                        
                 627 (CCPA 1973), on its facts.  539 F.2d at 1303, 190 USPQ at 427.  In Waymouth, relied on by                                          
                 appellants (request, pages 4-5), the court found that                                                                                  
                       the prosecution history of this application clearly shows that the examiner was only                                             
                       concerned with an alleged failure to disclose sodium iodide. However, after finding for                                          
                       appellants on this issue, the board proceeded to sustain the rejection on a wholly different                                     
                       basis. Although the same phrase . . . was questioned by both the examiner and the board,                                         
                       the bases of their rejections were wholly different, necessitating different responses by                                        
                       appellants. [486 F.2d at 1060-61, 179 USPQ at 629.]                                                                              
                 Based on these facts, in the passage of the opinion quoted by appellants in this case (request, pages 4-                               
                 5), the court found that “to deny appellants an opportunity to provide a different and appropriate                                     
                 response to the board’s rejection . . . does not satisfy the administrative due process established by                                 
                 Rule 196(b).”  486 F.2d at 1061, 179 USPQ at 629.                                                                                      
                          In our prior opinion, we agreed with the examiner’s rationale, which may be summarized as set                                 
                 forth by appellants (request, page 2).  Indeed, and more particularly, the examiner relies on Hensel’s                                 
                 disclosure of the ranges of manganese and phosphorous content for the copper base alloys taught                                        
                 therein, pointing to the disclosure of the corrosion resistance, thermal conductivity and solderability of                             
                 the alloy in holding that “it would have been obvious to use such an alloy for fabrication of heat                                     
                 exchanger tubes” (answer, page 4).  The examiner responds to appellants’ arguments in their principal                                  
                 brief by finding that the applied                                                                                                      
                       prior art references establish clearly that: 1) The use of corrosion resistant copper to make                                    
                       heat exchanger tubes is known in the art, and 2) that copper alloys containing small amounts                                     

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