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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