Ex parte KURODA et al. - Page 9


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

                          We cannot determine from appellants’ statements with respect to point “4” (request, page 8)                                   
                 the difficulty with our recognition of the importance of Hensel in our original decision.  Indeed, it is                               
                 apparent from the answer that the examiner considered this reference of record to disclose the alloys                                  
                 specified in the appealed claims and we agreed with his conclusion.  Appellants’ have submitted no                                     
                 evidence or pointed to any Comparative Example in support of their contention that “conventional                                       
                 phosphorous deoxidized copper tubes” rather than the alloys of Hensel constitute the closest prior art.                                
                          With respect to appellants’ point “5” (pages 8-10), we have again considered appellants’                                      
                 arguments presented at pages 12 to 13 of the principal brief which refer to “page 25, line 18 through                                  
                 page 32, line 13” of the specification, but fail to find therein any argument with respect to the reaction                             
                 conditions for the formation of the oxide film specified in appealed claim 10 as disclosed at page 29,                                 
                 lines 14-16, of the specification.  Instead, the passage of the specification cited in the principal brief is                          
                 relied on therein to show “criticality with respect to” limitations in claim 10 as set forth by the cited                              
                 Examples and Comparative Examples in Table 3 which are alleged to “amply [demonstrate] that the                                        
                 properties recited in Claim 10 are not inherent in the alloy disclosed in [Hensel], contrary to the finding                            
                 by the Examiner” (pages 12-13).  Because appellants’ argument with respect to point “5” is presented                                   
                 for the first time in the request and was not presented in the principal or reply briefs, and thus the                                 
                 examiner has not had the opportunity to consider the same, it is untimely and not properly before us.                                  
                 See Ex parte Hindersinn, 177 USPQ 78, 80 (Bd. App. 1971).                                                                              
                          We have carefully considered appellants’ points “6” and “7” (request, page 10), but find no                                   
                 persuasive argument therein necessitating any change in our opinion.                                                                   
                          Accordingly, we have carefully considered the arguments advanced by appellants in their request                               
                 for rehearing but, for the reasons given above, we decline to designate our affirmance of the examiner’s                               
                 grounds of rejection as new grounds of rejection under 37 CFR  1.196(b) (1997), and are unconvinced                                   
                 that our opinion contains any erroneous findings of fact or conclusions of law.  Thus, we decline to make                              
                 any changes in our prior decision.                                                                                                     
                          Therefore, we remain of the view that claims 2, 6, 10, 11, 14, 16, 19 and 20 are unpatentable                                 
                 under 35 U.S.C.  103 over Miura in view of Hensel and that claims 15 and 17 are unpatentable under                                    



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