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
- 9 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007