Ex parte PEPPEL - Page 18




          Appeal No. 1998-2848                                                        
          Application 08/398,862                                                      

          Accordingly, the rejection will be decided based on the                     
          sufficiency of the Peppel declarations to swear behind Smith.               
          Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d               
          1281, 1285 (Fed. Cir. 1991) ("It is not the function of this                
          court to examine the claims in greater detail than argued by                
          an appellant, looking for nonobvious distinctions over the                  
          prior art."); In re Wiechert, 370 F.2d 927, 936, 152 USPQ 247,              
          254 (CCPA 1967) ("This court has uniformly followed  the sound              
          rule that an issue raised below which is not argued in this                 
          court, even if it has been properly brought here by a reason                
          of appeal, is regarded as abandoned and will not be                         
          considered.  It is our function as a court to decide disputed               
          issues, not to create them."); In re Wiseman, 596 F.2d 1019,                
          1022, 201 USPQ 658, 661 (CCPA 1979) (arguments must first be                
          presented to the Board before they can be argued on appeal).                

               The Peppel declarations do not establish conception of                 
          the                                                                         
               claimed invention coupled with diligence to the filing                 
          date                                                                        
               A prior art patent which does not claim the same                       
          patentable invention may be sworn behind under 37 CFR § 1.131               
          by a showing of facts sufficient to establish a completion of               

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