Appeal No. 96-3533
Application 08/203,624
Appellants submit, with respect to their first contention, that the “Courts have recognized
Appellants’ right to respond to new grounds of rejection advanced for the first time in a decision on
appeal” (id., page 2). We agree with appellants that this is the case if a new ground of rejection was in
fact made in a decision on appeal. Indeed, the issue presented here is whether our opinion in support of
our affirmance of claims 5 and 6 and of claim 18 included a new ground of rejection of these two
groups of claims. With respect to whether a new ground of rejection was in fact made in a decision on
appeal, the predecessor court to our reviewing court set forth the general proposition that “the ultimate
criterion of whether a rejection is considered ‘new’ in a decision by the board is whether appellants
have had fair opportunity to react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302-
03, 190 USPQ 425, 426-427 (CCPA 1976) (“In affirming, the board used the same basis, but without
disagreeing with the examiner’s approach, limited its discussion to the evidence contained” in three of
the four cited references, relying thereon for the same evidence used by the examiner, such that
“[h]aving compared the rationale of the rejection advanced by the examiner and the board on this
record, we are convinced that the basic thrust of the rejection at the examiner and the board level was
the same.”); see also In re Boon, 439 F.2d 724, 727-28, 169 USPQ 231, 234 (CCPA 1971) (Even
though the board’s opinion included “amplified reasons” in support of the affirmance of the examiner’s
rejection that were based on “additional facts, not previously in the record, of which the board took
notice[,] . . . we are satisfied from our review of the record that, even when such facts are included, the
‘evidentiary scheme’ supporting the board’s position on this rejection does not differ in substance from
that of the examiner,” as “the fact so noticed plays a minor role, serving only ‘to fill in the gaps’ which
might exist in the evidentiary showing made by the examiner . . . . [In re Ahlert, 424 F.2d 1088, 165
USPQ 418 ([CCPA] 1970)]. Under such circumstances, as we held in Ahlert, an applicant must be
given the opportunity to challenge either the correctness of the fact asserted or the notoriety or repute of
the reference cited in support of the assertion,” which challenge must “contain adequate information or
argument so that on its face it creates a reasonable doubt regarding the circumstances justifying the
judicial notice.”).
With respect to claims 5 and 6, appellants submit that our reliance on admitted prior art set forth
in appellants’ specification in affirming the examiner’s ground of rejection constituted “a different
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