Appeal No. 96-3533
Application 08/203,624
our opinion than further note the conventionality of “air nozzle spray guns” with the additional
particularity of pointing to the admission in appellants’ specification.
Thus, upon reconsideration of our decision to affirm the examiner’s ground of rejection with
respect to claims 5 and 6 in light of appellants’ arguments and authority advanced in their request, on
this record, we cannot discern that we have changed the thrust of the examiner’s ground of rejection, or,
in other words, the evidentiary scheme that we have described in our opinion with the amplified
reasoning set forth therein based on facts of record does not differ in substance from that set forth by
the examiner in his answer. Indeed, it is apparent that appellants had ample “fair opportunity” to react
to the thrust or evidentiary scheme of the rejection with respect to claim 6 based on the examiner’s
notice of the conventionality of “air nozzle spray guns” even in view of our opinion. Kronig, supra; cf.
Boon, supra; In re Waymouth, 486 F.2d 1058, 1060-61,179 USPQ 627, 629 (CCPA 1973).
Accordingly, we decline to designate our affirmance of the examiner’s rejection of claims 5 and
6 as a new ground of rejection under 37 CFR § 1.196(b) (1997).
With respect to claim 18, appellants submit that “it is clear [from the answer] that the Examiner
did not reject claim 18 on the basis of ‘overlapping subject matter’ between the claimed range and the
range disclosed in Gamble” and “it is clear [from the answer and supplemental answer] that the
Examiner considered the range set forth in claim 18 to be different from, not overlapping, the range in
Gamble” while we stated in our opinion that the teachings of Gamble “overlaps” the range specified in
this claim. Thus, appellants argue that “the Board adopted a different line of reasoning than the
Examiner in affirming the rejection of claim 18 (request, pages 5-7). We cannot subscribe to
appellants’ position.
Claim 18 modifies “[t]he method of claim 1, wherein the fibers comprise less than 0.2% by
weight of the coating.” In the answer, the examiner, in considering claim 7, stated that “Gamble teaches
that the fibers make up 1 to 45% of the coating” (page 9) and, found with respect to claim 18 that “[i]t
would have been obvious to the skilled artisan, in the absence of a showing of criticality, to have
determined the optimum amount of fibers to be added to the resin through routine experimentation”
(pages 10-11). After urging the separate patentability of claim 18 solely on the basis that “the fibers
comprise less than 0.2% by weight of the coating” in the principal brief (pages 14-15), appellants argue
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