Appeal No. 1998-1573
Application 08/599,840
the art in appellant’s application and as admitted in the preamble of claim 1, we find that the examiner
has not explained and supported the position that “almost all coating methods which apply resins [sic]
coatings require elevated temperatures” vis-à-vis the claimed process encompassed by claim 1, and
thus we reverse this ground of rejection. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or
principal within the knowledge of one of ordinary skill in the art leading to the modification of the prior
art in order to arrive at appellant’s claimed invention has not been explained).
We have denominated our affirmance of the examiner’s ground of rejection over Whittemore as
a new ground of rejection under 37 CFR § 1.196(b) (1997) and have reversed all other grounds of
rejection.
The examiner’s decision is affirmed.
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b)(amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A new
ground of rejection shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE
DATE OF THE DECISION, must exercise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the Board of Patent Appeals
and Interferences upon the same record. . . .
No time period for taking any subsequent action in connection with this appeal may be extended
under 37 CFR § 1.136(a).
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