Appeal No. 1999-0033
Application No. 08/514,255
considered as being insignificant variations of an invention does not amount to a license
to resort to the unbridled use of words of degree without appropriate constraints to guard
against the potential use of such words as the proverbial nose of wax. See Ex parte
Oetiker, 23 USPQ2d 1651, 1657 (BPAI 1991), aff’d mem., 951 F.2d 1267, 23 USPQ2d
1661 (Fed. Cir. 1991).
In summary, the examiner’s decision to reject appealed claims 1, 5, 8, 9 and 12
under 35 U.S.C. § 102(b) as being anticipated by Ryall is affirmed, the examiner’s
decision to reject appealed claim 1 under 35 U.S.C. § 102(e) as being anticipated by
O’Sullivan is reversed, the examiner’s decision to reject appealed claim 8 under
35 U.S.C. § 102(b) as being anticipated by the German reference is reversed, and a new
ground of rejection of claims 1, 5, 9 and 12 has been entered under 37 CFR § 1.196(b).
In addition to affirming the examiner's rejection of one or more claims, 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, "[a] new ground of rejection shall not be considered final for purposes of
judicial review."
Regarding any affirmed rejection, 37 CFR § 1.197(b) provides:
(b) Appellant may file a single request for rehearing within
two months from the date of the original decision . . . .
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 (37 CFR
§ 1.197(c) as to the rejected claims:
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