Appeal No. 2000-0316 9
Application No. 08/587,821
concentration of aluminum ion and fluoride ion, it cannot be concluded that the presence
of hydroxy carboxylic acids would be affected in the same manner and to the same extent
were the concentration of each of the ions to substantially vary within the scope of the
claimed subject matter.
Based upon the above reasons and those set forth in the Answer, we have
determined that the examiner has established a prima facie case of obviousness. Upon
reconsideration of all the evidence and argument submitted by appellants, we have
determined from the totality of the record that the preponderance of the evidence weighs
in favor of obviousness within the meaning of 35 U.S.C. § 103. Accordingly, the decision
of the examiner is sustained with respect to claims 26, 27, and 82.
Moreover, we do not consider the rejections over Kalfayan alone in the absence of
the additional secondary reference to constitute a "new ground" of rejection. The issue, in
this respect, is whether appellants have had a fair opportunity to react to the thrust of the
rejection. In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA
1976). Limiting the discussion to the evidence contained in Kalfayan while using the same
basis and teachings as the examiner relied upon does not constitute a new ground of
rejection. See Kronig, 539 F.2d at 1303, 190 USPQ at 427; In re Bush, 296 F.2d
491, 496, 131 USPQ 263, 266-67 (CCPA 1961).
As for the balance of the rejection of the claimed subject matter, the examiner
reads the disclosure as providing for the presence of a hydroxy carboxylic acid, a mineral
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