Appeal No. 2000-2176
Application No. 08/436,526
provisional rejection as an issue on appeal (see appellants’ Brief at 5). Appellants
addressed the merits of the rejection at page 22 of the Brief. We could not have erred
on the basis of overlooking arguments not presented to us. See Keebler Co. v. Murrary
Bakery Products, 866 F.2d 1386, 1388, 9 USPQ2d 1736, 1738 (Fed. Cir. 1989)
(“Prescience is not a required characteristic of the board.”).
Appellants at page 2 of the instant request submit that “[i]t would seem that
37 CFR § 1.197(b) [sic; § 196(b)?] would have been more appropriate” than affirming
the rejection. However, 37 CFR § 1.197(b) permits an appellant to file a single request
for rehearing within two months of the original decision; appellants have done so. If, on
the other hand, appellants mean that we should have cast our affirmance of the
provisional rejection as a new ground of rejection, as provided by 37 CFR § 1.196(b),
appellants did not set forth such request in the Brief on appeal. Moreover, § 1.196(b)
was not available with respect to the provisional rejection because we affirmed the
ground of rejection that was entered by the examiner. Cf. 37 CFR § 1.196(b) (“Should
the Board of Patent Appeals and Interferences have knowledge of any grounds not
involved in the appeal for rejecting any pending claim, it may include in the decision a
statement to that effect with its reasons for so holding, which statement constitutes a
new ground of rejection of the claim.”).
Appellants also argue that a terminal disclaimer has been filed in the instant
case, subsequent to our original decision, which would “render moot” the provisional
rejection. Appellants request at page 3 that we “grant the present Request for Re-
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