Appeal No. 1999-2509
Application 08/752,917
to establish unexpected results. [Citations omitted.]”); In re Klosak, 455 F.2d 1077, 1080,
173 USPQ 14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306
(CCPA 1971).
Accordingly, having reconsidered the evidence of record in light of appellant’s arguments
of record as they pertain to the new ground of rejection which we have entered above, we remain
of the opinion that the claimed invention encompassed by appealed claims 14 through 25, 38, 39,
41 and 42 is prima facie obvious over the teachings of Mackey. Thus, the burden of going
forward with respect to this ground of rejection remains with appellant. See Piasecki, supra.
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. . . .
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