Appeal No. 2000-0451
Application No. 08/726,088
Appellant's attempt to belatedly present new arguments
directed to the examiner's rejection of claim 8 under 35
U.S.C. 102(b) as being anticipated by Noiles is unavailing,
since a new argument advanced in a request for rehearing, but
not advanced in appellant's brief, is not properly before the
Board and will not be considered. See Ex parte Hindersinn,
177 USPQ 78, 80 (Bd. App. 1971) and Ex parte Harvey, 163 USPQ
572, 573 (Bd. App. 1968) (Question not presented to Board in
appeal and not discussed by examiner is not appropriate for
decision by Board on petition for reconsideration). Note also
In re Kroekel, 803 F.2d 705, 708, 231 USPQ 640, 642 (Fed. Cir.
1986) and Cooper v. Goldfarb,
154 F.3d 1321, 1331, 47 USPQ2d 1896, 1904 (Fed. Cir. 1998)
wherein the Court noted that a party cannot wait until after
the Board has rendered an adverse decision and then present
new arguments in a request for reconsideration.
Regarding appellant's assertion (request, page 2) that
the limitation in claim 8 "is the same limitation on which the
Board patentably distinguished claim 4 from Moch," we suggest
that appellant might wish to read claims 4 and 8 again, since
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007