Appeal No. 2001-2302
Application No. 09/002,404
decision, we stress that we decline to disturb our original opinion other than our grant of
relief with respect a procedural matter, by deeming our affirmance a new ground of
rejection under 37 CFR § 1.196(b).
We also stress that no inference relating to any ultimate conclusion of
patentability or unpatentability should be drawn from our observation, on page 6 of the
prior decision, that appellants have provided no evidence in rebuttal to the rejection
under 35 U.S.C. § 103. We made the observation in connection with our conclusion
that the evidence relied upon by the rejection was sufficient to show prima facie
obviousness of the claimed invention. Any properly submitted rebuttal evidence must
be considered, but submission does not automatically overcome a case for
obviousness. Patentability is determined on the totality of the record, after evidence or
argument is submitted by the applicant in response. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
We therefore incorporate herein our earlier decision, but characterize our
affirmance of the rejection as a new ground of rejection under 37 CFR § 1.196(b). We
hereby designate this decision to be, in effect, a new decision.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b). 37 CFR § 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
-3-
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007