Appeal No. 2002-2177 Page 20
Application No. 08/777,424
CONCLUSION
In summary, the rejection of claims 1-10, 17, 20, and 21 under § 103(a) is
affirmed. The rejections of claims 11-16, 18, 19, and 22-25 under § 103(a), however,
are reversed. "Any arguments or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences. . . ." 37 C.F.R.
§ 1.192(a). Accordingly, our affirmance is based only on the arguments made in the
briefs. Any arguments or authorities not included therein are neither before us nor at
issue but are considered waived. Cf. In re Watts, 354 F.3d 1362, 1368, 69 USPQ2d
1453, 1457 (Fed. Cir. 2004) ("[I]t is important that the applicant challenging a decision
not be permitted to raise arguments on appeal that were not presented to the Board.")
A new rejection of claims 11 and 22 under § 112, ¶ 2, is added. 37 C.F.R.
§ 1.196(b) (2003) provides that "[a] new ground of rejection shall not be considered final
for purposes of judicial review." It also includes the following provisions.
[T]he appellant, withing 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. . . .
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007