Appeal No. 2006-0295
Application 10/053,926
1980); In re Kerkhoven, 626 F.2d at 851, 205 USPQ at 1072-73; In re Dill, 604 F.2d 1356, 1361,
202 USPQ 805, 808-09 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227,
230 (CCPA 1978); Lindner, 457 F.2d at 508, 173 USPQ at 358.
Accordingly, having reconsidered the evidence of obviousness in Eden alone and as
combined with Jeffcoat, Park and Yuan with appellants’ arguments and evidence of
nonobviousness, including consideration of the objective evidence in the specification in light of
appellants’ arguments in the brief and reply brief, which pertain to the new grounds of rejection
that we have entered above, we remain of the opinion that the claimed compositions and
methods encompassed by claims 9 through 17 and 19 through 27 are prima facie obvious over
the applied prior art. Thus, the burden of going forward with respect to this ground of rejection
remains with appellants. See generally, Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444;
Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
The examiner’s decision is affirmed-in-part, and we have entered a new ground of
rejection pursuant to our authority under 37 CFR § 41.50(b) (2005).
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b) (2005).
37 CFR § 41.50(b) provides “[a] new ground of rejection shall not be considered final for
purposes of judicial review.”
37 CFR § 41.50(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 the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceedings will be remanded to the examiner. . . .
(2) Request rehearing. Request that the application be reheard under § 41.52 by the Board upon
the same record. . . .
- 16 -
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007