Appeal 2006-2774
Application 10/309,493
In sum, the preponderance of the evidence shows that the claimed
invention is a combination of components which were known to be useful in
fire preventative compositions (see above and Findings of Fact). “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 127 S.
Ct. at 1739, 82 USPQ2d at 1395 (2007). Appellant has presented no
evidence that anything other than predictable results were obtained.
Consequently, we affirm the rejection of claim 1. Claims 3-5 fall with claim
1 because they were not separately argued. In affirming this rejection, we
have relied on reasoning that differs from the Examiner’s. Accordingly, we
designate this rejection as a new ground of rejection under 37 C.F.R. §
41.50(b).
TIME PERIOD
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 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
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