Appeal 2006-3012
Application 09/808,878
Specification would not have been considered unexpected (id. at 5-6).
Appellant argues that, in view of these new rationales, “the Board’s decision
constitutes a new ground of rejection for which Appellants [sic] should be
given a full and fair opportunity for response under § 41.50(b)” (id. at 6).
“[T]he ultimate criterion of whether a rejection is considered ‘new’ in
a decision by the board is whether appellants have had fair opportunity to
react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976). We do not believe that the basis of the affirmance in the
decision of January 31, 2007, changed the basic thrust of the rejection.
That said, however, it is true that the Examiner had not identified
Plunkett’s claim 42 as the closest prior art embodiment. It is also true that
Appellant may have submitted different or additional evidence to rebut the
rejection if the Examiner had focused attention on that prior art embodiment.
Therefore, even though we do not consider it strictly required under the
Kronig standard, we will designate our affirmance of the Examiner’s
rejection as a new ground of rejection under 37 C.F.R. § 41.50(b), to give
Appellant an opportunity to address the method of Plunkett’s claim 42 as the
closest prior art embodiment.
Appellant should note, however, that the response must include “an
appropriate amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.” 37 C.F.R. § 41.50(b). “If the appellant
submits an argument without either an appropriate amendment or new
evidence as to any of the claims rejected by the Board, it will be treated as a
request for rehearing under 37 C.F.R. 41.50(b)(2).” MPEP § 1214.01.
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