Ex parte Chevallier

Board of Patent Appeals and Interferences

Apr 30, 1999

07517719 (B.P.A.I. Apr. 30, 1999)

Application for patent filed May 2, 1990.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte YVONICK CHEVALLIER
________________
Appeal No. 94-0869
Application No. 07/517,7191
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HEARD: August 7, 1996
________________
Before KIMLIN, PAK and WARREN, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
REQUEST FOR REHEARING
Appellant requests reconsideration of our decision of
October 31, 1996, wherein we affirmed the examiner's rejection
of claims 1-18 and 27 under 35 U.S.C. § 103 as being
unpatentable over Winyall in view of Biegler.
Appeal No. 94-0869
Application No. 07/517,719
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Appellant initially requests that we designate our
discussion at page 5 of the decision regarding the unpatent-
ability of the claimed invention over Biegler alone a new
ground of rejection in accordance with 37 CFR § 1.196(b).
However, we decline to do so inasmuch as we sustained the
examiner's rejection of the appealed claims under § 103 over
the combined teachings of Winyall and Biegler. Our amplified
reasons supporting our affirmance of the examiner's rejection
does not differ in substance from the "evidentiary scheme"
presented by the examiner and, therefore, does not constitute
a new ground of rejection. In re Boon, 439 F.2d 724, 727, 169
USPQ 231, 234 (CCPA 1971). See also In re Kronig, 539 F.2d
1300, 1303,
190 USPQ 425, 426-27 (CCPA 1976). Also, see In re Halley,
296 F.2d 774, 778, 132 USPQ 16, 20 (CCPA 1961), wherein the
court held that it is not a new ground of rejection to sustain
an examiner's rejection based on a combination of references
in view of the disclosure of only one of the cited references.
Appellant also offers a response to language at page 4 of
our decision, which reads "appellant's specification fails to
set forth any reasonably specific definition of the language
Appeal No. 94-0869
Application No. 07/517,719
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'substantially spherical,' and does not provide any electron
photomicrographs of the claimed silica particles that would
serve as a basis for comparing their morphology with the
silica particles of Winyall." Appellant points out that the
present specification states that "EP 18,866, assigned to the
assignee hereof, proposed certain homogeneous silica spheres
having a mean particle size greater than 80 Fm, a BET surface
area of 100 to 300 m /g and a density of approximately 0.29." 2
In addition, appellant notes that a U.S. patent to Garvey
discloses egg-shaped particles shown in Figures 2-3 as being
"spheroidal." However, since this argument was not presented
in appellant's principal or reply briefs, it is not properly
before us. Ex parte Hindersinn, 177 USPQ 78, 80 (Bd. App.
1971). See also 37 CFR § 1.192(a). Furthermore, appellant
has not established the requisite nexus between the claimed
"[s]ilica beads having a substantially spherical morphology"
and the silica particles of EP 18,866 and Garvey.
The arguments presented at pages 3-5 of appellant's
Request, with respect to page 5, lines 3-10 of our decision,
are also presented for the first time and, therefore, not
properly before us. In addition, we fail to see how a
Appeal No. 94-0869
Application No. 07/517,719
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comparison to the silica particles of EP 18,866 is relevant to
a comparison to the silica particles of Winyall and Biegler,
the cited prior art.
In conclusion, appellant's request is denied with respect
to making any change in our decision.
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
RECON - DENIED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
clm
Appeal No. 94-0869
Application No. 07/517,719
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Norman H. Stepno
Burns, Doane, Swecker & Mathis
George Mason Bldg. - P.O. Box 1404
Washington & Prince Sts.
Alexandria, VA 22313-1404