Ex parte Sami Chems. & Extracts, Ltd .

Informative decision only: persuasive authority, not binding precedent. When the Board affirms an examiner's rejection using a claim construction not expressed in the examiner's exact words, the affirmance is not a new ground of rejection under 37 C.F.R. § 41.50(b) if the appellant had a fair opportunity to react to the thrust of the rejection, i.e., the examiner's and Board's basis was basically the same. A differently worded construction alone does not entitle the appellant to reopen prosecution. No prior precedent directly addressed this issue within the text; the Board applies the existing fair-opportunity criterion to claim construction. For the examiner, the Board may adopt or elaborate a claim construction in affirming without recasting the rejection as new, provided it fits the thrust of the examiner's findings. For the appellant, a Board claim construction phrased differently from the examiner's does not by itself trigger reopening of prosecution or remand to amend; the appellant must show it lacked a fair opportunity to respond to the thrust of the rejection. The Board relied on In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976), for the criterion of whether a rejection is new. LEGAL TEST OR STANDARD: The Board stated that appeal is from the examiner's decision, not the reasons for it, and that "[t]he criterion of whether a rejection is considered 'new' in a decision by the Board is whether Appellant has had a fair opportunity to react to the thrust of the rejection." It compared the basic thrust of the examiner's rejection with the Board's, and asked whether the examiner's and Board's constructions were similar and consistent with the specification. TRIGGERING FACTS: In reexamination, the Board affirmed 102(b) and 103(a) rejections of method claims for promoting lean body mass with forskolin, construing "promoting" broadly (not limited to increasing). The appellant asserted the construction was new because the examiner and appellant had presumed "promoting" meant "increasing," and sought reopening under 37 C.F.R. 41.50(b)(1) and remand. The examiner's findings (fat reduction translating to lean body mass promotion; claims 1 and 5 rejected together over the same art) and the specification already supported the broader reading, and the appellant did not dispute the reasonableness of the construction. KEY QUOTE: "The criterion of whether a rejection is considered "new" in a decision by the Board is whether Appellant has had a fair opportunity to react to the thrust of the rejection." (p. 10) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976). PRACTICE TIP: Do not argue that a Board affirmance is a new ground merely because the Board's claim construction wording differs from the examiner's; instead, show from the record that the examiner's findings and the specification did not put you on notice of the thrust of the Board's construction, and address the broadest reasonable construction in the appeal brief or reply.