Appeal No. 97-1142
Application 08/260,831
Specifically, without citing a single piece of
prior art in support of the contention, the Examiner
has broadly asserted that the use of two laser disc
players creating three-dimensional images is well known
. . . . [During prosecution, appellants] respectfully
requested that the Examiner provide prior art
supporting the assertion that such technology is well
known . . . . The Examiner refused to comply. [brief,
pages 5-6]
Appellants assert that “the failure to cite prior art supporting
the modification of Trumbull is fatal to the Examiner’s
rejection” (brief, page 7).
Opinion
Appellants’ point is well taken. The examiner’s reliance on
prior art discussed on page 1 of the specification of the present
application in support of the rejection is improper and
inappropriate since the prior art in question is not included in
the list of prior art relied upon in the rejection and is not
included in the statement of the rejection. If prior art is
relied upon in any capacity to support a rejection, it should be
positively included in the statement of the rejection. See
Manual of Patent Examining Procedure (M.P.E.P.) 706.02(j); In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970)
and Ex parte Raske, 28 USPQ2d 1304-05 (BPAI 1993). Furthermore,
the examiner’s failure to cite a reference to support his
position regarding that which is well known and conventional when
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