Appeal No. 1997-1505 Page 11
Application No. 08/580,778
Turning next to the rejection of claims 1-7 and 9 under
35 U.S.C. § 103 we note at the outset that the examiner has
cited five additional references (answer, page 3) as “[n]ew
Prior Art for purposes of evidence.” These five additional
references have not been applied against the claims in the
rejections advanced by the examiner, and have been relied upon
by the examiner in the answer (pages 13 and 15) in response to
appellant’s arguments. We note the following principle.
"Where a reference is relied on to support a rejection,
whether or not in a ‘minor capacity,’ there would appear to be
no excuse for not positively including the reference in the
statement of rejection." In re Hoch, 428 F.2d 1341, 1342 n.3,
166 USPQ 406, 407 n.3 (CCPA 1970). Here, although the
examiner cites Kajimoto; Hughes; Haug; Hashimoto, and Ravas
(answer, page 3), the examiner fails to positively include
these references in the statement of the rejections (answer,
pages 5 and 6). The record does not reflect any comment by
appellant as to these references. Accordingly, we will not
consider these references in deciding this appeal.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wahler in view of Grandfield. It is our
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