Appeal No. 1998-2107
Application No. 08/137,624
In Ochiai [sic], the assignee had a patent to the starting
materials and to the final product, and were asking for the
process of making the final products, that is not the situation
here; Chemistry is a teaching of analogous reactions, see
Cram & Hammond, 2nd Edition pp. 565-67 (1964). Whether
one of ordinary skill in the art would expect the process to
proceed as suggested by the prior art is the suggestion
provided by the art in the manner of Graham vs. John Deere
[sic], above cited.
For a number of reasons we reverse this rejection of claims 30-37. First, the
Cram & Hammond reference is not included in a statement of rejection, either in the
Final Action7 or in the Answer. 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 the rejection. In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). Where, as here,
the Cram & Hammond reference is not positively included in the statement of
rejection under 35 U.S.C. § 103 before us, we shall not consider that reference
further. Furthermore we are unable to locate a copy of this reference in the
administrative file, or any indication that appellants received a copy of this
reference.
7 Paper No. 10, mailed May 9, 1996.
6
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