Ex Parte PENNINI et al - Page 12


               Appeal No. 2001-0968                                                                                                    
               Application No. 08/894,423                                                                                              

                       1  The examiner also refers to U.S. Patent 5,244,854 to Noristi et al. (Noristi) issued on Sep.                 
               14, 1993.  (Examiner's answer, p. 5.) However, we will not consider Noristi as part of the evidence                     
               relied upon in the examiner's rejection, because this reference was not positively included in the                      
               examiner's statement of the rejection.  In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3                      
               (CCPA 1970)("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.").                                                                                              
                       2  We wish to commend the appellants' counsel for his candor                                                    
               in this regard.                                                                                                         































                                                                 12                                                                    




Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12

Last modified: November 3, 2007