Ex Parte Lyons - Page 3

                Appeal 2006-2855                                                                              
                Application 09/774,727                                                                        
                                                                                                             
                      Claims 1-20 are rejected under 35 U.S.C § 103(a) as unpatentable                        
                   over Lang in view of Coueignoux.3                                                          
                      Rather than repeat the arguments of Appellant or the Examiner, we                       
                refer to the Briefs and the Answer for their respective details.  In this                     
                decision, we have considered only those arguments actually made by                            
                Appellant.  Arguments which Appellant could have made but chose not to                        
                make in the Briefs have not been considered and are deemed to be waived.                      
                See 37 C.F.R. § 41.37(c)(1)(vii) (2004).                                                      

                                                 OPINION                                                      
                It is our view, after consideration of the record before us, that the                         
                evidence relied upon and the level of skill in the particular art would have                  
                suggested to one of ordinary skill in the art the invention set forth in the                  
                claims on appeal.  Accordingly, we affirm.                                                    


                                                                                                             
                3 Although the Examiner discusses two additional references, Schuba and                       
                Lambert, in the text of the rejection based on Lang and Coueignoux (Answer                    
                5), the Examiner nonetheless indicates that the Schuba and Lambert                            
                references are “not part of the rejection” (Answer 5, 19).  Nevertheless,                     
                Appellant presented arguments pertaining to these references (Br. 11-12;                      
                Reply Br. 6-7).                                                                               
                In any event, since the Schuba and Lambert references were not included in                    
                the statement of any of the rejections of the claims, they are deemed to be                   
                superfluous and therefore not before us.  Consequently, we have not                           
                considered the disclosure or teachings of Schuba and Lambert in this                          
                decision.  See In re Hoch, 428, F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3                    
                (CCPA 1970) ("Where a reference is relied upon 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.").                  
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