Appeal No. 95-0181
Application 08/012,401
Claims 1 through 3 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kodama.2
In the grounds of the rejection (Answer, page 3), the2
examiner indicated that the "rejection is set forth in the prior
Office action paper number 8." A review of paper number 8 (final
rejection, page 3), reveals that two additional Kodama patents as
well as pages 1 through 3 of the BACKGROUND OF THE INVENTION, and
Figure 2 are listed as "suitable references." In view of the
vagueness of this latter phrase, and the failure of the examiner
to discuss the additional Kodama references in the Answer, we do
not consider the two additional references to Kodama as prior art
properly applied against the claims on appeal. A reference
should be positively included in the listed prior art of record
and the grounds of rejection to put the appellant on notice as to
what references are being applied against the claims. See
footnote 3 in In re Hoch, 428 F.2d 1341, 1342, 166 USPQ 406, 407
(CCPA 1970). With respect to the disclosure in the BACKGROUND OF
THE INVENTION, it is well settled that during the examination of
a patent application, admissions by an applicant may be
considered as prior art for any purpose, including use as
evidence of obviousness under 35 U.S.C. § 103. See In re Nomiya,
509 F.2d 566, 570-71, 184 USPQ 607, 611 (CCPA 1975). Unlike the
additional references to Kodama, appellant is on notice as to the
contents of the specification. A declaration (paper number 9)
under 37 CFR § 1.132 was submitted by appellant to retract the
admission in the specification. The declaration indicated that
the pressure sensor of Figure 2 was "'in-house' knowledge," and
that "[t]he description of Fig. 2 as being 'known' or
'conventional' was not intended to mean that it was known by or
conventional to the general public, or to represent its
availability or qualification as citeable prior art against this
application under any of the sub-paragraphs of 35 U.S.C. § 102."
The examiner correctly decided (final rejection, page 2) that the
declaration "cannot repeal the statement" because a mere
statement in a declaration that Figure 2 should not have been
described as known or conventional in the art will not support a
retraction of that which has been acknowledged in the
specification as known in the art. The factual basis underlying
the erroneous description of Figure 2 as known or conventional is
completely absent from the declaration. Thus, the acknowledged
prior art is available as prior art under 35 U.S.C. § 102(a).
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