Appeal No. 95-0907
Application 07/774,757
features of independent claim 1. Because Wang and Rattan cannot
support the examiner's rejection of claim 1, the rejection of
claims 2 and 3 based also on Wang and Rattan also cannot stand.
In discussing claim 2, the examiner made reference (answer
at 5) to U.S. Patent No. 4,937,825 (Ballard et al.) and U.S.
Patent No. 5,157,782 (Tuttle et al.). However, neither Ballard
et al. nor Tuttle et al. has been included in the examiner's
stated ground of rejection. The appellant is correct that it is
inappropriate for the examiner to rely on references which have
not been included in the examiner's stated ground of rejection to
supply features missing from the applied prior art. Indeed, all
references on which the examiner relies should be positively
recited in the rejection. See, e.g., In re Hoch, 428 F.2d 1341,
1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970); Ex parte Movva,
31 USPQ2d 1027, 1028 n.1 (Bd. Pat. App. & Int. 1993); Ex parte
Hiyamazu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Int. 1988).
Thus, Ballard et al. and Tuttle et al. cannot be properly relied
on by the examiner to meet the features added by claim 2.
Moreover, because the examiner has not relied on or discussed
Ballard et al. or Tuttle et al. in the context of the rejection
of claim 1, whether the features of claim 1 would have been
suggested by Wang and Rattan in combination with Ballard et al.
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