Appeal No. 95-2655
Application 07/912,029
The reference relied upon by the examiner is:
Derwent Abstract # C87-081037 , published March 6, 19873
(hereafter the “Abstract”), an abstract of Yamamoto et al.
(Yamamoto), Japanese 62-122671, Laid Open June 3, 1987.
Claims 1 to 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over the Abstract . We affirm this rejection4
but, for reasons noted below, we denominate this “affirmance”
as a new ground of rejection pursuant to our authority under
37 CFR
§ 1.196(b).
3The examiner lists the abstract number as “C87-08/037"
(answer, page 2), but from the copy of record it appears the
abstract number is “C87-081037". Inexplicably, throughout the
prosecution of four applications dating from 1989, neither the
examiner nor appellants have relied upon the Japanese Patent
Publication that forms the basis for the abstract. This is
even more puzzling since appellants have submitted the
Japanese Patent Publication and a translation thereof in the
Information Disclosure Statement filed March 18, 1996 (see
Paper No. 40). The examiner initialled Form PTO-1449 and sent
the Letter of May 15, 1996 (Paper No. 41) but did not elect to
mention the Japanese reference or translation. For purposes
of this appeal, we will refer to the translation of Japanese
62-122671 as “Yamamoto” and the Derwent Abstract as the
“Abstract”.
4It is noted that the examiner made new grounds of
rejection in the answer. However, in response to appellants’
reply brief, the examiner has withdrawn all new grounds of
rejection (see the Supplemental Examiner’s Answer mailed Sept.
13, 1996). These rejections are therefore not before us on
appeal.
4
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