Ex parte MELLO et al. - Page 4




                 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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