Ex parte JORGEN PEDERSEN-RASK - Page 5




                    Appeal No. 97-2581                                                                                                                                     
                    Application 29/031,665                                                                                                                                 


                    dome is clearly visible from (1) both the top and the bottom of the lid when the lid is off  the                                                       
                    container with which it is intended to cooperate or (2) from the top when the lid is on the                                                            
                    container with which it is intended to cooperate.  This depression on the appellant’s lid, in our                                                      
                    view, creates a distinctive effect which differs significantly in overall appearance from the lids of                                                  
                    the relied on prior art.3                                                                                                                              
                              As to the examiner’s contention that the “cylinder end would be hidden from use,” we                                                         
                    must point out that (as we have noted above) not only is the inverted dome visible when it is                                                          
                    applied to the container, it is visible to a user from both the top and bottom when the lid is                                                         
                    removed from the container, e.g., either to add or remove contents.  This being case, both the                                                         
                    bottom and the top of the lid are visible in its “normal and intended use” (see In re Webb,                                                            

                    916 F.2d 1553, 1557-58, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990)) and thus the appearance of                                                              






                              3Apparently recognizing the deficiencies of the relied on prior art, the examiner on page 6                                                  
                    of the answer made reference to Worsley (U.S. Design Patent 195,372) and Mineo (U.S. Design                                                            
                    Patent 268,483).  We must point out, however, that such a procedure by the examiner is totally                                                         
                    improper and inappropriate since these references do not form a part of the examiner's final                                                           
                    rejection of the appealed claim.  If a reference is relied upon in any capacity to support a rejection,                                                
                    the reference should be positively included in the statement of the rejection.  See Manual of Pat.                                                     
                    Examining Procedure (MPEP)  706.02(j) (6th ed., Rev. 3 Jul. 1997), In re Hoch, 428 F.2d                                                               
                    1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) and Ex parte Raske, 28 USPQ2d 1304-                                                                  
                    05 (Bd. Pat. App. & Int. 1993).  For this reason, our consideration of the examiner's rejections is                                                    
                    based solely on the references which have been positively included in the statement of the                                                             
                    rejection.                                                                                                                                             
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