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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