Appeal No. 96-0635
Application 08/132,410
The examiner responds that Johnson would have suggested the
modification of Day to arrive at the subject matter of claim 9
[supplemental answer].
At the outset we note that Johnson is not listed in
the statement of the rejection but is merely cited in the
arguments section of the examiner’s answer. We have reminded
examiners
many times that a reference not positively included in a
statement of rejection is not considered as applied prior art.
Note In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407
n.3 (CCPA 1970). Thus, if the examiner is relying on Johnson
to establish the state of the art and/or the level of skill in
the art, then the examiner should have listed Johnson in the
statement of the rejection.
Although Johnson has not been properly cited as prior
art in this rejection, we note that it was cited to support
the examiner’s previous contention that bifurcated buffers
were well-known in this art. We also observe that appellants
have responded to the rejection as if Johnson had been
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007