Appeal No. 95-0420
Application 07/959,509
recombinant vector, the stated rejection under 35 USC § 103 cannot stand. The rejection
of claims 1 through 16 under 35 USC § 103 as unpatentable over the combined
disclosures of Selden and Tsang is reversed.
We are mindful that the examiner cites three new references in the Examiner's
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Answer; that the examiner discusses one of these references in the Examiner's Answer,
page 5, and all of those references in the supplemental Answer, paragraph bridging pages
2 and 3; and that the examiner further refers to an acknowledgment made in Appellants'
Reply Brief (supplemental Answer, page 3, lines 1 through 4). The new references and the
acknowledgment, however, are not included in the statement of rejection under 35 USC §
103. As stated in In re Hoch, 428 F.2d 1341, 1342 n3, 166 USPQ 406, 407 n3 (CCPA
1970),
Where a reference is relied on to support a rejection, whether or not in a
"minor capacity," there would appear to be no excuse for not positively
including the reference in the statement of the rejection.
We shall not pass on the merits of the unstated rejection which the examiner belatedly
attempts to bring through the "back door", based on the combined disclosures of
Selden, Tsang, Wurm, MacDonald, and Smith, and an acknowledgment found in
2These new references are: (a) Wurm, "Integration, Amplification and Stability of Plasmid
Sequences in CHO Cell Cultures", Biologicals, Vol. 18, pp. 159-164, (1990); (b) Macdonald, "Development
of New Cell Lines for Animal Cell Biotechnology", Biotechnology, Vol. 10, No. 2, pp. 155-178, (1990) ;
and (c) Smith et al., U.S. Patent No. 5,223,421 Jun. 29, 1993.
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