Appeal No. 1995-3054
Application No. 08/059,384
The references relied upon by the examiner are:2
Lindel et al. (Lindel) 4,927,938 May 22,
1990
Jelich 4,958,025 Sep. 18,
1990
Hendrickson et al. (Hendrickson), “Oxidation and Reduction in
Synthesis Sec. 18-8", Organic Chemistry, Third Edition, (1970)
page 782.
1.
The sole issue in the appeal is whether claims 1-16 were3
properly rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Hendrickson, Lindel and Jelich. We reverse
this rejection.
Discussion
2 In the "Response to argument" (Answer, pp. 7-24),
the examiner mentions three additional references. As stated
in In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970) ("[w]here 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"). Since these
references have not been included in the statement of the
rejection, we have not considered them in reaching our
decision in this appeal.
3 In the Answer, claim 2 was the subject of a "new
ground of rejection" based on 35 U.S.C. § 112, second
paragraph (Answer, pp. 5-6). However, that rejection was
withdrawn by the examiner in the Supplemental Examiner's
Answer (see Paper No. 20, p. 1).
6
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