Appeal No. 1996-2198
Application 08/077,506
2(...continued)
31 USPQ2d 1027, 1028 n.1 (Bd. Pat. App. & Int. 1993):
The examiner has cited and relied
upon four new references in the
Examiner's Answer but did not make a
new ground of rejection. As set forth
in In re Hoch, 57 CCPA 1292, 428 F.2d
1341, 166 USPQ 406 (1970), "[W]hen 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
rejection." The failure of the
examiner to do so here appears to be
for the purpose of avoiding a new
ground of rejection. Since a new
ground of rejection was not made,
appellants were not entitled as a
matter of right to respond to this new
evidence of obviousness by way of
amendment and/or evidence. Rather,
appellants were limited to presenting
argument by way of a Reply Brief. The
procedural disadvantage in which
appellants were placed by the
examiner's action is apparent.
Accordingly, we have not considered
the four references in determining the
correctness of the rejection before
us in this appeal. If in further
prosecution of this subject matter,
the examiner continues to find these
references to be relevant evidence of
obviousness (see n. 6, infra), a
proper rejection should be made.
(continued...)
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